Mistletoe Technologies, Inc.

Trademark Trial and Appeal Board

Dec 14, 2006

No. 76547170 (T.T.A.B. Dec. 14, 2006)

Mailed:
December 14, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mistletoe Technologies, Inc.

________

Serial No. 76547170
_______

Michael A. Cofield and Stephen S. Ford of Marger Johnson &
McCollom, P.C. for Mistletoe Technologies, Inc.

Eli J. Hellman, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Seeherman, Bucher and Kuhlke, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Mistletoe Technologies, Inc. seeks registration on the
Principal Register of the mark FABLESS SOFTWARE COMPANY
(in standard character format) for services recited in the
application, as amended, as follows:
“computer software for use in operating and
maintaining computer systems” in
International Class 9; and

“computer software development, and computer
software design” in International Class 42.1

1 Application Serial No. 76547170 was filed on September 26,
2003 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76547170
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the
Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to applicant’s
identified goods, i.e., that the term “fabless software
company” immediately informs potential purchasers about the
nature of applicant’s goods and services.2
Applicant and the Trademark Examining Attorney have
fully briefed the issues involved in this appeal. We
affirm the refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of a significant
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services with which it is
used or is intended to be used. In re Abcor Development

2 The current appeal involves a “parent” application in the
two identified classes of goods and services. A “child”
application (Serial No. 76978051) has been divided out of this
application, and with the approval of the Trademark Examining
Attorney, has recently been published for opposition. This child
application included three classes of goods and services, as
follows: “computers, computer hardware, and computer chips” in
International Class 9; “custom manufacture of computer chips for
others” in International Class 40; and “design of computer chips”
in International Class 42.

Serial No. 76547170
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Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)
[GASBADGE merely descriptive of a “gas monitoring badge”].
See also In re MBNA America Bank N. A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and
PHILADELPHIA CARD merely descriptive of “credit card
services.” The Court found that a “mark is merely
descriptive if the ultimate consumers immediately associate
it with a quality or characteristic of the product or
service.”]. Hence, the ultimate question before us is
whether the term FABLESS SOFTWARE COMPANY conveys
information about a significant feature or characteristic
of applicant’s goods and services with the immediacy and
particularity required by the Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987) [APPLE PIE merely descriptive of potpourri
mixture: “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately
conveys … knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
Serial No. 76547170
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whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted)].
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can
guess what applicant’s goods are after seeing applicant’s
mark alone. In re Abcor, supra at 218 [“Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”]; In re Home Builders Association of
Greenville, 18 USPQ2d 1313
(TTAB 1990) [NEW HOME BUYER’S
GUIDE merely descriptive of “real estate advertisement
services”]; and In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985) [APRICOT is merely descriptive of
apricot-scented dolls]. Rather, the proper test in
determining whether a term is merely descriptive is to
consider the applied-for mark in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the significance that the mark
Serial No. 76547170
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is likely to have on the average purchaser encountering the
goods or services in the marketplace. See In re Omaha
National Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987)
[the term “first tier”

describes a class of banks]; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
VISUAL DESIGNER is merely descriptive of “computer programs
for controlling the acquisition of data from measurement
devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991) [MULTI-VIS is merely descriptive of “multiple
viscosity motor oil”]; In re Engineering Systems Corp.,
2 USPQ2d 1075 (TTAB 1986) [DESIGN GRAPHIX merely descriptive
of computer graphics programs]; and In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979) [COASTER-CARDS merely
descriptive of a coaster suitable for direct mailing].
The term “Fabless”
The Trademark Examining Attorney takes the position
that the term “fabless” refers to a company that designs
but does not necessarily own or operate its own
semiconductor chip fabrication foundry, choosing instead to
outsource this manufacturing process. His support is drawn
Serial No. 76547170
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from online glossaries and other websites, including the
following:
Fab - This is short for fabrication plant. …

Fabless - This term refers to a company that produces chips but doesn't
own a fabrication plant, or fab. These companies are starting to become
more and more successful at creating chips and renting out other
companies' excess fab space to produce their chips. In fact, some
fabrication plant owners specifically target such fabless companies to
offer their fab space for rent.

