SICAN Gesselschaft fur Silizium-Anwendungen und CAD/CAT Niedersachsen mbH

Trademark Trial and Appeal Board

Oct 17, 2001

EX (T.T.A.B. Oct. 17, 2001)

Oral Hearing: Paper No. 2
August 16, 2001
GDH/gdh

10/17/01

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SICAN Gesselschaft für Silizium-Anwendungen und CAD/CAT
Niedersachsen mbH
________

Serial No. 75/188,281
Serial No. 75/188,288

_______

Richard E. Backus of Flehr, Hohbach, Test, Albritton & Herbert
for SICAN Gesselschaft für Silizium-Anwendungen und CAD/CAT
Niedersachsen mbH.

Kathy M. Vanston, Trademark Examining Attorney, Law Office 103
(Dan Vavonese, Acting Managing Attorney).
_______

Before Hanak, Hohein and Wendel, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

SICAN Gesselschaft für Silizium-Anwendungen und
CAD/CAT Niedersachsen mbH has filed applications to register the
term "DesignObjects" for "computer programs for the recording,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/188,281 and 75/188,288
2
processing, transmission or reproduction of sound or images;
data processing equipment, namely, audio decoders;
semiconductors; data processing computer programs; [and]
computer program library modules for digital signal processing,
digital image processing and broad band communication" in
International Class 91 and "computer software design services,
namely designing computer program library modules; [and] design
of electronic devices for use in conjunction with computer
program library modules" in International Class 42.2
Registration in each instance has been finally refused
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that, when used in connection with
applicant's goods and services, the term "DesignObjects" is
merely descriptive of them. In addition, in the case of
applicant's service mark application, registration has been
finally refused under Sections 1(a)(1) and 45 of the Trademark
Act, 15 U.S.C. §§1051(a)(1) and 1127, on the ground that the

1 Ser. No. 75/188,281, filed on October 28, 1996, based upon an
allegation of a bona fide intention to use such term in commerce. By
an amendment to allege use, filed on January 23, 1998, the application
was amended to claim dates of first use anywhere and in commerce of
December 1996.

2 Ser. No. 75/188,288, filed on October 28, 1996, based upon an
allegation of a bona fide intention to use such term in commerce. By
an amendment to allege use, filed on January 23, 1998, the application
was amended to claim dates of first use anywhere and in commerce of
December 1996.

Ser. Nos. 75/188,281 and 75/188,288
3
specimens are unacceptable because they do not show use of the
term "DesignObjects" as a service mark for the recited services.
Applicant, in each instance, has appealed. Briefs
have been filed and an oral hearing was held. Because the issue
of mere descriptiveness in each case is substantially the same,
the appeals are being treated in a single opinion. We affirm
the refusals to register.
Turning first to the refusals on the basis of mere
descriptiveness, it is well settled that a term is considered to
be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or
use of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is
not necessary that a term describe all of the properties or
functions of the goods or services in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used or is intended to be used on or in connection
Ser. Nos. 75/188,281 and 75/188,288
4
with those goods or services and the possible significance that
the term would have to the average purchaser of the goods or
services because of the manner of such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product [or service] is from
consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant maintains that the term "DesignObjects" is
at most suggestive rather than merely descriptive of its goods
and services. Among other things, applicant insists that none
of excerpts retrieved by the Examining Attorney from her search
of the "LEXIS/NEXIS" database are relevant to or otherwise
support her contention that, as characterized by applicant, "the
word 'objects' is an independent program module written in
object-oriented programming languages and that 'design objects'
is a name given to these independent program modules."
According to applicant, the Examining Attorney erroneously "then
contends that Applicant is using its mark in connection with
[both] software which contains pre-developed pre-defined program
modules" and "computer programming and design services
pertaining to the development use of [the same] design objects
such that the term 'describes a significant attribute of the
services.'"
Ser. Nos. 75/188,281 and 75/188,288
5
Applicant further asserts that its "search of
dictionary and other technical resources to determine the
prevalence of usage of 'design objects'" either "found no
entries for the phrase 'design objects'" or none which would be
pertinent to either applicant's goods or its services. Noting,
moreover, that "[t]he rule for determining whether a mark is
merely descriptive is that the term must describe with some
particularity a quality or ingredient of the product or service"
(underlining in original), applicant submits that, due to the
"variety of different meanings" for the constituent words
"design" and "objects," the composite term "DesignObjects
contains nothing which describes with particularity any of the
features of" either its goods or its services. Lastly,
applicant insists that even if the individual words which
comprise the term "DesignObjects" were to be considered
descriptive of its goods and services, it is nonetheless well
settled that a combination of descriptive elements can result in
a composite mark which, as is the case in each instance herein,
is not merely descriptive as a whole. Thus, rather than
infringe its mark, applicant urges that competitors "are
perfectly free to use any of the other commonly available terms
in the English language that they wish to suggest to consumers
that computer programs, for example, can be used to 'design'
Ser. Nos. 75/188,281 and 75/188,288
6
some plan or other structure, or that icons or the like that may
appear on a display screen are 'objects.'"
The Examining Attorney, on the other hand, maintains
that as shown by the evidence which she has made of record:
"Objects" are independent program
modules written in object-oriented
programming languages. They are software
components designed to work together at
runtime. See http://www.techweb.com. ....
"Design objects" are, in effect, software
building blocks used by computer software
programmers and designers.

