Transistor Devices, Inc.

Trademark Trial and Appeal Board

Dec 16, 2003

No. 75328593 (T.T.A.B. Dec. 16, 2003)

Mailed: 16 DEC 2003
Paper No. 21
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Transistor Devices, Inc.
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Serial No. 75328593
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Eamon J. Wall of Moser, Patterson & Sheridan, LLP for
Transistor Devices, Inc.
Esther Borsuk, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______
Before Seeherman, Bucher and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On July 22, 1997, Transistor Devices, Inc. (applicant)
applied to register the mark TRANSISTOR DEVICES in typed
form for goods ultimately identified as “electrical power
supplies” in International Class 9.1
Initially, the examining attorney refused to register
applicant’s mark on the ground that it was merely
1 The application (Serial No. 75328593) alleges a date of first
use anywhere and in commerce of October 31, 1960.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75328593
2
descriptive of applicant’s goods under Section 2(e)(1) of
the Trademark Act. 15 U.S.C. § 1052(e)(1). In its request
for reconsideration dated December 8, 1999, applicant
amended the application to seek registration under the
provision of Section 2(f) of the Trademark Act on the
ground that applicant’s mark had acquired distinctiveness.
At that point, the examining attorney held that the mark
was generic and that it was not registrable under the
provision of Section 2(f).
After the examining attorney made the refusal on the
ground of genericness final, applicant appealed to this
Board.2
“The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” H. Marvin Ginn Corp. v.
2 Genericness is the only issue on appeal. The examining
attorney does not challenge applicant’s evidence of acquired
distinctiveness other than to maintain that “since it is the
examining attorney’s contention that the entire mark is generic,
the discussion as to acquired distinctiveness is irrelevant.”
Examining Attorney’s Brief at 6. Applicant “has moved for
registration under §2(f) to expedite the registration process.”
Applicant’s Brief at 2. However, evidence of acquired
distinctiveness is also relevant to the issue of genericness.
Thus, we regard the examining attorney’s statement to indicate
that, if TRANSISTOR DEVICES is found not to be generic, the
evidence of acquired distinctiveness is sufficient to demonstrate
that the mark is entitled to registration under the provision of
Section 2(f).
Ser No. 75328593
3
Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Ginn goes on to explain
that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?
Id.
We begin by analyzing the evidence of genericness.
The examining attorney submitted a definition of a
“transistor” as “a solid-state electronic device that is
used to control the flow of electricity in electronic
equipment and consists of a small block of a semiconductor
(as a germanium) with at least three electrodes.”3 There is
no doubt that applicant’s products contain transistors.
See Instruction Manual SPS 2318, pp. 2-3 (“This unregulated
DC is regulated by the pass transistor configuration” and
the “reference voltage is compared with the output voltage
by the action of voltage divider network R3, R2, and R1
(voltage adjust) and differential amplifier transistors Q2
and Q3”).
3 Online Merriam-Webster Dictionary. We take judicial notice of
this definition. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 75328593
4
The examining attorney also submitted printouts from
the LEXIS/NEXIS database to show that the words “transistor
device[s]” are used together in many articles. A sampling
of the articles is set out below.
To avoid this problem, you can use two simple bipolar
transistors to latch-off the whole SMPS in the case of
an optocoupler failure (Figure 3a). You wire the
bipolars in a thyristor manner using a dual-transistor
device such as the MBT3946D.
EDN, December 7, 2000.
Because of its low off-state leakage current, this
true enhancement mode device eliminates the drain-
supply switch required for depletion-mode pHEMT and
metal semiconductor field-effect-transistor devices.
Electronic Buyers News, December 4, 2000.
The new FPGA family, called Virtex-E, includes a 2-
million-gate, 150-million transistor device.
Electronic Buyers News, October 18, 1999.
Availability of multimillion transistor devices means
single instruction multiple data processing has
finally been brought to the fore…
Electronics Weekly, October 11, 2000.
Pact GmbH … rolls out one of the most complex CPUs of
the crowd: a 30-million-transistor device that
integrates 128 thirty-two bit processors.
Electronics Engineering Times, October 9, 2000.
A team from Japan’s NTT research laboratories has gone
beyond the realm of single-transistor devices to build
the first elemental circuit using single-electron
transistors.
Electronics Engineering Times, October 9, 2000.
Title: Combination positive temperature coefficient
resistor and metal-oxide semiconductor field-effect
transistor devices.
Wisconsin State Journal, September 28, 2000.
Ser No. 75328593
5
These organic semiconductors have tremendous potential
for applications in optical memory, … solar energy
converters and field-effect transistor devices.
Plastics News, September 4, 2000.
