Lattice Semiconductor Corp.

Trademark Trial and Appeal Board

Dec 22, 1999

No. 74638085 (T.T.A.B. Dec. 22, 1999)

Paper No. 16
LKM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 12/22/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lattice Semiconductor Corporation
________
Serial No. 74/638,085
_______
Frank S. Hiscox of Skjerven, Morrill, MacPherson, Franklin &
Friel LLP for applicant.
Dominick J. Salemi, Trademark Examining Attorney, Law Office
107 (Thomas J. Lamone, Managing Attorney).
_______
Before Rice, Seeherman and McLeod, Administrative Trademark
Judges.
Opinion by McLeod, Administrative Trademark Judge:
Lattice Semiconductor Corporation has filed an
application to register the designation shown below on the
Supplemental Register for “integrated circuits and computer
programs for use with integrated circuits.”1

1 Application Serial No. 74/638,085, filed February 22, 1995,
under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). On
June 18, 1997, applicant filed an amendment to allege use, and
Ser No. 74/638,085
2
The Trademark Examining Attorney has refused
registration under Section 23 of the Trademark Act, 15
U.S.C. Section 1091, on the ground that applicant’s
designation, when applied to applicant’s goods, is generic
and incapable of identifying and distinguishing applicant’s
goods from those of others.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
Before turning to the merits of the appeal, we note
that this application was originally filed as an intent-to-
use application on the Principal Register. The Examining
Attorney refused registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. Section 1052(e)(1), on the ground
that the designation is merely descriptive of the goods
identified in the application. Applicant responded by
filing a disclaimer of the term “ISP” apart from the mark as
shown, and asserted that it did not intend to claim any
rights to the acronym itself, apart from the stylized
presentation. When the Examining Attorney issued his final
refusal under Section 2(e)(1), applicant filed an amendment
to allege use and an amendment to the Supplemental Register.

specimens, alleging dates of first use and first use in commerce
on February 26, 1996.
Ser No. 74/638,085
3
Subsequent to its amendment to the Supplemental
Register and disclaimer, applicant has at times continued to
argue that the mark is registrable on the Principal
Register. Indeed, applicant has devoted a substantial
portion of its appeal briefs to various alternative claims
for registration on either the Principal or Supplemental
Register. However, a review of the file shows that
applicant, in making the amendment to the Supplemental
Register in a response filed June 18, 1997, did not
characterize or otherwise indicate in any fashion that the
amendment was an alternative one. See TMEP Section
1212.02(c).
Accordingly, the only issues before the Board are (i)
whether applicant’s designation “isp” is generic for
applicant’s products and, if so, (ii) whether the
designation is nevertheless capable of distinguishing
applicant’s goods, and therefore registrable on the
Supplemental Register, because of the style in which it is
displayed.2
Turning to the first issue, the Office has the burden
of proving genericness by "clear evidence" thereof. In re
Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,

