Silicon Systems, Inc.

Trademark Trial and Appeal Board

Jan 6, 2009

No. 78447267 (T.T.A.B. Jan. 6, 2009)

Hearing: Mailed:
December 2, 2008 January 6, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Silicon Systems, Inc.
________

Serial No. 78447267
_______

Jeffrey L. Van Hoosear of Knobbe, Martens, Olson & Bear,
LLP for Silicon Systems, Inc.

Robert J. Struck, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Rogers, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On July 7, 2004, Silicon Systems, Inc. (“applicant”)
filed an intent-to-use application for the mark SIDRIVE, in
standard character form, for goods ultimately identified as
“flash based solid state digital storage media,” in Class
9.
The Examining Attorney refused to register the mark
under Section 2(e)(1) of the Trademark Act of 1946, 15
U.S.C. §1052(e)(1), on the ground that SIDRIVE is merely
descriptive. Specifically, the Examining Attorney contends
that the mark SIDRIVE is merely descriptive because it
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78447267
2
directly informs prospective consumers that the product
consists of or includes a silicon drive.
Applicant contends that SIDRIVE is not merely
descriptive because consumers would have to exercise some
reasoning to conclude that SIDRIVE means “silicon drive.”
For example, applicant argues that “consumers would not
immediately parse SIDRIVE into two component terms SI and
DRIVE” because “the mark does not contain any visual cues
that would immediately guide the average consumer toward
that construction of the mark.”1 Moreover, even if
consumers perceived SIDRIVE as being composed of the two
elements SI and DRIVE, applicant asserts that the term SI
has multiple meanings thereby requiring the consumer to
exercise his/her judgment to determine which of the several
meanings is relevant.2 In this regard, applicant noted that
the examining attorney did not produce any evidence that
SIDRIVE has a well understood and recognized meaning.3
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(1), if it
directly conveys an immediate idea of an ingredient,

1 Applicant’s Brief, p. 7.
2 Applicant’s Brief, pp. 7-8.
3 Applicant’s Brief, pp. 12-13.
Serial No. 78447267
3
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-218 (CCPA 1978).
Whether a term is merely descriptive is not determined
in the abstract, but in relation to the goods for which
registration is sought, the context in which it is being
used on or in connection with the goods, and the possible
significance that the term would have to the average
purchaser of the goods because of the manner of its use;
that a term may have other meanings in different contexts
is not controlling. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). In other words, the question is not
whether someone presented with only the mark could guess
what the goods are. Rather, the question is whether
someone who knows what the goods are will immediately
understand the mark as directly conveying information about
them (i.e., whether someone familiar with applicant’s
“flash based solid state digital storage media” will
understand SIDRIVE to convey information about the
products). In re Tower Tech Inc., 64 USPQ2d 1314, 1317
(TTAB 2002).
The record clearly establishes the following:
Serial No. 78447267
4
1. “SI,” or more specifically “Si,” is the
abbreviation or chemical symbol for silicon;4
2. A “drive” is “[a] device that reads data from and
often writes data onto a storage medium, such as a floppy
disk;5 and,
3. A “silicon drive” is a solid state electronic
device.6
Thus, the issue of whether applicant’s mark SIDRIVE is
merely descriptive depends on how potential consumers
perceive or interpret the mark SIDRIVE. To support its
argument that consumers will not immediately interpret
SIDRIVE to mean “silicon drive,” applicant referenced the
AcronymFinder website to show that “SI” has other meanings
that may be relevant when it is used in connection with
computer products. For example,

4 Acronymfinder.com attached to the February 9, 2005 Office
Action and applicant’s August 8, 2005 Response;
Chemlab.pc.maricopa.edu, Phsylink.co, Reade.com, Jlab.org,
Chemistry.about.com (December 26, 2006 Office Action).

5 Dictionary.com from The American Heritage Dictionary of the
English Language (4th ed. 2000) attached to applicant’s August 8,
2005 Response. See also the excerpt from the TechWeb website
(URL not provided) defining a “drive” as “[a] solid state flash
drive that contains no moving parts.” (December 26, 2006 Office
Action).

6 Controlled.com, Control Engineering website at
Manufacturing.net, StorageITWorld.com (February 9, 2005 Office
Action); excerpt from the EDN website (URL not provided),
Lowendmac.com, Findarticles.com (“Silicon drive – functions as an
ultrafast RAM drive, acts like an internal hard disk drive”)
(December 12, 2006 Office Action)
Serial No. 78447267
5
1. Systems Integration
2. Systems Integrator
3. Semiconductor Ignition
4. Semiconductor International
5. Signal Integrity
6. Software Item
7. Systems Information
However, applicant did not submit any evidence or
documentation showing these terms used in connection with
the word “drive,” how these terms would be used in
connection with the word “drive,” or what significance
these terms would have if they were used in connection with
the word “drive.” Without such evidence or documentation,
there is no support or corroboration for applicant’s
argument that potential consumers for “flash based solid
state digital storage media” would perceive the letters
“SI” as having any of those potential meanings.
However, with respect to whether consumers will
perceive SIDRIVE as being a combination of its components
SI and DRIVE, we note that in 2004, applicant introduced
its “SiliconDrive” product line with a “SiliconDrive family
of products.”7 For example, applicant’s SiliconDrive Secure