The Examining Attorney, in light thereof, insists that the
following excerpts in particular, taken from her search of the
"LEXIS/NEXIS" database, "demonstrate descriptive use of 'design
objects'" as a term "used to describe software components used
in computer programming and design of computer programs"
(emphasis added):
"It also enables cycle-accurate
simulation and employs object-oriented
programming to reuse design objects." --
Electronic Design, October 4, 1999 (article
headlined in part: "Looking For A Way To
Make Hardware Design Easier Using C++");

"These functions, known as access or
ACC/acc routines, focused PLI attention to
cover a variety of design objects while
keeping the user interface as simple as
possible" -- Electronic Design News,
September 2, 1999 (article headlined: "A
Verilog programming-language-interface
primer; If you design in Verilog, using the
HDL's programming-language-interface is
valuable for invoking a C function from
Verilog. This article provides the
Ser. Nos. 75/188,281 and 75/188,288
7
information you need to start writing useful
PLI routines");

"Naming Standards: Users can enforce
naming standards for all design objects with
the Naming Standards Specification
Language." -- PR Newswire, March 23, 1999
(article headlined in part: "Sterling
Software Releases Powerful Software Solution
That Uniquely Combines Data Modeling and
Database Design"); and

"Teams can track and correlate defects
and design-application notes with revisions
and releases of design objects." --
Electronic Design, January 25, 1999 (article
headlined: "Find Out If IC Data Management
Is Right For You").

In addition, the following excerpt appears to be relevant
(emphasis added):
"[The] tool promotes a managed process
of releasing designs for interim storage,
and archiving released products for
safekeeping . He said the release process
seeks to create a read-only, self-contained
design object comprising all CAD and library
data referenced by the design, such as
schematic symbols and geometries" --
Electronic Engineering Times, September 5,
1999 (article headlined: "Product
development tools roll").

The Examining Attorney further points out that
applicant's advertising brochure, which is of record in each of
its applications, states among other things that:
SICAN's DesignObjectsï›› give design
teams a new alternative. Now it is possible
to buy pre-developed, pre-defined soft cores
to quickly integrate standards-based
functionality required in a design.

Ser. Nos. 75/188,281 and 75/188,288
8
The Examining Attorney also observes that, in the case of the
specimens of use for applicant's trademark application, the
language "STANDARD DESIGN OBJECTS" appears directly beneath the
term "DESIGN OBJECTS," with such wording being used in
connection with what is stated to be a "MPEG AUDIO DECODING
ENGINE." According to the Examining Attorney, "[t]his is
additional evidence that the software, in fact, embodies 'design
objects.'"
In view of the above, the Examining Attorney maintains
that because applicant's "'pre-developed, pre-defined soft
cores' are 'design objects," the term "DesignObjects" is
therefore merely descriptive of applicant's goods. Moreover,
because applicant's "design services involve the use of design
objects," the term "DesignObjects" therefore merely describes "a
significant attribute of the services." The Examining Attorney
also contends that, inasmuch as "design objects" has been shown
to have "a specific meaning in the computer field," the fact
that the individual words "design" and "objects" in the abstract
"may have other shades of meaning is irrelevant."
With respect to applicant's remaining contentions, the
Examining Attorney properly notes that the assertion by
applicant that the "LEXIS/NEXIS" articles constitute infringing
uses, and hence are without probative value, because "its use
predates the use of the articles ... is equally irrelevant." As
Ser. Nos. 75/188,281 and 75/188,288
9
the Examining Attorney, citing In re National Shooting Sports
Foundation, Inc., 219 USPQ 1081, 1020 (TTAB 1983), correctly
points out, the fact that applicant may be the first user of a
merely descriptive term does not entitle it to registration
thereof if the term projects only a merely descriptive
significance. The Examining Attorney, citing In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987), is
also correct in asserting that "[t]he fact that a term is not
found in the dictionary is not controlling on the question of
registrability." See, e.g., In re Orleans Wines, Ltd., 196 USPQ
516, 517 (TTAB 1977).
Before turning to a discussion of the merits of the
issue of mere descriptiveness, we note from the "COMPANY
PROFILE" set forth in applicant's advertising brochure that
"SICAN ... is a microelectronics design and technology licensing
company specializing in communications, multimedia and
networking applications" so as "to meet the rapidly changing
design needs of its customers"; that "SICAN began as an ASIC
design house"; that "SICAN now focuses its design projects
around the integration of its reusable core technology into
customer-specific solutions to improve the quality of their
designs as well as reduce their time to market"; and that
applicant's "mission is to provide ... leading edge design
solutions ...."
Ser. Nos. 75/188,281 and 75/188,288
10
In particular, under the heading "SOFT CORES FOR
SYSTEMS ON SILICON," applicant's brochure states with respect to
the topic of "WHY USE DESIGNOBJECTSï››" that:
Purchasing ... technology as soft cores
gives the design team the freedom to
optimize the functionality that will set
their design apart from its competition.

