MTS Products

Trademark Trial and Appeal Board

Aug 6, 2008

No. 78921611 (T.T.A.B. Aug. 6, 2008)

Mailed: 8/6/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MTS Products
________

Serial No. 78921611
_______

Ben M. Hsia for MTS Products.

Jessica A. Powers, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

MTS Products filed an application to register the mark
IC POWER (“POWER” disclaimed) for a wide variety of
computer hardware and accessories; and a wide variety of
other electronic products, including audio equipment, video
and digital cameras, phones, and televisions.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 78921611, filed July 1, 2006, alleging
first use anywhere and first use in commerce in 2005.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78921611
2
§1052(e)(1), on the ground that applicant’s mark, when used
in connection with applicant’s goods, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that the letters “IC”
are an abbreviation for “integrated circuit.” Accordingly,
the examining attorney argues that the proposed mark, IC
POWER, immediately describes an important feature of the
goods, namely that they contain integrated circuit power
sources. In support of the refusal, the examining attorney
submitted dictionary evidence relating to “IC,” “POWER” and
“integrated circuit.”2 Also of record are excerpts of
Internet articles, and a portion of the file history of
applicant’s Registration No. 3228340 of the mark IC POWER
and design (“IC POWER” disclaimed) for goods identical to
or closely related to the goods involved herein.
Although applicant agrees that the term “POWER” is
merely descriptive of its goods, applicant argues that the
mark as a whole is just suggestive. In this connection
applicant contends that the letters “IC” have many

2 Pursuant to the examining attorney’s request, we take judicial
notice of the dictionary definitions set forth in her appeal
brief. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB
2006).
Ser No. 78921611
3
different meanings and, therefore, the mark is a double
entendre. In urging reversal of the refusal applicant
introduced copies of twenty-five third-party registrations
of marks comprising, in whole or in part, the letters “IC”
for goods in International Class 9. In each instance,
there is no disclaimer of the letters.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re
Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether
a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
Ser No. 78921611
4
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use; contrary to the gist of a portion of
applicant’s argument, that a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled
that “[t]he question is not whether someone presented with
only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002). The “average” or “ordinary”
consumer is the class or classes of actual or prospective
customers of applicant’s goods or services. In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. If each component
retains its merely descriptive significance in relation to
the goods or services, the combination results in a
composite that is itself merely descriptive. See, e.g., In
Ser No. 78921611
5
re Tower Tech Inc., supra [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; and In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS
merely descriptive of computer programs for use in
development and deployment of application programs].
The dictionary evidence shows that the letters “IC”
are an abbreviation for “integrated circuit.” See, e.g.,
The American Heritage Dictionary of the English Language
(4th ed. 2000). The other dictionary listings show the same
information. The term “power”, already disclaimed by
applicant, is defined as “the energy or motive force by
which a physical system or machine is operated; electrical
or mechanical energy; the product of applied potential
difference and current in a direct-current circuit.” Id.
The record further includes a listing for “integrated
circuit” appearing in Wikipedia:
A monolithic integrated circuit (also
known as IC, microcircuit, microchip,
silicon chip, or chip) is a
miniaturized electronic circuit
(consisting mainly of semiconductor
devices, as well as passive components)
that has been manufactured in the
surface of a thin substrate of
semiconductor material...there are two
main advantages of ICs over discrete
circuits...performance is high since
the components switch quickly and
consume little power...integrated
circuits have become ubiquitous.
Computers, cellular phones, and other
Ser No. 78921611
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digital appliances are now inextricable
parts of the structure of modern
societies. That is, modern computing,
communications, manufacturing and
transport systems, including the
Internet, all depend on the existence
of integrated circuits.