Fabrication Plant - A fab is a factory that takes raw silicon wafers and
creates chips with them. Often, fabs are categorized by what process
they use. For example, the Intel Pentium chip with MMX was produced
in a fab with a 0.35 micron process. Fabrication plants cost billions of
dollars to build and are outdated within years. However, they can have a
decent life producing volume products after they are no longer
considered high-end.3
--------------------------------------------------------------------

Fabless
A semiconductor company that does not own or operate its own silicon
wafer fabrication foundries, but instead outsources manufacturing.4
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FABLESS
Semiconductor manufacturers have two possible approaches to making
their products. They can either build and run their own manufacturing
plants, or restrict themselves to designing chips that are then made by
others. The former was once the more usual method, involving the
construction and operation of extremely expensive factories (called
silicon foundries in the jargon) which are capable of the high standards
of precision and cleanliness required to make these complex circuits.
Many of these plants were sited in places, often in foreign countries
where wage rates and other costs were low or grants were available and
were usually restricted to manufacture of components with no research or
design facilities. These became known in the business as fabs, short for
“fabrication plants.” More recently, some companies — especially the
smaller ones — have begun to select the other route to manufacture,
because they have discovered they can innovate more effectively and
bring products to market more quickly if they contract out the production
stages to a foundry. Such firms are said to be fabless. This group now
has its own trade association, the Fabless Semiconductor Association.5

3 http://www.geek.com/glossary/glossary_search.cgi?f
4 http://www.mathstar.com/Technology_Glossary_FGH.htm. This
definition was taken from a technology information page contained
within the website of MathStar, a fabless semiconductor company.
5 http://www.quinion.com/words/turnsofphrase/tp-fab1.htm.
Michael Quinion, on his “World Wide Words” website writes about
International English from a British viewpoint.
Serial No. 76547170
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--------------------------------------------------------------------
fabless
Refers to a company that does not manufacture its own silicon wafers
and concentrates on the design and development of semiconductor chips.
Manufacturers of semiconductors can either build and run their own
manufacturing plants or design chips that are manufactured by someone
else. A fab is a facility that produces its own silicon wafers. A fabless
facility is one that outsources the production of silicon wafers. Fabless
companies focus on the design and development of their products.6
--------------------------------------------------------------------

A fabless semiconductor company is one that does not own and
operate a silicon wafer fabrication facility (fab), but contracts with a
foundry to manufacture its chips. This model originated in the 1980s
and is adopted by companies wishing to eliminate or reduce the capital
investment necessary to build a $1.5 billion fab and the resources
necessary to keep the fab operating at the leading edge. The group’s
inherent value is derived from their design capability and intellectual
property portfolios. In 1990, there were seven public fabless
companies with a total market value of $1.6 billion. Today, there are
over 40 public fabless companies, 31 of which are included in this
composite, with a total market capitalization of $22.7 billion and over
$6.3 billion in revenues, representing about five percent of the total
semiconductor industry.

FABLSSM [NMS/FSA Fabless Stock] is comprised of public
semiconductor companies that have fabless charters with market
capitalizations in excess of $100 million.

"When the FSA was formed in 1994 to represent the fabless
community, these companies did not garner much respect and
credibility on Wall Street," stated Jodi Shelton, FSA executive director.
"Today, this is a highly praised model and there are dozens of success
stories. The success has really been a function of the simultaneous
growth of the foundry model that is supporting this group with
industry leading-edge technology. We believe that Wall Street will
appreciate this type of distinction between the fabless community and
the rest of the semiconductor industry," said Shelton.7
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In responding to these entries, applicant makes the
argument that the identified products and services “are
mainly hardware.” While applicant may well provide its
software and related services via computerized discs and