DesignObjectsï›› from SICAN encompass a
broad spectrum of technologies, including
... video and audio coding techniques, and
broadband modem technologies. .... A
detailed list and description of the
DesignObjectsï›› can be obtained from SICAN's
website.

DesignObjectsï›› are not targeted to a
specific technology, foundry or EDA tool.
By maintaining core "softness", the power,
size and performance can be optimized by the
design team for the technology, foundry or
tool of their choice.

DesignObjectsï›› are delivered as an all-
inclusive assembly of RTL source code, ...
design specifications ... and application
support. Some DesignObjectsï›› also include
reference designs, application notes and
behavioral models. By providing the most
comprehensive documentation support
available ..., SICAN realizes the knowledge
transfer design teams need to successfully
implement the cores.

Applicant's brochure also indicates that: "Licensing
DesignObjectsï›› give the Design Team the Freedom to Optimize the
Functionality that will set the Design Apart from its
competition."
Ser. Nos. 75/188,281 and 75/188,288
11
In addition, by way of further pertinent background,
we judicially notice that Webster's New World Dictionary of
Computer Terms (7th ed. 1999) at 372 defines "object" as
meaning, "[i]n object-oriented programming, (OOP), a self-
contained program module that contains the data as well as the
procedures needed to make the data useful. By following
established rules for communicating with the object, other
programs can make use of it." Likewise, The Computer Glossary
(9th ed. 2001) at 273 defines "object" as signifying "[a] self-
contained module of data and its associated processing. Objects
are the software building blocks of object technology." The
same dictionary, at 273, also lists "object-oriented design" as
"[t]ransforming an object-oriented model into the specifications
required to create the system"; and, at 274, sets forth "object
technology" as "[t]he use of objects as the building blocks for
applications. Objects are independent program modules written
in object-oriented programming languages. Just as hardware
components are routinely designed as modules to plug into and
work with each other, objects are software components designed
to work together at runtime without any prior linking."
In the same vein, the excerpt made of record by the
Examining Attorney from the on-line reference TechEncyclopedia
discusses "object technology" in relevant part as:
Ser. Nos. 75/188,281 and 75/188,288
12
The use of objects as the building
blocks for applications. Objects are
independent program modules written in
object-oriented programming languages. Just
as hardware components are routinely
designed as modules to plug into and work
with each other, objects are software
components designed to work together at
runtime without any prior linking or
precompilation as a group.

The ultimate goal of objects is that it
should not matter which source language they
were programmed in or which computer on the
network they are running in. They are
designed to interoperate strictly through
the messages passed between them.

Objects as building blocks are an
evolutionary architecture, being a more
formalized approach to modular programming,
which has been around for years. What is
revolutionary about objects is that they
provide a new way of modeling applications,
and this is expected to have a significant
impact on application development. With
objects, a system can be designed as
familiar business functions, and the design
can be carried all the way down to the
programming level. ....