2 Even if we considered applicant’s alternative claims on the
Principal Register, we would reach the same result in this case.
Ser No. 74/638,085
4
1571, 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 registered to refer to the genus (category or class)
of goods in question. In re Women’s Publishing Co. Inc., 23
USPQ2d 1876, 1877 (TTAB 1992). Our primary reviewing court
has set forth a two-step inquiry to determine whether a mark
is generic: First, what is the genus (category or class) of
goods at issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to that
genus (category or class) of goods? H. Marvin Ginn
Corporation v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986).
Evidence of the relevant public’s understanding of a term
may be obtained from any competent source, including
dictionaries, magazines, trade journals and other
publications. See In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 1559, 227 USPQ 961, 963 (Fed. Cir. 1985).
The Examining Attorney contends that “isp” is an
acronym for “in-system programmable,” a generic term in the
computer chip and semiconductor fields as applied to
integrated circuits. Although applicant has disclaimed the
acronym, the Examining Attorney asserts that the commercial
impression of the designation is simply the generic acronym
Ser No. 74/638,085
5
“isp” in lowercase typeface. According to the Examining
Attorney, applicant’s designation is devoid of any
stylization or uniqueness which would render the mark
capable of registration. Rather, the Examining Attorney
characterizes applicant’s designation as “ordinary and non-
distinctive, of the kind with which the average consumer is
confronted everyday.” (Examining Attorney’s Br. at 5).
In support of his refusal, the Examining Attorney
relies upon case law citations and approximately eleven
articles from the DIALOG database containing the acronym
“ISP.” These articles were made of record via a Letter of
Protest granted by the Office on August 23, 1995, and
incorporated by reference by both applicant and the
Examining Attorney during prosecution.
Applicant, on the other hand, argues on appeal that the
Examining Attorney has not presented any evidence that the
applied-for mark is generic for applicant’s products. At
most, applicant submits, the acronym “ISP” refers to “in-
system programmable,” a feature of integrated circuits.
Applicant maintains that this designation has no meaning
with respect to the computer programs listed in applicant’s
identification of goods. Applicant also argues, among other
things, that consumers would not immediately recognize
applicant’s lowercase, italicized presentation of “isp” as
Ser No. 74/638,085
6
an acronym for “in-system programmable.” According to
applicant, competitors do not use the style of lettering
shown in applicant’s mark. At a minimum, applicant
concludes that its unique presentation of “isp” warrants
registration on the Supplemental Register.
In support of its position, applicant has relied upon
case law and third-party registrations to support its
position that marks have routinely been granted registration
based upon stylized lettering. During prosecution,
applicant also submitted articles from the World Wide Web
and the LEXIS/NEXIS database which contain the acronym
“ISP.”
As noted above, applicant entered a disclaimer of
“ISP” apart from the mark as shown, and repeatedly stated
during prosecution that it only claims rights in the
“stylized ‘isp’ in lower case letters.” See e.g.
(Applicant’s Response dated Feb. 5, 1998, pp. 2 & 4,
Applicant’s Amendment dated March 7, 1996, p. 2, Applicant’s
Response dated Nov. 13, 1996, p. 1). Applicant also
acknowledged during prosecution that the semiconductor
industry uses “ISP” in uppercase typeface as an acronym for
the term “in-system programmable.” (Applicant’s Response
dated Feb. 5, 1998, p. 2). We view applicant’s statements
and disclaimer during prosecution as a concession that the
Ser No. 74/638,085
7
acronym “ISP” is generic for the identified goods.3 See In
re The Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (CCPA
1977).
Even if we were to consider the issue of genericness on
the merits, the evidence of record supports the conclusion
that the acronym “ISP” is generic (in either uppercase or
lowercase typeface) as applied to applicant’s products and
would be so regarded by purchasers. The articles made of
record via the Letter of Protest, and those offered by
applicant itself, define “ISP” as “in-system programmable.”
According to the evidence, “ISP” is a specific type or
subset of integrated circuits (applicant’s genus or class of
goods).4 The following articles of record indicate that
others in the industry have recently begun to use “ISP” (in