7 SiliconSystems.net (September 5, 2005 Office Action).
Serial No. 78447267
6
“is a comprehensive suite of user selectable security
technologies” featuring the following products:
8

Because applicant has applied to register SIDRIVE in
standard character form, it may display the mark in any
reasonable form such as “SiDrive,” consistent with the way
it has displayed the other marks for the SiliconDrive
family of products. Trademark Rule 2.52(a), 37 CFR
§2/52(a); TMEP §807.03(a) (5th ed. 2007) (“In the drawing,
the applicant may depict the mark in any font style; may
use bold or italicized letters; and may use both uppercase
and lowercase letters; all uppercase letters, or all
lowercase letters. The applicant does not have to display
the mark in all uppercase letters”) (Emphasis added).
Based on the foregoing, we believe that consumers of
“flash based solid state digital storage media” will
perceive the mark SIDRIVE as meaning “silicon drive.”
Because the record establishes that SI, or Si, is the

8 Excerpt from the Silicon Systems website (URL not provided)
(December 6, 2006 Office Action).
Serial No. 78447267
7
recognized symbol for silicon and that a “silicon drive” is
a solid state electronic device, when used in connection
with applicant’s products, consumers will recognize SIDRIVE
as a combination of the descriptive terms “Si” and “Drive,”
especially if it is presented as “SiDrive” or “SiDRIVE.”
See In re Champion International Corp., 183 USPQ 318, 320
(TTAB 1974) (“Inasmuch as the goods here involved are
prefinished plywood paneling, the question then is what
significance, if any, does or would the term ‘BLANCO’ have
as used therewith”).
The compound word formed by the abbreviation “SI” and
“DRIVE” will be viewed as the combination of those
individual terms, in which each component retains its
readily understood meaning in relation to the goods.
Accordingly, the resulting combination is merely
descriptive. See In re Tower Tech, Inc., 64 USPQ2d 1314
(SMARTTOWER is merely descriptive of commercial and
industrial cooling towers); In re National Shooting Sports
Foundation, 219 USPQ 1018, 1020 (TTAB 1983). The
components of the term SIDRIVE do not lose their readily
understood significance in the combined expression but form
a term that describes a characteristic, feature, or quality
of applicant’s product (i.e., it is a drive made of
silicon). We fail to see why consumers would think that
Serial No. 78447267
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the letters “SI” have any meaning other than “silicon.”
The combination SIDRIVE does not create a new and different
commercial impression. Nothing is left for conjecture or
speculation. The compound term immediately and
unequivocally describes the characteristic, feature, or
quality of applicant’s digital storage media. Consumers
would immediately understand that the term SIDRIVE, used in
connection with “flash based solid state digital storage
media,” describes an electronic device made from silicon.
Accordingly, the terms “SI” and “DRIVE” remain as
descriptive in the compound as they are individually.
The fact that SIDRIVE, or SiDrive, does not appear in
a dictionary, or industry literature, is not determinative
where the term has a well-understood and recognized
meaning. In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087
(TTAB 2001); In re Orleans Wines, Ltd., 196 USPQ 516, 517
(TTAB 1977); TMEP §1209.03(b) (“The fact that a term is not
found in a dictionary is not controlling on the question of
registrability if the examining attorney can show that the
term has a well understood and recognized meaning”). In
this reqard, applicant likens this case to In re Warner
Electric Brake & Clutch Co., 154 USPQ 328 (TTAB 1967) where
the Board found that ELECTRO-MODULE was found suggestive,
not descriptive, of friction clutches and brakes because
Serial No. 78447267
9
ELECTRO-MODULE did not describe the products with any
degree of particularity. However, in this case, the record
created by the Examining Attorney shows that “SI” is the
abbreviation or symbol for silicon, that the term “silicon
drive” is a commonly used term, and that when used in
connection with “flash based solid state digital storage
media,” SIDRIVE will be perceived as meaning “silicon
drive.” See also In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110, 1111 (Fed. Cir. 1987) (“the PTO has satisfied
its evidentiary burden if . . . it produces evidence . . .
that the separate words joined to form the compound have a
meaning identical to the meaning common usage would ascribe
to those words as a compound”). Moreover, applicant has
failed to show that “SI” has any viable alternative meaning
when used in connection with its products.
In any event, the fact that applicant may be the first
and only user of the term SIDRIVE is not dispositive. In
re Sun Microsystems Inc., 59 USPQ2d at 1087; In re Acuson,
225 USPQ 790, 792 (TTAB 1985) (“A descriptive term used
first or even only by an applicant is not registrable as
long as the relevant purchasing public perceives the term
as describing the goods”). A term does not need to be in
common usage in a particular industry before it can be
found merely descriptive. In re Sun Microsystems Inc., 59
Serial No. 78447267
10
USPQ2d at 1087. Anyone who manufactures or sells “flash
based solid state digital storage media” might have
occasion to use the term SIDRIVE to convey the fact that
his or her electronic devices are made of silicon.
In view of the foregoing, we find that, because the
term SIDRIVE describes a characteristic, feature, or
quality of applicant’s “flash based solid state digital
storage media”, SIDRIVE is merely descriptive.
Decision: The refusal to register affirmed.