Upon careful consideration of all of the above
evidence and arguments, we agree with the Examining Attorney
that, when used in connection with applicant's goods and
services, the term "DesignObjects" immediately describes,
without conjecture or speculation, both significant information
concerning the purpose, function or use of applicant's goods,
namely, that they are objects, in the sense that such word is
utilized in object-oriented programming, which are used in the
Ser. Nos. 75/188,281 and 75/188,288
13
design of software applications, and a significant attribute of
applicant's services, which involve the design of such design
objects. Plainly, when viewed in the context of applicant's
goods and services, rather than in the abstract as applicant
essentially urges, there is nothing in the term "DesignObjects"
which, to the software engineers, computer programmers and other
members of application design teams who would purchase and/or
utilize such goods and services, would be ambiguous, incongruous
or otherwise require the need for the exercise of any
imagination, cogitation or mental processing or the gathering of
further information in order to readily perceive the merely
descriptive significance of the term.
Specifically, applicant's computer programs for the
recording, processing, transmission or reproduction of sound or
images; its data processing equipment, namely, audio decoders;
its semiconductors; its data processing computer programs; and
its computer program library modules for digital signal
processing, digital image processing and broad band
communication are all design objects in that they are objects,
in the technical sense of software building blocks or modular
program components which are utilized in whatever application
design is being developed or modeled. Whether such goods, as
referred to on the specimens in applicant's trademark
application, are regarded as "STANDARD DESIGN OBJECTS" or are
Ser. Nos. 75/188,281 and 75/188,288
14
customized or specialized design objects produced by applicant's
computer software design services, its modular programs are
products which have the functionality of being able to interface
or operate with other such goods so as to create a new software
application design. Applicant's goods, in short, are objects,
namely, self-contained, pre-developed and pre-defined program
modules which are used by its customers as design building
blocks for software applications and, thus, are merely described
by the term "DesignObjects." Such term likewise merely
describes a significant aspect of applicant's "computer software
design services, namely designing computer program library
modules; [and] design of electronic devices for use in
conjunction with computer program library modules," since it
forthwith conveys information as to the nature of the products
the services produce. See, e.g., In re Wickerware, Inc., 227
USPQ 970, 971 (TTAB 1985) ["WICKERWARE" for "mail order and
distributorship services in the field of wicker furniture and
accessories" designates "a central characteristic of appellant's
services" and thus is not registrable].
Turning now to the refusal on the ground that, in the
case of applicant's service mark application, the specimens are
unacceptable because they do not show use of the term
"DesignObjects" as a service mark for the recited services,
applicant notes that the second page of the advertising
Ser. Nos. 75/188,281 and 75/188,288
15
brochures which it furnished as specimens specifically
references the following as "Design Services": "High Complexity
High Speed Digital Design"; "Mixed Signal Design"; "A/D and D/A
Converters and Filters"; "Smart Power Design"; and "High Speed
Digital Communications Design." In view thereof, applicant
contends that the specimens evidence service mark usage of the
term "DesignObjects" in connection with the services recited in
the subject application, notwithstanding the fact that such
specimens admittedly also "refer to 'soft cores' for use by a
consumer."
We concur with the Examining Attorney, however, that
while the specimens of record indicate that applicant is
providing various design services, the term "DesignObjects" is
not used as a mark to identify such services. In particular,
the advertising brochures, which on the first page thereof are
entitled "DESIGNOBJECTSï›› at SICAN" and solely refer to "SOFT
CORES FOR SYSTEMS ON SILICON," utilize the term "DesignObjects"
to identify applicant's goods, which are the software components
which can be purchased by its customers' design teams or
licensed for use in their design projects. The specific
reference to applicant's "Design Services" and the list of such
services on page 2 of the brochures appear as part of
applicant's "COMPANY PROFILE" and are prefaced, under the
heading "TECHNOLOGY LINE-UP," by the language "[a]s a natural
Ser. Nos. 75/188,281 and 75/188,288
16
expansion of its experience with integrated circuits and systems
design, SICAN offers independently developed core technology and
know-how in the following technology fields:"; there is,
however, no reference or other association of the term
"DesignObjects" with such services. Instead, the term
"DesignObjects" is discussed only on page 3 of the brochures,
which like page one thereof contains the heading "SOFT CORES FOR
SYSTEMS ON SILICON." Plainly, as used in applicant's brochures,
the term "DesignObjects" refers to applicant's goods, the
various types of which are set forth on pages four through
seven, and not to any of applicant's services. Accordingly,
such specimens fail to evidence service mark use of the term
"DesignObjects." See, e.g., In re Walker Research, Inc., 228
USPQ 691, 692 (TTAB 1986) [specimens failed to evidence service
mark use since, while such reflected that applicant was
rendering the services which were recited in the application,
the mark "SegMentor" as used in the specimens identified and
distinguished the software or computer program used in the
performance of the services and not the services themselves];
and In re Information Builders Inc., 213 USPQ 593 (TTAB 1982)
[specimens failed to evidence service mark use of mark "FIDEL"
inasmuch as demonstrated use thereof only to refer to a computer
program].
Ser. Nos. 75/188,281 and 75/188,288
17
Decision: The refusals under Section 2(e)(1) and
under Sections 1(a)(1) and 45 are affirmed.