Mentor Graphics Corporation

Trademark Trial and Appeal Board

Mar 6, 2008

No. 78325604 (T.T.A.B. Mar. 6, 2008)

Mailed: March 6, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mentor Graphics Corporation
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Serial No. 78325604
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Douglas Hancock of Hancock Hughey for Mentor Graphics
Corporation.

David E. Tooley, Jr.,1 Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______

Before Seeherman, Walters and Grendel, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Mentor Graphics Corporation seeks registration on the
Principal Register of the mark VIRTUALWIRES, in standard
character form, for “computer hardware and software for
electronic design automation,” in International Class 9.2

1 The examining attorney on the brief in this appeal is different
from the examining attorney who examined the application.

2 Serial No. 78325604, filed November 10, 2003, based on an
allegation of bona fide intent to use the mark, under Trademark
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78325604
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the subject matter does not function as a
mark in connection with the identified goods as it is shown
on the specimen and, thus, the specimen is not acceptable
evidence of use of the mark as a trademark. See Trademark
Act Sections 1, 2 and 45, 15 U.S.C. §§ 1051, 1052 and 1127.
The appeal is fully briefed.
After careful consideration of the evidence and
arguments of record, we reverse the refusal to register.
The specimen of record is shown below:

The statement of use contains the following description of
the specimen: “The specimen is a splash screen displayed

Act Section 1(b), 15 U.S.C. §1051(b). On August 22, 2006,
applicant submitted a statement of use, alleging first use and
first use in commerce as of August 16, 2006, and a specimen of
use.

Ser. No. 78325604
3
on computer monitors associated with computers on which the
subject software is running.”
As a preliminary matter, we dismiss the examining
attorney’s objection in his brief to “evidence” introduced
by applicant in its brief. The text in the brief to which
the examining attorney refers is merely further explanation
as to the nature of the identified goods, not documentary
“evidence”; and this information was previously stated for
the most part in applicant’s response of November 28, 2006.
In the following paragraphs, applicant describes its
identified goods:
The goods described in the application are
“computer hardware and software for electronic
design automation.” Electronic design automation
[EDA] is a field of electronics that deals with
the development and engineering of complex
circuits …. EDA engineers that use EDA software
tend to be highly trained and educated – they
typically are electrical engineers who specialize
in circuit design. The software is just as
sophisticated as the users.
(response of November 28, 2006)
. . .
VIRTUALWIRES is software. VIRTUALWIRES software
enables a technology that is used in several
different kinds of software and hardware sold by
applicant. In a variety of marketing materials,
and on the specimen, applicant uses the word
“technology” to describe its VIRTUALWIRES
product, in part because it is a background
software system that is used in numerous other,
separately branded products. It is appropriate
therefore from a product marketing viewpoint to
identify the VIRTUALWIRES product as a
technology.

Ser. No. 78325604
4
In the case of the specimen submitted with the
statement of use, VIRTUALWIRES is software that
is used in another software tool called GVL. GVL
is an emulation system that helps users to
emulate complex circuits. VIRTUALWIRES is
software used in GVL that enables certain scaling
technologies used in electronic design automation
emulation.
(appeal brief, p. 2-3)

Does the subject matter function as a mark as used on the
specimen?

The examining attorney makes essentially two arguments
in this regard. First, the examining attorney contends
that “the specimen is unacceptable as evidence of actual
trademark use because as used on the specimen of record,
[the mark] is being used to describe a technology and not
‘computer hardware and software for electronic design
automation,’” (Office Action, November 18, 2006). In other
words, as shown on the specimen, the examining attorney
contends that the mark does not identify the goods recited
in the application. The examining attorney submitted
definitions from The American Heritage Dictionary of the
English Language, 3rd ed. 1992, of “software” as “the
programs, routines, and symbolic languages that control the
functioning of the hardware and direct its operation” and
of “technology” as “b. the scientific method and material
used to achieve a commercial or industrial objective.”
Ser. No. 78325604
5
The examining attorney’s definition of “technology” is
from a dictionary published in 1992, which is a long time
in the past for computer-related products. Therefore,
additionally, we take judicial notice of the definition in
Merriam-Webster’s Collegiate Dictionary, 11th ed. 2003, of
“technology” as “a manner of accomplishing a task esp.
using technical processes, methods, or knowledge .”
In view of these definitions, we disagree with the
examining attorney and find that the term “technology”
encompasses EDA computer hardware and software. This is
particularly true in this case due to the complex nature of
the field in which this hardware and software is used and
the multiple layers of programs running, i.e., the
identified software operates in the background in a complex
system of hardware and software. Thus, the use of the term
“technology” as the noun or type of goods identified by the
mark VIRTUALWIRES does not render the specimen unacceptable
for the purpose of showing that VIRTUALWIRES functions as a
mark in connection with “computer hardware and software for
electronic design automation.”3

