Speedline Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jan 2, 2003

No. 75564484 (T.T.A.B. Jan. 2, 2003)

Mailed: January 2, 2003
Paper No. 18
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Speedline Technologies, Inc., assignee of Camelot
Systems, Inc.1
________
Serial No. 75/564,484
_______
Stephen J. Holmes of Barlow, Josephs & Holmes, Ltd. for
Speedline Technologies, Inc., assignee of Camelot Systems,
Inc.
John C. Tingley, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______
Before Hairston, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 5, 1998 the assignor, Camelot Systems,
Inc., filed an application to register on the Principal
Register the mark MATRIXX for goods ultimately identified
1 Application Serial No. 75/564,484 was assigned to Speedline
Technologies, Inc. in 1999. The assignment is recorded with the
Assignment Branch of the USPTO at reel 1845, frame 0200.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/564484
2
as “electronic assembly equipment, namely solder ball
dispensing and placement apparatus” in International Class
9. The application was originally based on applicant’s
assertion of a bona fide intention to use the mark in
commerce on the identified goods. Applicant filed an
amendment to allege use2, which was accepted by the USPTO,
with claimed dates of first use and first use in commerce
of February 1999 and August 2000, respectively.
Citing Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), the Examining Attorney has finally refused
registration on the ground that when applicant’s mark is
used on the goods identified in the application, it is
merely descriptive thereof.
Applicant has appealed, and both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
The Examining Attorney explains the asserted merely
descriptive nature of the involved mark in connection with
the identified goods as follows:
The term “matrix(x)” merely describes a
feature of the solder ball placement equipment
used in a matrix pattern or ball grid
configuration of the electronic assembly
equipment. A “matrix” can be a two
dimensional array as in ball grid array used
2 The specimen submitted with applicant’s amendment to allege use
is a photograph of applicant’s involved apparatus/machine.
Ser. No. 75/564484
3
in solder ball placement. See enclosed
definition of “matrix” in the Modern
Dictionary of Electronics. “Matrix” is the
phonetic equivalent of “matrix(x).” (Final
Office action dated March 16, 2000);
[T]he term “matrix” is merely descriptive
because it describes a feature of the solder
ball placement equipment. “Matrixx” is the
phonetic equivalent of “matrix.” Applicant’s
own literature shows the 750mm [sic-70] x 50mm
matrix placement area which is a feature of
the solder ball dispensing and placement
system.” (Second final Office action dated
April 11, 2002); and
It is the position of the Examining Attorney
that the applicant’s mark “MATRIXX” merely
describes a feature of the solder ball
placement apparatus as shown in the literature
of record which clearly states that
capabilities of the solder ball Matrix [sic-
matrix] placement area is 70mm x 50mm, thereby
ensuring that the solder spheres does [sic]
not free-fall onto the flux. The previously
enclosed definition of “matrix” in the Modern
Dictionary of Electronics defines “matrix” as
a “two dimensional array” as in a ball grid
matrix array used in solder ball placement.
The dispensing and placement apparatus can
place the solder in a matrix array. (Brief,
unnumbered pp. 2-3.)
In support of his position the Examining Attorney
relies on (i) a definition of “matrix” from the Modern
Dictionary of Electronics (undated) as “6. An orderly two-
dimensional array”; (ii) applicant’s use of the term
“matrix” in its product brochure titled “CAMALOT Matrixx
Ser. No. 75/564484
4
Sphere Placement System,”3 which lists under “system
capabilities” the item “70mm x 50mm matrix placement area
(each cycle of the placement head)”; and (iii) excerpted
stories retrieved from the Nexis database to show uses
relating to “‘matrix’ of solder” (second final Office
action dated April 11, 2002).
The excerpted stories retrieved from the Nexis
database and submitted by the Examining Attorney consist of
five (of a total of 21 stories) resulting from the
Examining Attorney’s search for “matrix w/20 solder!” Some
examples are set forth below (underlining appears in the
excerpted stories):
(1) Headline: Industry Surges Ahead on
Imagination, Guts
… LumiLeds Lighting’s SnapLED
creates a formidable, metal matrix
instead of solder joints to hold
the diodes. ... “Automotive News,”
February 28, 2000;
(2) Headline: Stained Glass
Restoration a Painstaking Process
...Reassembly of the window.
After the individual plates have
been soldered and a sealant
applied, they will be layered and
returned to the wooden frame.
Copper wires, soldered to the
bottom plate, pass through the
succeeding layers and are attached
to the cast iron matrix for
3 The Board notes that the original applicant is identified
throughout the application as “Camelot Systems, Inc.”; however,
applicant’s photograph specimen and its product brochure use the
term “Camalot.”
