Altera Corp.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 75349537 (T.T.A.B. Nov. 30, 2000)

Paper No. 12
CEW
11/30/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Altera Corporation
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Serial No. 75/349,537
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Rochelle D. Alpert and Savita N. Krishna of Brobeck,
Phleger & Harrison for applicant.
Cora Moorhead, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
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Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Altera Corporation has filed an application on the
Principal Register to register the mark CLOCKBOOST for
goods identified, as amended, as “a feature of configurable
logic integrated circuits and programmable logic integrated
circuits, namely, timing circuitry.”1
The Examining Attorney has issued a final refusal
requiring the submission of substitute specimens showing

1 Application No. 75/349,537, filed August 29, 1997, based on use in
commerce, alleging first use and first use in commerce as of June 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/349,537
2
use of the mark in connection with the goods identified in
the application.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
During examination of the application and in her final
refusal the Examining Attorney contended that the specimens
are unacceptable because they consist of promotional
materials and do not show use of CLOCKBOOST as a source
indicator, and suggested that appropriate specimens would
include, inter alia, instruction manuals.
The specimens submitted with the application are
described by applicant, in its October 21, 1998, response,
as “the user’s instruction manual that provides the
necessary information for the purchaser to use the
CLOCKBOOST circuitry.” Applicant states in that response
that “[b]ecause the goods offered under the mark CLOCKBOOST
consist of circuitry on a semiconductor device, placement
of the mark on the goods is not commercially feasible.”
With its request for reconsideration of June 17, 1999,
applicant submitted an additional excerpt from its
instruction manual, verified to have been in use prior to
the application filing date, and a declaration from a
customer verifying that the specimen is a technical manual,
Ser No. 75/349,537
3
available from applicant in hard copy or online, that he
must use in connection with the CLOCKBOOST product in order
to make proper use of the product.
The Examining Attorney repeated her refusal in
rejecting applicant's arguments in its request for
reconsideration. For the first time, in her brief, the
Examining Attorney posits an entirely new basis for the
requirement for substitute specimens, contending that the
specimens fail to support the use of CLOCKBOOST as a
trademark. She states in her brief that “the term is used
in merely an informational sense [and] does not function as
a trademark because it neither identifies nor distinguishes
the goods of the applicant from those of others nor does it
indicate the source of the goods." We will not consider
this issue raised at this point in the appeal, since it is
essentially a new ground for refusal. The proper procedure
would have been for the Examining Attorney to file a
request for remand in order to refuse registration on the
ground that the specimens do not show use of CLOCKBOOST as
a trademark. Trademark Rule 2.142(f)(6). See also
Trademark Trial and Appeal Board Manual of Procedure
(TBMP), Section 1209.02.
Further, we find no need to consider a remand sua
sponte because, based on the record before us, the new
Ser No. 75/349,537
4
basis for refusal asserted by the Examining Attorney in her
brief does not render the applicant’s mark unregistrable.
See Trademark Rule 2.142(f)(1) and TMBP Section 1209.01.
Considering the Examining Attorney’s contention in the
final refusal that the specimens are unacceptable because
they consist of promotional materials and do not show use
of CLOCKBOOST as a source indicator, as applicant correctly
notes, the Board, in In re Ultraflight Inc., 221 USPQ 903
(1984), made it clear that if printed matter included with
goods functions as an integral part of the goods, such as a
manual for assembling a kit for the product, placement of
the mark on that printed matter constitutes use on the
goods. Moreover, the Board concluded, in In re Brown
Jordan Co., 219 USPQ 375 (1983), that it is not necessary
that purchasers see the mark for the goods before they
purchase the goods.
The evidence, including the declaration of a customer,
clearly establishes that it is not feasible to place the
trademark on the goods and that the specimens of record
function as instruction manuals. As such, the specimens
are proper and the refusal based on the requirement for
substitute specimens is reversed.
Ser No. 75/349,537
5
Decision: The refusal on the ground that the specimens
are unacceptable evidence of trademark use is reversed.
E. J. Seeherman
C. E. Walters
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board