3 We reject applicant’s argument that the acronym is not generic
because it allegedly does not refer to each and every item listed
in the identification of goods. It is well settled that if a
term is generic for some of the goods or services listed in an
application, "registration is properly refused." In re Analog
Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
4 The term “integrated circuit” is defined as “the formal name
for chip.” The Computer Glossary, 199 (7th ed. 1995). According to
the specimens of record, applicant’s “integrated circuits” include
programmable logic devices (PLDs). A “PLD” is defined as a type
of logic chip used to reconfigure the sequence of operations
performed by hardware or software. Id. at 227 & 303; see also
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983)(The Board may take judicial notice of dictionary
definitions).
Ser No. 74/638,085
8
either uppercase or lowercase typeface) to refer to their
own integrated circuits.
“In-system programmability . . . . PLD vendors –
including Altera, Lattice Semiconductor Corp.,
Vantis, and Xilinx – are taking advantage of a
growing ISP market.” Jim Evans, Fast and
Flexible, Electronic Buyers’ News, April 21,
1997.
“Altera claims Jam will allow in-system-
programmable (ISP) PLDs to be programmed faster,
more easily, and with smaller file sizes than
manufacturer-specific languages.” Mark Hachman,
Altera in a ‘Jam’ Over Language, Electronic
Buyers’ News, July 14, 1997. (emphasis added).
“In terms of specific openings, Altera offers in-
system programmable, or ISP, PLDs.” Brian Santo,
Spotlight: Devices –- Logic Vendors Scrounge for
Talented Engineers, Electronic Engineering Times,
May 5, 1997. (emphasis added).
“. . . . complex programmable logic device (CPLD)
industry by introducing a family of flash-based
in-system programmable (ISP) CPLDs. The move is
an attempt to gain a leadership position in the
CPLD market – currently dominated by Altera – the
company said.” Xilinix Making Challenge For CPLD
Leadership Role, Electronic News, Jan. 20, 1997.
(emphasis added).
Atmel has expanded its line of in-system
programmable (isp), downloadable flash
microcontrollers, to include a device that
provides an expanded on-chip programmable
memory.” MCU has In-system Programmability,
What’s New in Electronics, July 1997, at 44.
(emphasis added).
In fact, several articles authored by or about
applicant show the designation “ISP” (in both
Ser No. 74/638,085
9
uppercase and lowercase typeface) used in a generic
sense.
“ISP devices, on the other hand, are treated as
any other standard component from incoming
inventory through board assembly, with patterning
occurring at final test after board assembly. . .
. As a result, non-ISP devices must be programmed
by hand using a standard logic programmer.” Stan
Kopec, In-system Tuning Expands Horizon,
Electronic Engineering Times, April 11, 1994, at
S26. (emphasis added).
“The simplest, and the most important to Lattice
today, is that ISP chips don’t have to go through
a mechanical programmer before they are placed on
the chip. With the fragile fine-pitch lead
frames used on most PLDs today, eliminating a
parts-handling step by programming the chips
after insertion can dramatically improve loss
from mechanical damage. . . . The boards can be
inventoried, unprogrammed, and then the ISP PLDs
configured at shipment time, cutting back on
inventory headaches.” Ron Wilson and Brian
Fuller, Lattice Rebound Maps Unconventional
Course, Electronic Engineering Times, Oct. 10,
1994, at 31. (emphasis added).
“Silicon Concepts can supply two of Lattice
Semiconductor’s latest isp (in-system
programmable) super i/o high density cplds.”
Silicon Concepts Supply Latest isp, What’s New in
Electronics, March 1997, at 68. (emphasis added).
“isp PLDs can provide benefits to systems tested
using boundary-scan. Along with inherent
reprogrammability, isp PLDs can be programmed
while soldered to the board. Individual devices
or entire chains of devices can be programmed
concurrently.” Dave Thompson, In-system programs
Link to Testing, Electronic Engineering Times,
January 26, 1998. (emphasis added).
Ser No. 74/638,085
10
Having concluded that the acronym “ISP” (in either
uppercase or lowercase typeface) is generic for applicant’s
goods, we come to the question of whether the designation is
nevertheless capable of distinguishing applicant’s goods
because of the manner in which it is displayed.
As a general rule, an entire mark cannot be disclaimed
and also registered. See TMEP Section 1213.07. An
exception to this rule is when the unregistrable components
of a mark are combined in a design or display which is so
“distinctive” as to create a commercial impression separate
and apart from the unregistrable components. In re
Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980), citing
Wella, surpa; see also 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 12:40, p. 12-81 (4th Ed.
1999).
In the leading case of Wella, supra, the Court of
Customs and Patent Appeals held the designation shown below,
with the word “balsam” disclaimed apart from the mark as
shown, to be capable of distinguishing applicant’s hair
conditioner and hair shampoo, and hence registrable on the
Supplemental Register because of the style of lettering in
Ser No. 74/638,085
11
which the word “balsam” was displayed. The court also noted
that “balsam” did not appear in third-party marks in the
“unique style of the applicant’s mark.” Wella, 565 F.2d at
144, 196 USPQ at 8.
Thereafter, the Board, in Carolyn’s Candies, supra,
found the designation shown below to be registrable on the
Supplemental Register for candy bars, with a disclaimer of
the words “yogurt bar” apart from the mark as shown.
The Board noted that in order for a generic term to be
capable of registration, the presentation must be so
striking, unique or “distinctive” in character as to
overcome its inherent incapacity. Id. at 361. The Board
held that the style and display of “yogurt bar” was more
“distinctive” than that of the word “balsam” in Wella,
supra.
On the other hand, in In re Anchor Hocking Corp., 223
USPQ 85 (TTAB 1984), the Board affirmed a refusal to
register the designation shown below on the Supplemental
Register, with a disclaimer of “microwave” and “turntable,”
Ser No. 74/638,085
12
for “ovenware, namely, a plastic dish for supporting
foodstuffs while being cooked in microwave oven.”
The Board found that the words “microwave turntable” were
“displayed in a plain block style of lettering” which was
characterized as “ordinary and nondistinctive” and
“obviously not unique.” Id. at 87; see also In re Cosmetic
Factory Inc., 220 USPQ 1103 (TTAB 1983)(style of lettering
of “body soap” found ordinary and nondistinctive).
The determination of whether the display of a mark is
striking, unique or “distinctive” is naturally a subjective
one. In this case, applicant’s acronym “isp” is shown in an
ordinary lowercase, slightly italicized typeface. We agree
with the Examining Attorney that there is nothing unique or
unusual about the presentation of applicant's designation to
create a commercial impression separate and apart from the
generic acronym “ISP.” In this regard, applicant’s
designation differs from the highly stylized, curlicue
lettering of “balsam” in Wella, supra, and the unique letter
style and placement of “yogurt bar” in Carolyn’s Candies,
supra. In fact, applicant’s designation is even less
Ser No. 74/638,085
13
“distinctive” than the presentation of the words “microwave
turntable” in Anchor Hocking, supra.
Decision: The refusal to register on the Supplemental
Register is affirmed.
J. E. Rice
E. J. Seeherman
L. K. McLeod
Administrative Trademark
Judges, Trademark
Trial and Appeal Board