Superchips, Inc.

Trademark Trial and Appeal Board

Sep 14, 2004

No. 76424590 (T.T.A.B. Sep. 14, 2004)

Mailed: September 14, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Superchips, Inc.
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Serial No. 76424590
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David L. Sigalow and Ava K. Dopplet of Allen, Dyer, Doppelt,
Milbrath & Gilchrist for Superchips, Inc.
Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
____________
Before Simms, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Superchips, Inc. filed an application to register on
the Principal Register the mark SUPERCHIPS INC. for, as
amended, “hand-held electronic computers for use in
programming automotive computers,” in International Class
9.1 During the prosecution of this application, applicant
amended the application to include the following statements:
• “The word INC. is disclaimed apart from the
mark as a whole.” (We note, however, that

1 Serial No. 76424590, filed June 25, 2002, based on use of the mark in
commerce, alleging first use and use in commerce as of 2000.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76424590
2
the Examining Attorney stated that the
disclaimer is not acceptable because the
entire trademark is merely descriptive.)
• “Applicant is the owner by assignment of
Registration No. 1,876,383.” (We note that
this registration is for the mark SUPER CHIP
for “computer chips for automobiles,” which
mark is registered under Section 2(f) of the
Trademark Act with a disclaimer of CHIP apart
from the mark as a whole.)
Applicant further stated that “the subject goods contain
computer chips and they are used to program computer chips”;
and that “the wording “SUPERCHIPS” has no significance in
the relevant trade or industry or as applied to the goods.”
The Trademark Examining Attorney issued a final refusal
to register, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney submitted definitions from The
American Heritage Dictionary of the English Language (3rd
ed. 1992) of “super” as “very large, great, or extreme,” and
of “chip” as “electronics[,] a minute slice of a
semiconducting material, such as silicon or germanium, doped
and otherwise processed to have specified electrical
characteristics, especially before it is developed into an
electronic component or integrated circuit[;] also called a
Serial No. 76424590
3
microchip.” She contends that “the computer and automotive
industries widely use the term ‘superchips’ or ‘super chips’
to describe chips which are very fast or have large
memories” (brief, p. 3); that applicant’s goods are hand-
held computers containing chips and that these computers
program “any and all types”2 of automotive computer chips;
that the chips programmed by applicant’s computer encompass
super chips; that, therefore, the mark SUPERCHIPS INC. is
merely descriptive in connection with the identified goods;
and that the addition of INC. to the descriptive term
SUPERCHIPS does not alter the descriptive nature of the
mark.
In support of her position, the Examining Attorney
submitted excerpts from different Internet web sites that
use the term “super chips.” The following are
representative examples:
Diesel Services Group … High Performance Ford
Powerstroke Diesel Accessories and Parts – Company
provides Ford Powerstroke diesel accessories and
parts like turbochargers, super chips, fuel supply
pumps, injectors, injection pumps and more to
enhance your 7.3 Power Stroke engine.
(www.millbrook.com)
Integrating large amounts of memory cost
effectively becomes the bottleneck to designing
these “super chips.” Memory providers pack the
dense memory structures using aggressive design
rules, which in turn causes them to be more
defect-prone. (www.esilicon.com)