6 http://systems.webopedia.com/TERM/f/fabless.html.
Wĕbopēdia describes itself as an online dictionary and search
engine for definitions of terms in the field of computers and
Internet technology.
7 http://www.fsa.org/news/article.asp?article=1998/0518
Serial No. 76547170
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other tangible media, we note that its identification and
recitation herein is for computer software and computer
software development and design.
In any case, applicant and the Trademark Examining
Attorney agree that in the relevant industry, the word
“fabless” is a descriptor for a class of semiconductor
firms. However, applicant asserts that its own goods and
services are in no way “fabricationless,” and therefore,
applicant argues that the term “fabless” alone does not
have the immediacy required by Section 2(e)(1) of the
Trademark Act. On this point, however, we disagree.
While applicant’s goods and services are not
technically fabless, there is no denying that fabless
semiconductor firms comprise a significant, and apparently,
growing portion of applicant’s market. A term may be found
to be merely descriptive if it names a user of the relevant
goods and/or services. See In re Hunter Publishing, 204
USPQ 957 (TTAB 1979) [JOBBER AND WAREHOUSE EXECUTIVE]; and In
re Camel Manufacturing Co., 222 USPQ 1031 (TTAB 1984)
[MOUNTAIN CAMPER]. It is clear that fabless producers
would generally use the software of applicant (or from
applicant’s competitors) in designing and developing their
computer chips.
Serial No. 76547170
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Finally, while applicant does not deny that “fabless”
producers may comprise a significant share of its market
for the involved goods and services, applicant argues that
it does not “intend to limit its products to such a
market.”
On this point, we also agree with the Trademark
Examining Attorney that for purposes of a Section 2(e)(1)
analysis, it is sufficient that the involved term describes
only one attribute of the goods and/or services in order to
be found merely descriptive. See In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ
338 (TTAB 1973). Therefore, that semiconductor vendors
without in-house manufacturing facilities, or fabless chip
producers, are among applicant’s intended customers, is
sufficient to find the term “Fabless” to be merely
descriptive – making irrelevant the fact that applicant’s
customers may also include chip designers working for
integrated device manufacturers. Moreover, the record
shows that the number of companies embracing the fabless
model has increased significantly over the course of the
last decade, and is certain to shape the future of the
semiconductor industry. Hence, “fabless” is a major
characteristic of the semiconductor industry – the targeted
customers for applicant’s goods and services.
Serial No. 76547170
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The term “Software”
As noted above, applicant’s identification of goods
includes the terminology “computer software” and its
recitation of services includes the terms “computer
software development, and computer software design.”
Accordingly, the term “software” alone is highly
descriptive, if not generic, for the involved goods and
services.
The combined term, “Fabless Software”
The following two Internet excerpts placed into the
record by the Trademark Examining Attorney discuss software
for fabless chip producers marketed by Genesis Fabless and
Prolific, Inc., both of which are in the same business as
is applicant, Mistletoe Technologies:
Genesis Fabless™
Turn-Key Yield Maximization Software for Fabless Production
Environments
The Genesis Fabless™ Turnkey Yield Maximization Software platform offers the
same powerful yield learning technologies featured in Genesis Enterprise™, gained
from customers such as world leading microprocessor and memory manufacturers,
foundries, and fabless producers; but specially engineered to also include the unique
features needed to meet the challenges of today's fast moving fabless sector.
Through its patented Yield Mine DFM® (Design for Manufacturability)
automated decision making technology, Genesis Fabless has dramatically reduced the
analysis time to find root causes of design for manufacturability issues in foundry
production data.
The Yield Base® and Metadata™ technologies embedded within the Genesis
Fabless platform assure seamless data integration between the fabless company and its
foundries, test houses, and contract assembly locations. Data is automatically
integrated into a data core allowing the specialized Genesis Fabless analysis tools to
quickly highlight excursions compared to vendor designs.
Serial No. 76547170
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The available turnkey option provides the customer with a pre-configured
database, pre-loaded software for rapid uptime, at an affordable price. Data analysts,
engineers, and managers can quickly begin to utilize the scalable platform in managing
multiple data sets from outsourced operations around the world.

