Endura IP Holdings

Trademark Trial and Appeal Board

May 24, 2017

No. 86648041 (T.T.A.B. May. 24, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Endura IP Holdings
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Serial No. 86648041
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Daniel M. Cavanaugh of Klein, O’Neill & Singh, LLP,
for Endura IP Holdings.
Brin Anderson Desai, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Zervas, Bergsman and Adlin,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Endura IP Holdings (“Applicant”) seeks registration on the Principal Register of
the mark PDN-ON-A-CHIP (in standard characters) for “voltage regulator with
transient control integrated circuit cores for electrical power regulation,” in Class 9.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that

1 Application Serial No. 86648041 was filed on June 1, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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Applicant’s mark PDN-on-a-chip is merely descriptive of Applicant’s goods because
“PDN-ON-A-CHIP immediately conveys to consumers that applicant’s voltage
regulators are featured on integrated chips or circuits as part of a power delivery
network.”2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely
descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the term is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).

2 Trademark Examining Attorney’s Brief (13 TTABVUE 10).
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Whether a mark is merely descriptive is determined in relation to the goods for
which registration is sought, not in the abstract or on the basis of guesswork, and we
must consider “the context in which [the mark] is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Chamber of Commerce of the U.S.,
102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). In other words,
we evaluate whether someone who knows what the goods are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark also has a merely descriptive significance turns on
whether the combination of terms evokes a non-descriptive commercial impression.
If each component retains its merely descriptive significance in relation to the goods,
the combination results in a composite that is itself merely descriptive. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of
commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re Putman Publ’g. Co., 39
Serial No. 86648041
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USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363
(SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing
head at one end, the head being of solid uninterrupted construction without prongs”).
In this regard, “incongruity is one of the accepted guideposts in the evolved set of
legal principles for discriminating the suggestive from the descriptive mark.” In re
Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498
(the association of applicant’s mark TENNIS IN THE ROUND with the phrase
“theater-in-the-round” creates an incongruity because applicant’s services do not
involve a tennis court in the middle of an auditorium). Thus, we must consider the
issue of descriptiveness by looking at the mark in its entirety.
“PDN” is an abbreviation for “power delivery network.” The Examining Attorney
submitted numerous documents displaying the term “Power Delivery Network
(PDN),” including:
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• “An 574: Printed Circuit Board (PCB) Power Delivery Network (PDN) Design
Methodology”;3
• “Understanding Power Integrity as a System-Wide Challenge.”
A power-delivery network (PDN) is a complex chain of
interconnects that delivers electrons from a voltage
regulator through the printed circuit board (PCB), across
the package, and through the on-die routing to the
transistors themselves.4
• “Efficient On-Chip Power Delivery.”
Integrated voltage regulators
Traditional power delivery system use off-chip voltage
regulators to generate the required supply voltage and
currents, but the power delivery network (PDN) that
connects them to the chip itself must pass through the
PCB, package pins, and C4 pads.5
Applicant seeks registration of its mark for a voltage regulator. Voltage regulation
is a feature or component of a power delivery network. “The goal of a power delivery
network is to provide clean power and reference voltage to the active devices on the
die.”6
The power delivery network (PDN) is a critical design
component in system-on-chip (SoC) designs. A robust PDN
is required to achieve a high level of power supply integrity.
… With careful design, however, the PDN can tolerate
large variations in load currents while maintaining the
supply voltage level across the chip within a desired range.

3 Altera.com attached to the September 18, 2015 Office Action (TSDR p. 36). All citations to
TSDR are in the .pdf format.
4 Electronicdesign.com attached to the April 11, 2016 Office Action (TSDR p. 14).
5 Vlsiarch.eecs.harvard.edu attached to the April 11, 2016 Office Action (TSDR 49).
6 “AN 574: Printed Circuit Board (PCB) Power Delivery Network (PDN) Design
Methodology,” (altera.com) attached to the September 18, 2015 Office Action (TSDR p. 36).
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Emerging low-power design techniques have made the
design of PDN an ever more challenging task. More
precisely, multiple voltage domains are being introduced
on the System-on-a-Chip (SoC) in order to minimize the
overall power dissipation of the system while meeting a
performance constraint. … In these systems, it is required
that the PDN delivers power at the appropriate voltage
levels to different functional blocks (FB’s) while incurring
the minimum power loss. A typical PDN design
methodology for a high-performance SoC comprises
of three steps:
•Establishing a target impedance to be met across a broad
frequency range for the PDN,
•Designing a proper system-level decoupling network i.e.,
specifying components to meet that impedance,
•Selecting the right voltage regulator modules.7
(Emphasis added)
* * *
In the design of PDNs, the focus is always on minimizing
the voltage drop on the power supply terminals of the
transistor circuits within an IC and also on ensuring that
the voltage maximum does not cause reliability problems.
1.1.4 Power Delivery Network
A PDN consists of power supply, DC-DC converters
(also called voltage regulator modules, or VRMs), lots
of decoupling capacitors, and interconnections that
act as conduits for the supply and removal of charge
to and from the switching circuits. … The voltage is
reduced through a DC-DC converter and supplied to the IC
through the interconnections in the motherboard and
package.8 (Emphasis added).