2 The Examining Attorney is quoting applicant in its response of
December 16, 2003, p. 1.
Serial No. 76424590
4
Super chips, electronic devices that alter the
engine computer’s programming are another popular
aftermarket performance part. These chips enrich
fuel delivery and advance ignition time for
increased performance, but at the expense of fuel
economy and emissions. (www.ca.autos.yahoo.com)
Even compared with today’s super chips that exceed
1 gigahertz (GHz), the relatively modest (and far
less expensive) 500-MHz processor can hardly be
called a slowpoke when it launches an application
or refreshes a large spreadsheet calculation in a
second or two. (www.aicpa.org)
Applicant describes its product as “hand-held devices
used by automotive companies and repair services to program
and to maintain the computers that are built into
contemporary automotive vehicles” (brief, pp. 3-4) and
contends that SUPERCHIPS is “a compound coined term …
[that] “is more related to puffery” (brief, p. 4).
Applicant also contends that its mark connotes two meanings
and, therefore is not merely descriptive. Applicant makes
the following argument in this regard:
[T]he term “CHIPS” is an acronym used by the
California Highway Patrol, an organization that is
known nationally for its high-speed car chases.
Such high-speed performance is suggestive of the
high-speed performance that would be acquired
using the “SUPERCHIPS” product line. A segment of
adult consumers of the purchasing public outside
of California would also recognize the term CHIPS
to mean California Highway Patrol because of the
popular television series, by the name “CHIPS”
which was syndicated in the early 1980’s.
Therefore, the term “CHIPS” has associations
beyond its association with microchips and is
suggestive of high performance vehicles. (Brief,
p. 5.)
Applicant’s mark might somehow suggest that the
hand-held device that is its product will “supe”
Serial No. 76424590
5
(phonetically “soup”) up the performance of
automotive vehicles, by enhancing automotive
computer performance. Far from being descriptive,
this subliminal connotation suggests improved
vehicle performance in a way that true automotive
aficionados can understand and appreciate.
(Brief, pp. 6-7.)
About the potential purchasers and users of applicant’s
goods, applicant makes the following statements:
Those persons who would purchase SUPERCHIPS hand-
held electronic devices for programming automotive
computers are extremely interested in the
performance of their automotive vehicles; however,
they may or may not have experience with computer
hardware. It is likely that some SUPERCHIPS
buyers would not be familiar with the term
“superchips” as applied to … high-speed computer
applications. (Brief, p. 6.)
Applicant believes [the Examining Attorney’s
conclusion that the mark is merely descriptive]
presupposes that an automotive mechanic, given the
job of re-programming an automotive computer which
was installed within a vehicle at the time of
production, has any knowledge as to the type of
“chips” that may be found within said automotive
computer. Such a finding also presuppose[s] that
this mechanic has any particular interest in the
nature of the chips that may be found within the
SUPERCHIPS product or within the automobile
itself, or whether the on-board computer has any
relationship with the programming device. (Brief,
p. 7.)
[C]onsumers [of applicant’s goods] will seek to
increase vehicle performance or to fix the car
through the act of reprogramming an automotive
computer using the subject goods. The emphasis is
on the outcome – increased or optimum performance
– and not the process to achieve that outcome.
Therefore, such consumers are likely to perceive
the subject mark SUPERCHIPS INC. as suggestive of
the subject goods. (Reply Brief, p. 4.)
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
Serial No. 76424590
6
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
As a further elaboration on these propositions, the
mere descriptiveness of a mark is not determined from the
standpoint of all consumers, but rather is determined from
the standpoint of the relevant purchasing public of the
goods and/or services for which registration is sought.
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551,
1552-53 (Fed. Cir. 1991) (“The precedents of this court both
before and after the 1984 Act have consistently applied the
Serial No. 76424590
7
traditional purchaser understanding test. For example, this
court has stated that whether a term is entitled to
trademark status turns on how the mark is understood by the
purchasing public.”) (emphasis added); and In re Montrachet
S.A., 878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989)
(“Whether a term is entitled to trademark status turns on
how the mark is understood by the purchasing public.”)
(emphasis added).
If, however, when the goods or services are encountered
under a mark, a multistage reasoning process, or resort to
imagination, is required in order to determine the
attributes or characteristics of the product or services,
the mark is suggestive rather than merely descriptive. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978); and In re Atavio, 25 USPQ2d 1361 (TTAB 1992).
The Examining Attorney bears the burden of showing that
a mark is merely descriptive of the identified goods or
services. See In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 21567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
The evidence clearly establishes a prima facie showing
that “superchips” or “super chips” is a widely used term
that identifies a computer chip that has increased memory or
speed, or both; and that, as applicant admits, its product
is used to reprogram all types of computer chips in
Serial No. 76424590
8
automobiles, which would include superchips. Further,
applicant’s identification of goods is not limited and could
encompass or include superchips in its manufacture.
Therefore, the term “superchips,” which identifies something
within applicant’s product that increases the speed or
memory of the device or enables the user to program a
“superchip” in an automotive engine, refers to a significant
desired feature of applicant’s product.
Applicant describes the users of its product as repair
shop mechanics making adjustments to an automotive engine
and auto owners seeking to make engine adjustments to
improve the performance of their automobiles. In view of
the desirability of the “superchip” feature of applicant’s
product and the evidence that the term “superchip” appears
in common parlance, it is highly likely that the relevant
consumers will understand the above-described meaning of
this term as it relates to applicant’s products.
We find applicant’s proposed alternative connotations
of the term “superchips” to be highly unlikely as applied to
these goods and, in any event, there is no evidence to
support applicant’s contention that such a connection would
be made.
We find, in conclusion, that, when applied to
applicant’s goods, the term SUPERCHIPS INC. immediately
describes, without conjecture or speculation, a significant
Serial No. 76424590
9
feature or function of applicant’s goods, namely, that
applicant’s goods contain computer chips with increased
speed or memory or that it programs such chips in automotive
engines. The term INC. at the end of applicant’s mark has
no trademark significance. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for purchasers of and
prospective customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
SUPERCHIPS INC. as it pertains to applicant’s goods.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.