Simple Technology, Inc.

Trademark Trial and Appeal Board

Jun 3, 1999

No. 74651896 (T.T.A.B. Jun. 3, 1999)

Hearing: Paper No. 18
August 6, 1998 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Simple Technology, Inc.
________
Serial No. 74/651,896
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Jeffrey L. Van Hoosear and Steven Nataupsky of Knobbe,
Martens, Olson & Bear for applicant.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Simple Technology,
Inc. to register the mark IC TOWER for “computer memory
modules and computer software for operating computer memory
modules and user manuals sold therewith” (International
Class 9) and “user manuals and brochures for use in
Ser No. 74/651,896
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connection with computer memory modules” (International
Class 16).1
The Examining Attorney has refused registration under
Section 2(e)(1) of the Trademark Act on the ground that
applicant’s mark, if used in connection with applicant’s
goods, would be merely descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs on
the case.2 Both appeared at an oral hearing held before the
Board.
Applicant contends, in urging that the refusal be
reversed, that while the individual terms of its mark may
have particular meaning in the computer industry, the
combination of the terms results in a mark that is only
suggestive of applicant’s modules and software. More

1 Application Serial No. 74/651,896, filed March 27, 1995,
alleging a bona fide intention to use the mark in commerce.
2 Applicant, in its appeal brief, included a list of fourteen
third-party registrations of marks which include the term
“tower.” The Examining Attorney, in her brief, objected to this
evidence, asserting that third-party registrations may not be
made of record by merely listing them, and that, in any event,
the submission is untimely.
The objection is not well taken in the particular circumstances
of this appeal. The problem here is that applicant, in its
response filed February 26, 1996, listed the registrations, and
the Examining Attorney, in her Office action dated September 16,
1996, did not raise any objection at that time. Thus, the
Examining Attorney essentially waived the objection, and we have
considered the registrations as if properly of record (that is,
as if soft copies of the registrations were submitted prior to
the appeal).
Ser No. 74/651,896
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specifically with respect to the term “tower,” applicant
contends that although the term has a particular meaning in
the computer industry, that meaning pertains only to a type
of configuration for computer hardware, and thus the term
does not have a particular meaning with respect to
applicant’s goods. Applicant’s position is that “it has
taken a term (tower) and used it outside of its normal
meaning (within the computer industry) to suggest a feature
of the product.” (reply brief, p. 3) The proposed mark,
according to applicant, “suggests to consumers that the
integrated chips could be in the form of a tower--a meaning
that will require additional reasoning to understand how
the chips are placed and operate in such a configuration.”
(brief, p. 13) Applicant also argues that each term in its
mark has multiple meanings and that, therefore, the mark as
a whole does not immediately convey information about the
goods. In arguing that its mark is only suggestive,
applicant points to the issuance of third-party
registrations of marks which include the term “tower.”
The Examining Attorney maintains that the mark sought
to be registered merely describes a significant feature of
applicant’s goods, namely that the memory modules are
composed of integrated circuit chips placed in a tower
configuration. The Examining Attorney submitted listings
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from various dictionaries, and excerpts from printed
publications.
It is well settled that a term is considered to be
merely descriptive of goods, within the meaning of Section
2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof
or if it directly conveys information regarding the nature,
function, purpose or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
idea about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
As shown by the dictionary evidence of record, the
abbreviation “IC” means “integrated circuit” or “integrated
chip.” The term “tower” appears in computer dictionaries
as meaning “a name for a personal computer in a vertical or
upright case.” More importantly, for purposes of this
appeal, the term “tower” is defined in a general dictionary
Ser No. 74/651,896
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as “any structure, contrivance, or object that resembles or
suggests a tower.”
The NEXIS evidence includes the following excerpts:
The new IC Tower technology consists of
four 16M DRAM chips that are placed in
a patented “stacked tower”
configuration. The “tower” is then the
equivalent of a 64M DRAM chip...And,
when 64M DRAM chips do become cost
effective, the same IC Tower technology
can be used to create a 256M tower.
Electronic News, July 1, 1996
The IC Tower uses four standard 16-Mbit
DRAM chips that are placed in a stacked
tower, forming the equivalent of a 64-
Mbit DRAM chip. When these towers are
placed on a memory module, the IC Tower
technology can increase the capacity of
one single-in-line memory module up to
128 Mbytes, four times the capacity of
a traditional SIMM...When 64-Mbit DRAM
chips become cost-effective, the same
IC Tower technology can be used to
create a 256-Mbit tower, according to
Simple Technology.
Electronic Buyers’ News, June 24, 1996
The evidence of record convinces us that the Examining
Attorney is correct in stating that the mark IC TOWER
merely describes integrated circuit chip memory modules
stacked in a tower configuration. The individual terms do
not lose their descriptiveness when combined, and the mark,
when considered as a whole, is merely descriptive. There
is nothing unique or incongruous about the combination.
Relevant consumers in the computer field, undoubtedly
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sophisticated for the most part, would readily understand
the mark IC TOWER, when applied to applicant’s goods, as
referring to a significant characteristic or feature of the
goods. That applicant may be the only user of IC TOWER is
not determinative where the term sought to be registered
has a merely descriptive connotation. In re Eden Foods
Inc., 24 USPQ2d 1757, 1761 (TTAB 1992).
The third-party registrations do not compel a
different result. Our task in this appeal is to determine,
based on the record before us, whether applicant’s mark is
merely descriptive. As often noted by the Board, each case
must be determined on its own set of facts. We obviously
are not privy to the records involved in the cited
registrations and, moreover, the determination of
registrability of a particular mark by the Office cannot
control the result in another case involving a different
mark for different goods.
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Decision: The refusal to register is affirmed.
T. J. Quinn
G. D. Hohein
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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