7 Behnam Amelifard and Massoud Pedram, “Optimal Design of the Power Delivery Network
for Multiple Voltage-Island System-on-Chips” attached to the April 11, 2016 Office Action
(TSDR p. 22).
8 Power Integrity Modeling and Design for Semiconductors and Systems
(informit.com) attached to the September 18, 2015 Office Action (TSDR p. 34).
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Thus, the evidence belies Applicant’s contention that “voltage regulators are not
themselves a constituent or feature of these networks.”9
The term “system on a chip” “is an integrated circuit (IC) that integrates all
components of a computer or other electronic system into a single chip.”10 A “system
on a chip” is typically used in voltage regulators and power management circuits.11
The Examining Attorney submitted articles referring to PDNs on chips, including:
• Jun So Pak, et. al, “On-chip PDN design effects on 3D stacked on-chip PDN
impedance based on TSV interconnection”;12
• Jun So Pak, et. al., Electrical Design of Through Silicon Via
When we design the on-chip PDN, on-chip decoupling
capacitors (on-chip decaps) cannot be omitted because of
their significant role in supplying charge. Chip-technology
development has caused an increase in the circuit densities
and the switching speeds. These increases translate to an
increase in the required current. To supply the required
charges to circuits nearby, many on-chip decaps are
embedded in on-chip PDNs.13

9 Applicant’s Brief, p. 6 (11 TTABVUEW 7).
10 Wikipedia (Wikipedia.org) attached to the September 18, 2015 Office Action (TSDR p. 38);
see also Technopedia (technopedia.com) attached to the April 11, 2016 Office Action (TSDR
p. 10) (“A system on a chip (SoC) combined the required electronic circuits of various
computer components onto a single chip (IC). SoC is a complete electronic substrate system.”).
A “chip” is defined, inter alia, as “a small, thin piece of semiconductor bearing numerous
circuits integrated into its substrate. … Also called microchip.” The American Heritage
Dictionary of the English Language (5th ed. 2015) (ahdictionary.com) attached to the
September 18, 2015 Office Action (TSDR p. 40).
11 Id.
12 IEEE Xplore (ieeexplore.ieee.org) attached to the September 18, 2015 Office Action
(TSDR p. 41).
13 September 18, 2015 Office Action (TSDR p. 42).
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• Tao Tong, et. al., “Efficient On-Chip Power Delivery: Integrated voltage
regulators.”14
We investigate techniques to improve on-chip voltage
conversion and evaluate performance of IVRs in a system
to determine whether their benefit can outweigh their
drawbacks in a whole system.
• Behnam Amelifard and Massoud Pedram, “Optimal Design of the Power
Delivery Network for Multiple Voltage-Island System-on-Chips.”15
Abstract – This paper introduces techniques for power
efficient design of power delivery network in multiple
voltage-island System-on-Chip (SoC) designs.
* * *
With careful design, however, the PDN can tolerate large
variations in load currents while maintaining the supply
voltage level across the chip within a desired range.
Emerging low-power design techniques have made the
design of PDN an even more challenging task. More
precisely, multiple voltage domains are being introduced
on the System-on-chip (SoC) in order to minimize the
overall power dissipation of the system while meeting a
performance constraint.
When combined, the terms “PDN” and “on-a-chip” in the mark PDN-ON-A-CHIP
maintain their descriptive significance when used in connection with Applicant’s
voltage regulator because they mean a power delivery network embedded on a
microchip.
Accordingly, based on the record before us, PDN-ON-A-CHIP is merely descriptive
of a voltage regulator because a voltage regulator may be a key component of a power

14 Vlsiarch.eeecs.harvard.edu attached to the April 11, 2016 Office Action (TSDR p. 12).
15 April 11, 2016 Office Action (TSDR p. 22).
Serial No. 86648041
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delivery network. If PDN-ON-A-CHIP is used in connection with Applicant’s goods,
relevant consumers would understand that Applicant’s voltage regulator is a
component of a power delivery network embedded on a microchip. See In re Oppedahl
& Larson LLP, 71 USPQ2d at 1372 (if HOTEL and .COM individually are merely
descriptive of an aspect of appellant’s goods, the PTO must also determine whether
the mark [HOTELS.COM] as a whole are merely descriptive); In re Swatch Grp.
Mgmt. Servs. AG, 110 USPQ2d 1751, 1753 (TTAB 2014) (“the record leaves no doubt
that [TOURBILLON] is merely descriptive of a feature or component of horological
or chronometric instruments.”); In re Fisher Radio Corp., 151 USPQ 747, 748 (TTAB
1966) (“there can be no doubt that the word ‘stereo’ is a merely descriptive term as
applied to applicant’s goods, or a component thereof.”); In re Modular Control Co.,
146 USPQ 670, 671 (TTAB 1965); see also Haydon Switch and Instrument Inc. v.
Rexnord Inc., 4 USPQ2d 1510, 1515 (D. Conn. 1987) (because planetary gears are a
component of plaintiff’s mechanical drum-wheel digital display time counters, the
mark PLANETGEAR is descriptive). Thus, PDN-ON-A-CHIP immediately describes
a “voltage regulator with transient control integrated circuit cores for electrical power
regulation” because it may be a component or a power delivery network. See In re
Swatch Grp. Mgmt. Servs. AG, 110 USPQ2d at 1753 (“TOURBILLON is merely
descriptive of jewelry, inasmuch as the category of jewelry includes watches and
watches may include, as a significant component, a tourbillon.”).
Decision: The refusal to register Applicant’s mark PDN-ON-A-CHIP is affirmed.