Synplicity, Inc.

Trademark Trial and Appeal Board

Jun 6, 2001

No. 75566083 (T.T.A.B. Jun. 6, 2001)

6/6/01
Paper No. 14
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Synplicity, Inc.
________
Serial No. 75/566,083
_______
Dax Alvarez of Blakely, Sokoloff, Taylor & Zafman for
Synplicity, Inc.
Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Walters and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On October 7, 1998, Synplicity, Inc. (applicant) filed
a trademark application to register the mark CERTIFY for
goods identified as “computer software for computer aided
electronic circuit design” in International Class 9.1
1 Serial No. 75/566,083. The application alleges a bona fide
intent to use the mark in commerce. In its Amendment to Allege
Use, applicant alleged a date of first use and a date of first
use in commerce of October 22, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/566,083
2
The Examining Attorney refused to register the mark on
the ground that the mark, when applied to the goods, is
merely descriptive. 15 U.S.C. § 1052(e)(1).
The Examining Attorney’s position is that, inasmuch as
the term “verify” is descriptive of applicant’s software
and “verify” and “certify” are near synonyms, the term
CERTIFY is merely descriptive when applied to applicant’s
software.
In her first Office action, the Examining Attorney
cited a dictionary definition of “certify” to mean, “to
guarantee as meeting a standard.”2 The Examining Attorney
held that the mark would be descriptive for applicant’s
software because either it acts to create electronic
circuit designs, which meet a certain standard, or it acts
as a person who certifies that electronic circuit designs
meet a certain standard.
In response to the Examining Attorney’s inquiry in the
first Office action (p. 1), applicant indicated the term
“CERTIFY has no significance in the relevant trade,
industry or as applied to the goods.” Applicant also
maintained that the “mark Certify has no descriptive or
suggestive connotation to the goods at hand” (p. 3) and
2 The American Heritage Dictionary of the English Language, Third
Edition, (1992).
Ser No. 75/566,083
3
that the mark “has not been shown to be a common
descriptive name of the product for which registration is
sought, nor has it been shown to be revelatory of the
product’s function” (p. 5).
The Examining Attorney made the refusal final on the
ground of descriptiveness in her second Office action. In
that action, she relied on a product catalog and
information from applicant’s website. From the catalog,
she quoted the following language: “Certify is the first
and only synthesis product . . . ASIC [Application Specific
Integrated Circuit] prototyping and verification using
multiple FPGAs [Field-Programmable Gate Arrays].”
In addition, the Examining Attorney (p. 2) quoted
extensively from applicant’s literature to demonstrate that
applicant’s goods have a verification function:
Applicant’s web site explains . . . “Verification is
the biggest bottleneck for today’s complex ASIC
designs . . . the bottleneck comes form verifying that
the ASIC design is correct before moving to production
. . . Certify combines RTL multi-chip partitioning
with FPGA synthesis techniques, and is the first and
only synthesis product targeting ASIC prototyping and
verification using multiple FPGAs . . . Synplicity’s
Certify product enables system-level verification for
ASIC and SoC designs by providing at or near-speed
functional prototypes from RTL code. Design
verification requirements vary depending on the
specific design challenge that must be solved . . .
[Certify] makes it possible to perform extensive
verification of designs in hardware . . . Certify
fills this verification gap through providing an RTL
level solution for proving core functionality.
Ser No. 75/566,083
4
In addition, the Examining Attorney provided
dictionary definitions of “verification” as “a confirmation
of truth or authority; the evidence for such a
confirmation; the act of verifying or the state of being
verified” and “verify” as “to determine or test the truth
or accuracy of.”3
With this evidence, the Examining Attorney held that
the software “is used to guarantee that the designs meet a
certain standard, i.e. to certify the functionality of the
designs” (p. 2) and the mark was, therefore, merely
descriptive.
When the Examining Attorney made the refusal final,
applicant filed a notice of appeal and a request for
reconsideration. Applicant disagreed with the Examining
Attorney’s suggestion that the words “verify” and “certify”
have the identical or interchangeable meanings. “The
applicant does not make any claims nor does the software
perform any type of certification. It is merely a tool
that can be used in the process of verifying the design of
an application specific integrated circuit. Applicant
reiterates the software CERTIFY does not actually certify
anything.” Request for Reconsideration, pp. 2-3.
3 Id.
Ser No. 75/566,083
5
The Examining Attorney adhered to her refusal on
reconsideration and cited three additional definitions.
The first defined “certify” to mean “to give certain
information of; to make certain, as a fact, to verify.”4
Another dictionary listed “verify” as a similar word for
“certify.”5 The same source identified “certify” as a
similar word for “verify.”6
In its Appeal Brief, applicant submits that
“certification” and “verification” are distinctly different
processes. “Products may be verified by an engineer but
not be certified to meet ant particular standard.” Brief,
p. 3. Responding to the definitions the Examining Attorney
made of record in her decision on reconsideration,
applicant pointed out that the dictionaries were non-
technical dictionaries and that the Examining Attorney did
not show sufficient correlation between the terms “certify”