Ser. No. 75/564484
5
dimensional stability. ...
“Chattanooga Times/Chattanooga
Free Press,” April 23, 2000; and
(3) Headline: NEMI’s Lead-Free
Assembly Project Reports Latest
Results at APEX 2002
...4. Performed a matrix of solder
reliability tests to allow
comparison of the SnAgCu alloys to
eutectic tin-lead alloy. ...
“Business Wire-Distribution
Business Editors,” January 21,
2002.
Applicant explains its goods as follows:
The goods with which Applicant intends to
use the mark include solder ball
dispensing and placement equipment. In
this equipment, solder balls are placed
in patterns, referred to as ball grid
arrays, during the manufacture of
electronic components. (Applicant’s
November 23, 1999 response, unnumbered p.
2.); and
The Applicant’s goods comprise a solder
sphere placement system that is capable
of fluxing and placement of solder
spheres on BGA components in Auer boats,
JDEC trays and in strip format. The
apparatus receives a component seated in
a positioning device and, using special
tooling adapted for the particular
component, applies flux to the locations
of the solder spheres, and then places
the solder spheres on the fluxed
locations. Each different component
requires a unique set of tooling. The
apparatus also includes visual inspection
systems to confirm proper location and
placement of the flux and solder spheres
after placement. The apparatus is a
highly specialized device used only for a
special purpose. (Brief, p. 2.)
Ser. No. 75/564484
6
Applicant argues that the Internet version of
Webster’s Dictionary shows eleven different definitions of
the word “matrix,”4 about five of which provide different
and distinct suggestions, each of which could relate to the
characteristics of applicant’s involved goods (for example,
an apparatus providing a “mold or die,” or dispensing “the
principal metal in an alloy,” or dispensing “a binding
substance,” or in mathematics, calculating the placement of
the solder spheres). Applicant further contends that
because there are myriad possible meanings of the root term
“matrix” in relation to applicant’s identified goods, it
takes thought to determine which, if any, are relevant in
ascertaining the nature of applicant’s goods or something
about same; and that because the mark MATRIXX does not
immediately convey information or an idea of any specific
feature about applicant’s goods, it is only suggestive
thereof.
A mark is merely descriptive if it “forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods.” Abercrombie & Fitch Company
v. Hunting World, Incorporated, 537 F.2d 4, 189 USPQ 759,
4 Although this argument regarding the eleven dictionary meanings
was first raised in applicant’s appeal brief, the Board has
considered it because we generally take judicial notice of
dictionary definitions. See TBMP §712.01.
Ser. No. 75/564484
7
765 (2nd Cir. 1976) (emphasis added). See also, In re
Abcor Development Corporation, 616 F.2d 525, 200 USPQ 215
(CCPA 1978). Moreover, in order to be merely descriptive,
the mark must immediately convey information as to the
ingredients, qualities or characteristics of the goods or
services with a “degree of particularity.” See In re TMS
Corporation of the Americas, 200 USPQ 57, 59 (TTAB 1978);
and In re Entenmanns Inc., 15 USPQ2d 1750, 1751 (TTAB
1990), aff’d, unpub’d, Fed. Cir. February 13, 1991.
Further, it is well established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
See In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB
1995).
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. See In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). In this case, it appears that applicant’s goods are
a highly specialized electronic apparatus. The evidence of
record (applicant’s specimen photograph, applicant’s
Ser. No. 75/564484
8
product brochure, dictionary definitions, five excerpted
stories retrieved from the Nexis database, and the
arguments of the Examining Attorney and applicant) does not
establish that the mark MATRIXX is merely descriptive of
these goods. That is, it has not been established that
applicant’s mark, used on its “electronic assembly
equipment, namely solder ball dispensing and placement
apparatus,” conveys an immediate idea about the goods with
any degree of particularity. It is not clear how the
relevant purchasers would regard the term MATRIXX (derived
from the word “matrix”). The significance of the mark,
when applied to the goods, is ambiguous and unclear.
Simply put, on this record the Board does not have
sufficient information about applicant’s highly specialized
electronic assembly equipment, and the Examining Attorney
has failed to establish how the term MATRIXX is merely
descriptive of those identified goods.
The Board has noted many times that if there is doubt
about the “merely descriptive” character of a mark, that
doubt is resolved in applicant’s favor, allowing
publication of the mark so that any third party may file an
opposition to develop a more comprehensive record. See In
re Atavio, 25 USPQ2d 1361 (TTAB 1992).
Ser. No. 75/564484
9
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) is reversed.