Texas Instruments Inc.

Trademark Trial and Appeal Board

Jun 22, 2001

No. 75634910 (T.T.A.B. Jun. 22, 2001)

06/22/01 Paper No. 9
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Texas Instruments Incorporated
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Serial No. 75/634,910
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Gary C. Honeycutt of Navarro IP Law Group, P.C. for Texas
Instruments Incorporated.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Hohein, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Texas Instruments Incorporated has filed an
application to register on the Principal Register the mark
shown below
for the following goods, as amended: “computer software for
the operation of a data link between a general purpose
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/634910
2
processor and digital signal processing circuits” in
International Class 9.1
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 applicant’s mark, when used
on its goods, is merely descriptive thereof.
Applicant has appealed, and both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
As evidence in support of the refusal to register, the
Examining Attorney relies upon the following definition of
the letters “DSP” from The Computer Glossary: The Complete
Illustrated Dictionary (7th ed.):
1. (Digital Signal Processor) A
special-purpose CPU used for digital
signal processing (see below). It
provides extra fast instruction
sequences, such as shift and add and
multiply and add, commonly used in
math-intensive signal processing
applications. 2. (Digital Signal
Processing) A category of techniques
that analyze signals from sources such
as sound, weather satellites and
earthquake monitors. Signals are
converted into digital data and
analyzed using various algorithms such
as Fast Fourier Transform. In sound
cards, DSP chips are used to compress
and decompress audio formats as well as
1 Application Serial No. 75/634,910, filed February 2, 1999,
based on applicant’s assertion of a bona fide intention to use
the mark in commerce.
Ser. No. 75/634910
3
to assist with recording and playback
and speech synthesis. Other audio DSP
uses are the DSP chips in stereo
amplifiers, which are programmed to
simulate concert hall and cinema
effects for home theater and music
listening.
The Examining Attorney also relies upon a few
excerpted stories from the Nexis database, some showing use
of the term “active DSP” referring to digital signal
processors/systems, examples of which follow (emphasis
added):
Headline: Design a multi-DSP system
with just one bus
...and the LSB address lines from the
bus that are driven by the active DSP.
The active DSP can see only a limited
portion of the input buffer.
...Using a bus arbiter, the system’s
data throughout will be a combined play
between the active DSP on the bus
(granted by the arbiter) and the
Next_Block_Counter logic.
...the finishing moment is created by
the reading of the INP 0 by the DSP
that’s active on the bus. The active
DSP reads this bit (memory mapped), and
then stops and releases its bus
request...., “Electronics Design,”
March 6, 1995;
Headline: Rockwell Intros HDSL Set
...The new chip set, called the Bt8970,
is a full-duplex 2B1Q transceiver that
encompasses all the active DSP analog
front-end circuits for an HDSL
transceiver in a single device....,
“Electronic Buyers’ News,” March 31,
1997; and
Ser. No. 75/634910
4
Headline: Audio’s functionality is
Sahara’s bounty
...The modular processor cores can be
regrouped to build other
constellations. A special version
called Sahara Lite, tailored for
intelligent active DSP speaker
applications, is planned for 1998. It
will combine stereo DSP with D/A
conversion and will have only one DSP
and the network interface...,
“Electronic Engineering Times,”
September 15, 1997.
Finally, the Examining Attorney relies on a printout
of a few pages from applicant’s website regarding its
“TMS320 DSP MediaCard” in which applicant refers to certain
features designed into the card, such as, “Direct PC
control of active DSP tasks and memory pages,” “On-board
logic to arbitrate-memory bus between DSP and PC with
software programmable features,” “Bootload of code to the
DSP from its global-data memory under PC control,” “Smart
mode operation for the PC to control DSP directly and share
common memory with DSP,” and “Separate attribute memory to
the PC per PCMCIA spec (spec omitted), also available to
the DSP in its global data memory.”
Applicant does not dispute that “DSP” refers to
Digital Signal Processors, and that “active is a
characteristic of some class of DSP.” (Brief, p. 3.) In
fact, applicant offered to disclaim the letters DSP.
(Brief, p. 11.) However, applicant contends that its mark
Ser. No. 75/634910
5
“ActiveDSP” as a composite mark is arbitrary or suggestive;
and that its goods are not DSP circuits, but rather are
computer software, and in the context of computer software
the term “active” does not have a known meaning and is not
merely descriptive. Specifically, applicant contends as
follows:
Not all DSP circuits are active. An
active DSP is one that is able to
change environments. Applicant is
applying ‘Active’ to computer software.
In a software context, ‘active’ does
not have a known meaning. Even if
Active DSP was descriptive of some DSP
circuits, the mark still would not be
100 percent descriptive of the goods,
and hence, not merely descriptive.
(Brief, p. 8.)
The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the term immediately conveys information concerning
a quality, characteristic, function, ingredient, attribute
or feature of the product or service in connection with
which it is used. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture
Associates, 226 USPQ 285 (TTAB 1985); and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). The determination
of mere descriptiveness must be made in relation to the
goods or services for which registration is sought, the
context in which the term or phrase is being or will be
Ser. No. 75/634910
6
used on or in connection with those goods or services, 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); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). That
is, the question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
We agree with the Examining Attorney that the applied-
for mark “ActiveDSP” (in the special form shown above)
immediately and directly conveys information about a
significant feature or function of applicant’s goods
(“computer software for the operation of a data link
between a general purpose processor and digital signal
processing circuits”). A significant function of
applicant’s computer software, as identified, is to provide
a data link between a general purpose processor and DSP
circuits. Clearly, applicant’s computer software (as
identified) is associated with DSP circuits. Moreover, on
applicant’s webpage, in referring to its DSP MediaCard,
Ser. No. 75/634910
7
applicant states that said product has an “on board DSP”;
that “DSP algorithms can be loaded by the host PC”; and
“once the program is loaded, the host may command the DSP
to execute the algorithms as a co-processor.” Applicant
specifically lists as one feature of the DSP MediaCard as
“Direct PC control of active DSP tasks and memory pages.”2
Computer software is loaded or embedded onto the chip. At
this intersection of the high technology world, applicant
is attempting to create a distinction between the hardware
and the software which, in this situation, is a distinction
without any real difference, particularly to the ultimate
consumer. The purchasing public would clearly understand
that applicant’s software, if and when used on or in
connection with the identified goods, is intended to be
used in conjunction with active DSPs. See In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Intelligent Instrumentation Inc., 40
USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc., 33
USPQ2d 1156 (TTAB 1994).
2 Applicant did not address the information presented by the
Examining Attorney from applicant’s webpage.
Ser. No. 75/634910
8
Suffice it to say that, based on the record before us,
applicant’s arguments to the contrary do not persuade us of
a different result herein.
Finally, even if applicant became the first (and/or
only) entity to use the term “ActiveDSP” in relation to
computer software for the operation of a data link between
a general purpose processor and digital signal processing
circuits, such is not dispositive where, as here, the term
unquestionably projects a merely descriptive connotation.
See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994),
and cases cited therein. We believe competitors would have
a competitive need to use this term. See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2000).
Decision: The refusal to register under Section
2(e)(1) is affirmed.