and “verify” in the electronic design automation field.
“Applicant’s software is merely a tool that can be used in
the process of verifying the design of an application
specific integrated circuit.” Brief, p. 4. Finally,
“Applicant contends that its software does not guarantee or
4 ARTFL Project: Webster Dictionary (1913).
5 Wordsmyth: The Educational Dictionary-Thesaurus.
6 Id.
Ser No. 75/566,083
6
verify the functionality of circuit designs but merely
verifies that the design is correct.” Brief, p. 5.
In her Appeal Brief, the Examining Attorney argued
that “certify” and “verify” are synonyms or similar words
and applicant’s software performs verification functions.
She reasoned that:
[I]f the applicant admits that the software is used to
“verify” the designs, i.e. “to establish the truth or
accuracy of; confirm” the designs, then it is
axiomatic that the software is used to “certify” the
designs, i.e. “to affirm the accuracy or certainty of,
confirm” the designs.
Brief, p. 5.
We begin our analysis by noting that a mark is merely
descriptive if it immediately describes the ingredients,
qualities, or characteristics of the goods or services or
if it conveys information regarding a function, purpose, or
use of the goods or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). A term
may be descriptive even if it only describes one of the
qualities or properties of the goods or services. In re
Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). We look at the mark in relation to the goods or
services, and not in the abstract, when we consider whether
the mark is descriptive. Abcor, 588 F.2d at 814, 200 USPQ
at 218.
Ser No. 75/566,083
7
The issue in this case is straightforward: Is the
term CERTIFY merely descriptive of computer software that
has a verification function. The Examining Attorney’s case
rests on two pillars. The first pillar is that applicant’s
software has a verification function. The evidence is
overwhelming that applicant’s software performs a
verification function. Applicant admits that its “software
is merely a tool that can be used in the process of
verifying the design of an application specific integrated
circuit.” Applicant’s Appeal Brief, p. 4. Applicant’s
literature supports the position that applicant’s software
performs a verification function:
First and only synthesis product targeting ASIC
prototyping and verification using multiple FPGAs.
Verification is the biggest bottleneck for today’s
complex ASIC designs.
The bottleneck comes form verifying that the ASIC
design is correct before moving to production.
This approach is at the heart of the Certify solution,
improving prototype performance, and allowing
designers to verify their designs at near real-time
speeds.
Since the main goal of prototyping is to verify the
ASIC design, designers are very reluctant to make
changes to the HDL source solely for the purpose of
prototyping.
The record establishes the terms “verify” or
“verification” would describe a feature or function of
Ser No. 75/566,083
8
applicant’s software. However, the mark in this case is
“certify.” The only evidence of the descriptiveness of the
word “Certify” consists of several dictionary definitions.
Certify has been defined as: (1) to guarantee as meeting a
standard and (2) to give certain information of; to make
certain, as a fact, to verify. There is no evidence that
the software guarantees something as meeting a standard.
The second definition is obviously more relevant because it
is more general (“to give certain information of; to make
certain, as a fact”) and it also concludes by including the
definition “to verify.” This definition appears to be a
1913 edition of Webster’s Dictionary. In addition, it is
an extremely broad meaning of the word “certify.” Even if
current prospective purchasers were aware of this
definition, it is not clear what feature or function of
applicant’s software was immediately and unequivocally
described by the word “certify.”
In addition, the Examining Attorney submitted evidence
that shows that “verify” is listed among terms identified
as “similar words” for “certify.” However, there is a
separate category for synonyms and “verify” does not appear
in that list. Also included with “verify” as similar words
are “corroborate,” “certificate,” “attest,” “substantiate,”
“document” and “establish.” Words appearing with “certify”
Ser No. 75/566,083
9
as similar words for “verify” include “testify,” “prove,”
“double-check,” “witness,” “check,” “substantiate” and
“document.” Again, “certify” is not identified as a
synonym of “verify.” Merely because “certify” appears in a
list of words that are similar to a descriptive term does
not, by itself, establish that the word “certify” is,
itself, descriptive and that prospective purchasers will
immediately understand that “certify” describes the
verification function in applicant’s software. See In re
Seats, Inc., 757 F.2d 274, 225 USPQ 364 (Fed. Cir. 1985)
(Federal Circuit reversed Board’s decision viewing the mark
“seats” as a synonym for “tickets” or “reservations”).
Thus, the most relevant evidence supporting the
argument that “certify” is descriptive of a verification
function in software is limited to a single, nebulous, and
possibly old dictionary definition and the fact that the
words “certify” and “verify” are identified as similar
words. It is a well-established principle of trademark
law, that if we have any doubts about the descriptiveness
of a mark, we are to resolve them in the applicant’s favor.
In this case, we cannot say that we have no doubt that the
mark CERTIFY is descriptive of computer software for
computer aided electronic circuit design. Therefore, we
must resolve them in applicant’s favor.
Ser No. 75/566,083
10
Decision: The refusal to register applicant’s mark
CERTIFY for the identified goods on the ground that the
mark is merely descriptive is reversed.