The examining attorney also introduced excerpts of
articles retrieved from the Internet showing descriptive
uses of “IC” or “IC power”:
Minimize IC power without sacrificing
performance
This paper outlines the various
techniques available for designing low-
power chips....
(www.eetimes.com, 7/15/2004)

IC Power Control Experts Capture $15
Million in Second Round
The funds will be used to continue the
development and commercialization of a
new power management solution for the
growing “un-plugged” electronics
market...“With our unrivaled backing,
we can continue to grow our high-
caliber engineering team as we get
ready to unleash a revolution in the
design of ICs for power management.”
(Market Wire, September 2003)

Types of Power Supply ICs
Personal computers, AV equipment, and
other common electronic devices
incorporate a number of electronic
components in order to realize the
function of those devices. “Power
supply” is the name given to the
functional block that supplies the
voltage or current required to operate
the electronic components...The power
supply IC in this power supply block is
used to convert the rectifying circuit
output to the required stabilized DC
Ser No. 78921611
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voltage...This is where a power supply
IC of NEC Electronics can be used
effectively.
(www.necel.com)

Based on the meanings of the individual terms and the
other evidence of record, we find that the combination IC
POWER also is as merely descriptive as the individual
terms. When the proposed mark is viewed in the context of
applicant’s goods, the term immediately informs prospective
customers that applicant’s electronic goods utilize
integrated circuit (“IC”) power supplies. In fact,
applicant concedes that the Internet evidence “does suggest
that IC and POWER are commonly used to describe integrated
circuit power sources.” (Brief, p. 11). Applicant’s
concession is further borne out by its own Registration No.
3228340, issued April 10, 2007, of the mark shown below

for goods that are largely identical (or closely related)
to the goods involved in the present application. In the
registration, applicant disclaimed the exclusive right to
use “ic POWER” apart from the mark. Applicant stated in
the underlying application that “ic appearing in the mark
Ser No. 78921611
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means or signifies integrated circuits [in] the relevant
trade or industry or as applied to the goods/services
listed in the application.”3
Applicant’s argument that the letters “IC” have many
meanings other than “integrated circuit” and, thus, the
mark is a double entendre is ill founded. Firstly, mere
descriptiveness is determined in relation to the goods for
which registration is sought. Accordingly, as indicated
earlier, that a term may have a different meaning(s) in a
different context is not controlling. See In re Chopper
Industries, 222 USPQ 258 (TTAB 1984). The fact that the
letters “IC” also act as an abbreviation for “internal
combustion (engine),” “Iceland” and “intracellular” is
irrelevant in the context of applicant’s particular goods.
Secondly, in each of the double entendre cases cited by
applicant, the secondary interpretations that make each
expression a double entendre consist of an association that
the public would make quite readily, and the new

3 Although we have considered applicant’s prior disclaimer and
statement, they are by no means dispositive of this appeal. So
as to be clear, we have considered the entire evidentiary record
in reaching our decision. Further, applicant misses the mark in
arguing that the prior disclaimer does not prejudice its rights
thereafter in the disclaimed matter. As spelled out in Section
6(b) of the Trademark Act, 15 U.S.C. §1056(b), there is no
prejudice if the disclaimed matter has become distinctive of
applicant’s goods. In the present case, applicant has not
claimed acquired distinctiveness under Section 2(f). See TMEP
§1213.11 (5th ed. 2007).
Ser No. 78921611
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combination creates another meaning that renders the
combination registrable as a mark. As indicated above,
applicant’s theory of a double entendre based on the
multiple meanings of “IC” is off base. Applicant has
offered no other theories for its argument, and we find in
any event that the instant mark is not analogous to the
marks involved in the cases cited by applicant.
In finding that IC POWER is merely descriptive, we
have considered the evidence of third-party registrations
of IC marks, wherein there is no disclaimer of the letters
“IC,” for goods listed in Class 9. While uniform treatment
under the Trademark Act is an administrative goal, our task
in this appeal is to determine, based on the record before
us, whether IC POWER is merely descriptive (determining in
the process, of course, whether “IC” is descriptive). The
existence of these registrations does not compel a
different result herein. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the board or this
court.”]. As often stated, each case must stand on its own
record. The present record amply supports our conclusion
in this appeal.
Ser No. 78921611
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We conclude that applicant’s proposed mark IC POWER,
as applied to applicant’s goods, is merely descriptive
thereof under Section 2(e)(1). The mark describes a
significant feature or characteristic of applicant’s
electronic goods, namely that they contain an integrated
circuit power supply.
Decision: The refusal to register is affirmed.