[I]t avoids the limitations of SRAM programmable
routing. And, the RC coefficient of the eASICore is
significantly lower than that of SRAM-controlled pass
transistor devices, thus yielding performance
comparable to that of standard-cell technology.
EDN, September 1, 2000.
These results allow aggressive, next generation
transistor devices to be developed using currently
available DUV optical lithography.
Solid State Technology, July 1, 2000.
In a couple of concessions to the James Bond secret-
agent genre from which “Mission” and its TV-inspired
predecessor spring, there comes an array of tiny
transistor devices that allow the characters both to
talk to one another and track one another physically
across long and congested distances.
State Journal-Register (Springfield, Illinois), June
1, 2000.
The next stage in the design process was to
characterize the transistor device employed. The
state-of-the-art pHEMT device selected was the model
LPS 200.
Microwave Journal, February 1, 2000.
The new curve-fit methods are applied to microwave and
RF transistor devices.
Microwave Journal, December 1, 1999.
Vishay’s latest monolithic transistor devices combine
two automatic gain controlled (AGC) amplifiers on a
single chip.
Electronics Times, September 13, 1999.
Based on this evidence, the examining attorney argues
that the “articles clearly show that the phrase ‘transistor
Ser No. 75328593
6
devices’ is commonly used in relation to electrical
products.” Brief at 5.
Applicant, in response, argues that while its goods
contain transistors, its goods are electrical power
supplies, not transistors. “By way of analogy, an engine
and a transmission are important components of a motor
vehicle, but one would never refer to a motor vehicle as a
‘muffler device,’ an ‘engine device’ or a ‘transmission
device’ because a vehicle comprises many other components.”
Reply Brief at 3. In addition, applicant argues that “none
of the articles establish[es] that an electrical power
supply is commonly known or referred to as a ‘transistor
device.’” Reply Brief at 5 (emphasis omitted). Applicant
points out that “in many of the articles cited by the
Examining Attorney, the term ‘transistor device’ is used to
refer to the transistor itself, or to a transistor
fabricated upon a semiconductor substrate, i.e., a
component of a larger device or system, and not the system
itself.” Reply Brief at 4 (emphasis omitted).
A “proper genericness inquiry focuses on the
description of services [or goods] set forth in the
certificate of registration.” Magic Wand Inc. v. RDB Inc.,
940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). The
Federal Circuit has also made it clear that the evidence
Ser No. 75328593
7
must show that more than a small part of the relevant
purchasers would identify the term as the genus of the
goods.
According to the certificate of registration, the
TOUCHLESS mark applies to automobile washing services,
not automobile washing equipment. Thus, the relevant
purchasing public for automobile washing services
encompasses automobile owners and operators. Vendors,
operators, and manufacturers of washing equipment fall
within the relevant public only as potential or actual
customers. These vendors, operators, and
manufacturers are a very small part of the relevant
purchasing public. Accordingly, evidence of generic
use by this small part of the relevant purchasing
public has limited probative value. The TTAB did not
clearly err in concluding that this evidence,
considered along with the evidence of industry use, is
not enough to show generic use or understanding by the
relevant public.
Magic Wand, 19 USPQ2d at 1553-54.
Therefore, we must focus on whether the term
“transistor devices” is generic for electrical power
supplies to a significant number of relevant purchasers.
Regarding the prospective purchasers, applicant’s
evidence shows that many of its products may be purchased
by careful, sophisticated purchasers. There is some
evidence that other customers may be less sophisticated.
See, e.g.. TDI 15W Battery Backup Power System (“This unit
provides reliable power for H-ISU (Home Integrated Services
Units)”). However, applicant’s identification of goods
“electrical power supplies” does not necessarily limit the
Ser No. 75328593
8
purchasers to careful and sophisticated purchasers and we
must consider the purchasers of its goods in this manner.
We now address the two factors posed by Ginn. First,
we look at what the genus of applicant’s goods is. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832,
1836 (Fed. Cir. 1999). It appears that applicant’s goods
would be part of the genus of electrical power supplies or
simply power supplies. The evidence of record does not
support a conclusion that applicant’s goods are part of a
genus known as “transistor devices.” To the extent there
is a genus of “transistor devices,” it appears to relate to
specialized electrical products such as parts of computers.
The evidence concerning the term “transistor devices” shows
that it refers to specific products rather than showing use
as a broad term applied to a wide range of goods such as
“electrical products.”
Second, we look at whether the term is understood by
the relevant public to refer to the genus of the goods.