Genesis Fabless™ empowers fabless producers with a complete platform, with
data acquisition, integration and analysis specifically engineered for the fabless sector.
Some of its many powerful features include: a development environment through work
flow and scripting, parameter sensitivity analysis, test/marginal parameters analysis, test
sequence correlation analysis, parameter trending and excursion analysis, guard
banding, visualization through wafer map overlay, interactive graphics with drill down,
web publishing and web interface capability (Genesis Web), and specialized analysis
algorithms to comprehensively assess the impact of the design on the
"manufacturability" of the resulting chip.8
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Prolific Improves Timing at 2004 FSA Suppliers Expo;
Offers Fabless Companies Free Trial of Its ProTiming
Optimization Software
NEWARK, Calif. -- Prolific Inc., the leading provider of design optimization and
automated standard cell creation software, today announced that it will be offering
free trials of its ProTiming™ design optimization software at the Fabless
Semiconductor Association's (FSA) 2004 FSA Suppliers Expo in San Jose. Free
download and evaluation of the software, which is integrated with Synopsys'
PrimeTime® software, will be offered to qualified PrimeTime users attending the
Expo.
"Designers use a variety of tools, long hours, and a great deal of manual effort to
improve timing," said Michael Miller, director of marketing at Prolific. "Even after the
designer and the other tools are exhausted, ProTiming can improve the results."
ProTiming's integration with PrimeTime makes it an easy to use, no-risk solution for
final-pass timing closure. The software starts optimization after other tools are
finished, makes use of cells already existing in the library, and can result in up to a
20% improvement in performance and power without modifying RTL or adding
complex cells to the design. ProTiming is currently available on Linux, HP-UX, and
Solaris.9

8 http://www.ydyn.com/products/genesis_fabless.htm.
According to this website, Yield Dynamics, Inc. (or YDI) supplies
software that is used to monitor, maintain and adjust equipment
operational performance.
9 http://www.electronics-express.com/showPressRelease.
jhtml?articleID=243425. According to this website, Prolific,
Inc. is based in Silicon Valley, provides software (e.g.,
industry leading tools having marks like ProTiming, ProTime and
ProPower) to enable the design of the most demanding, leading-
edge integrated circuits, optimizing quality and performance
(e.g., timing, power, area and yield) while significantly
reducing development time and costs. ProTiming is used by the
Serial No. 76547170
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According to the Trademark Examining Attorney:
It follows then, that this prospective
consumer of the applicant’s goods and
services would not be the average Joe
consumer out to purchase a computer at the
local retailer; but rather would be one of
some sophistication in the relative [sic]
silicon wafer/semiconductor chip industry,
especially one in the fabless chip
production industry. This consumer would
also know that there is industry software to
aid such fabless chip producers in the
process of production and design
optimization, for example.

Trademark Examining Attorney’s final refusal of November 24,
2004, unnumbered p. 2.
By contrast, applicant cites to In re TMS Corp., 200
USPQ 57, 59 (TTAB 1978) [THE MONEY SERVICE is suggestive of
applicant’s financial services] in support of its argument
that, absent sufficient particularity, an actual or
prospective customer would need to use thought or
imagination to discover the vital purpose, characteristic
or quality of applicant’s services.
Applicant argues that even though its mark may be a
combination of commonly-used words, as applied to its
identified goods and services, the combination of the words
FABLESS and SOFTWARE creates an incongruity such that its