3 Cf. In re Hutchinson Technology Inc., 7 USPQ2d 1490 (Fed. Cir.
1988). The court found HUTCHINSON TECHNOLOGY not to be primarily
merely a surname, and stated “the fact that the term ‘technology’
is used in connection with computer products does not mean that
the term is descriptive of them[;] many other goods possibly may
Ser. No. 78325604
6
In his second argument in support of his position that
the subject matter does not function as a mark, the
examining attorney contends that VIRTUALWIRES “is embedded
in a descriptive sentence, specifically, ‘this emulation
system runs on VIRTUALWIRES(TM) technology,’ in small text
in the middle of a specimen containing other more
prominently placed text and graphic elements”; that “use of
the TM symbol beside the otherwise defective use of a mark
will not obviate a failure to function refusal”; and he
makes the following statement (brief, p. 4):
In fact, the terms VIRTUAL and WIRES are both
highly descriptive terms that, when used
together, create a phrase that consumers are
likely to mistake for a generic technology when
not displayed in a separated and prominent
manner. The descriptive nature of applicant’s
mark is reinforced by its insertion into the
informational sentence “[t]his emulation system
runs on VIRTUALWIRES(TM) technology.”

Again, we disagree with the examining attorney.
First, we note that the examining attorney has not refused
registration on the ground that the mark VIRTUALWIRES is
merely descriptive. Further, if the examining attorney’s

be included within the broad term ‘technology,’ but that does not
make the term descriptive of all of those goods” (1492). The
court also remanded the case for entry of a disclaimer of
TECHNOLOGY. In today’s marketplace, the term “technology” is
clearly a broad term with several different meanings and, in the
computer field, encompasses a number of different products and
services. As the term is used in the specimen of record in this
case, it functions as a category of goods in the computer field
encompassing EDA hardware and software.
Ser. No. 78325604
7
position is that the mark as a whole is inherently
distinctive, but the individual words “virtual” and “wires”
are merely descriptive in connection with the identified
goods, he has submitted no evidence in this regard. Thus,
on this record, we presume that, if properly used,
VIRTUALWIRES is a distinctive mark.
Second, we find the manner of use of the subject
matter to be as a mark, not merely informational. While
the sentence in which the mark appears provides
information, the information is that the system being used
is powered by a software technology identified by the mark
VIRTUALWIRES. This is evidenced by the nature of the
sentence itself; by the representation of the term
VIRTUALWIRES in all capital letters followed by the “TM”
symbol in all bolded capital letters; and by the mark’s
distinctive use to modify the descriptive terminology for
the goods as broadly characterized, i.e., “technology.”
This finding is not negated by the fact that the sentence
provides information that the system uses the goods
identified by the mark, or by the fact that there may be
additional matter on the screen that is also prominent.
Therefore, we conclude that VIRTUALWIRES does function as a
trademark in reference to the identified goods as used on
the specimen of record.
Ser. No. 78325604
8
As a final matter, we note that, in its brief,
applicant stated that the specimen of record “is a screen
that is displayed on the monitor when the computer user
requests ‘About’ information from the software’s Help menu”
(p. 1). In his brief, the examining attorney asked the
Board to take judicial notice of several definitions,
including of the terms “About screen” and “splash screen.”
Applicant originally described its specimen as a splash
screen and, in view of applicant’s statement in its brief,
the examining attorney argues that, because of the nature
of an About screen, applicant’s subsequent statement is
further evidence that relevant consumers will not perceive
of the subject matter as a trademark.
To address the examining attorney’s argument, we take
judicial notice of the following two definitions:
Splash screen – “Initial screen that is displayed
for a few seconds when you start a program. The
splash screen normally displays the product logo
and gives basic copyright information.” The
Dictionary of Personal Computing and the
Internet, Peter Coffin Publishing, 2000.

About – “A menu selection that tells you who
developed the program and gives copyright
information.” Dictionary of Computing,
Bloomsbury Publishing, 5th ed. 2004.

Although a splash screen and an About screen appear to
be different types of screens that are viewed by computer
users at different points, that does not change the fact
Ser. No. 78325604
9
that VIRTUALWIRES, as it is used on the About screen,
functions as a mark to identify the recited goods.
Further, as the issue has been framed in this appeal, the
question of whether a specimen of use consisting of an
About screen is acceptable to show use of the subject
matter as a mark is not before us. Therefore, we have
given this question no consideration.
Decision: The refusal to register is reversed on the
ground that the subject matter does not function as a mark
in connection with the identified goods as it is shown on
the specimen.