The question of whether the relevant public understands the
term “transistor devices” to refer to the genus of
applicant’s goods is a close question. Ginn, 228 USPQ at
530. “Evidence of the public's understanding of the term
may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
Ser No. 75328593
9
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Fenner and Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The
critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” Ginn, 228 USPQ at 530. Before we
can hold that applicant’s term “transistor devices” is
generic, we need some evidence to show that the public uses
the term to refer to the genus of the goods. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE held
not generic for association services because there was no
evidence of generic use of the term). “The Board cannot
simply cite definitions and generic uses of the constituent
terms of a mark, or in this case, a phrase within the mark,
in lieu of conducting an inquiry into the meaning of the
disputed phrases as a whole to hold a mark, or a phrase
within the mark, generic. Id. at 1836. See also In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1811 (Fed. Cir. 2001) (“There is no record evidence
that the relevant public refers to the class of shop-at-
home telephone mattress retailers as ‘1-888-M-A-T-R-E-S-
S’”).
Ser No. 75328593
10
We note that applicant’s goods contain transistors and
there is evidence of use of the term “transistor devices”
to refer to certain products containing transistors.
However, we ultimately conclude that the public would not
understand the term “transistor devices’ to be the genus of
applicant’s electrical power supplies. We agree with
applicant that the fact that its goods contain transistors
does not make the term “transistor devices” generic for the
goods. Previously, the CCPA held that the term AUTOMATIC
RADIO was not even merely descriptive for radios having an
automatic volume control. In re Automatic Radio Mfg. Co.,
404 F.2d 1391, 160 USPQ 233 (CCPA 1969).
We quite agree that "automatic volume control" is
wholly descriptive of that feature of a radio
receiver, but that does not make AUTOMATIC merely
descriptive of the radio receiver. Nor does it make
"AUTOMATIC RADIO" the name of the receiver.
Id. at 235 (emphasis in original).
Therefore, we now look to see if there is evidence
that would indicate that the relevant purchasers recognize
“transistor devices” as the genus of the goods. In this
case, the evidence of the use of the term “transistor
devices” does not show that either (1) the term is used to
refer to any product containing a transistor(s) or (2) that
it is used to refer to electrical power supplies. If
applicant’s goods were circuit boards or computers, the
Ser No. 75328593
11
case might be different, but the goods here are electrical
power supplies. Transistors seem to be ubiquitous, and
they are used in a wide variety of products. See e.g., The
Art of Electronics, p. 50 (“The transistor is the essential
ingredient of every electronic circuit, from the simplest
amplifier or oscillator to the most elaborate digital
computer”). They were invented more than fifty years ago.
Ian M. Ross, The Invention of the Transistor, IEEE 1998),
p. 1. However, despite the widespread use of transistors
over a long period, there is little evidence that the term
“transistor device” is used to identify a broad category of
products defined by the fact that they contain transistors.
Nor is there evidence that electrical power supplies are
referred to as “transistor devices.” Evidence that
different products may be referred to as “transistor
devices” does not establish that electrical power supplies
are referred to as transistor devices.
The examining attorney relies on the case of In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d
unpub., 871 F.2d 1097 (Fed. Cir. 1989). In that case, the
Board found that the term ANALOG DEVICES was generic for
various computer products. There were dictionary
definitions for the term “analog device” that supported a
conclusion that the term defined a category or class of
Ser No. 75328593
12
devices having analog capabilities. The Board concluded
that “at least some of the goods, such as analog to digital
and digital to analog converters, analog computational
circuits and analog multipliers/dividers would, in our
view, fall within the category of analog devices.” 6
USPQ2d at 1810. In the present case, there is much less
evidence that there is a genus of goods identified as
“transistor devices.” Unlike the situation in Analog
Devices, there are no dictionary entries that define
“transistor devices.” More importantly, it is not at all
clear whether applicant’s goods would be referred to as
“transistor devices” merely because its goods contain
transistors.
“The burden of showing that a proposed trademark is
generic remains with the Patent and Trademark Office.”
Merrill Lynch, 4 USPQ2d at 1143. The Office must show by
“clear evidence” that the mark is generic. Id.; see also
In re Central Sprinkler Co., 49 USPQ2d 1194, 1196 (TTAB
1998) (internal quotation marks omitted) (The Office has
“the burden of proving this refusal with clear evidence of
genericness”). “[A]ny doubt on the matter [of genericness]
should be resolved in applicant’s favor.” In re Waverly,
Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
Ser No. 75328593
13
When we review the evidence in this light, we are not
persuaded that the Office has meet its burden of showing
that the term TRANSISTOR DEVICES is generic for electrical
power supplies. Inasmuch as the examining attorney has not
contested applicant’s claim of acquired distinctiveness
beyond noting that it is irrelevant to overcome a
genericness refusal, the examining attorney does not
maintain that there is any other bar to the publication of
this mark for opposition.
Decision: The refusal of registration is reversed.