top semiconductor companies around the world, including library
and chip designers at semiconductor manufacturers and fabless
design houses, working on high performance and/or low power
designs.
Serial No. 76547170
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prospective customers “would have to extrapolate to make a
connection between the chips and software products offered
by the Applicant and the mark FABLESS SOFTWARE COMPANY.”
That is, applicant contends that the significance of this
incongruous combination “would not be grasped without some
measure of imagination and ‘mental pause’,” citing to In re
Shutts, 217 USPQ 363, 364-365 (TTAB 1983) [SNO-RAKE is not
merely descriptive of a snow removal hand tool, the head of
which is solid uninterrupted construction without prongs].
In addition, applicant argues that the Trademark Examining
Attorney has failed to establish the descriptiveness of the
combined term, “Fabless Software,” while applicant asserts
it has shown that this is not a term of art in the EDA
(electronic design automation) industry, specifically
noting that the record only shows uses of “wordy” constructs
like “ ... a suite of software applications for fabless
semiconductor companies” (Applicant’s reply brief, p. 3).
Applicant contends that inasmuch as the term “Fabless
Software” does not have an obvious meaning in relation to
its goods and services, the fact that no third party has
used this combination further corroborates applicant’s
contention that the mark is not merely descriptive, citing
to In re TBG, Inc., 229 USPQ 759, 760 (TTAB 1986)
[SHOWROOM ONLINE is not merely descriptive of services
Serial No. 76547170
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recited as “leasing computer databases and video disks in
the field of interior furnishings and related products of
others”].
However, the fact that applicant may be the first and
only user of a descriptive designation does not justify
registration if the only significance conveyed by the term
is merely descriptive. See In re National Shooting Sports
Foundatin, Inc., 219 USPQ 1018 (TTAB 1983) [SHOOTING,
HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE is descriptive
for conducting and arranging trade shows in hunting,
shooting, and outdoor sports products field]. Thus, the
failure of the Trademark Examining Attorney to uncover
examples of that specific combination does not detract from
the fact the two words, when combined, would be perceived
as merely descriptive by those in the semiconductor
industry when used in connection with software for
designing and developing computer chips. Also, as
contended by the Trademark Examining Attorney, we must
consider that the relevant population of prospective
purchasers herein will include purchasing agents for
fabless semiconductor firms. These sophisticated consumers
would know immediately that the combined term, “fabless
software,” has a singular reference to a suite of software
Serial No. 76547170
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intended solely for their industry.10 Given applicant’s
quite broad identification of goods / recital of services,
they must be read as inclusive of all types of actual
software and software development services directed to
designers working for fabless enterprises, including
software for logic design, debugging, optimization, blue
print verification, exchanges of layout data, physical
verification, etc.
The word “Company”
The fact that applicant’s mark also includes the
entity designator “Company” does not detract from the
merely descriptive nature of the mark. See In re Energy
Products of Idaho, 13 USPQ2d 2049 (TTAB 1989) [the phrase
THE WASTE TO ENERGY COMPANY is merely descriptive of

10 The record shows that the complexity of the design and
development software tools used in the EDA industry matches the
highly-complex chips to be produced. According to the technical
details contained in this record (see e.g., Genesis and Prolific
software entries, pp. 10 – 11, supra), semiconductor design
software platforms/suites/applications combine in a variety of
ways the following components and/or characteristics:
• Embedded software solutions, turn-key applications,
etc.
• High level logical specification design
• Functional verification of the high level logical
specification (e.g., debuggers)
• Tools for the exchange of layout data between systems
• Physical synthesis and verification
• Software ensuring fast time-to-market
• Optimization tools for performance acceleration and
design productivity
Serial No. 76547170
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“engineering consulting services in developing, designing,
manufacturing, installing, starting up and operating low
pollution fluid bed equipment”]. We have repeatedly held
that “a mark which names the type of commercial
establishment from which particular goods come is merely
descriptive of those goods.” In re The Phone Company,
Inc., 218 USPQ 1027, 1028 (TTAB 1983) [THE PHONE COMPANY is
no more registrable for goods such as telephones and
telephone accessories than it is for retail store services
featuring such goods].
Rather, viewing the mark in its entirety, consumers
would immediately recognize that it describes a company
that vends software to, inter alia, fabless enterprises.
Conclusion:
Accordingly, we find the term “Fabless Software
Company” to be merely descriptive for the listed goods and
services.
Decision: The refusal to register the term FABLESS
SOFTWARE COMPANY on the Principal Register on the ground
that it is merely descriptive of the identified goods and
services under Section 2(e)(1) of the Lanham Act is hereby
affirmed.