Ziptronix, Inc.

Trademark Trial and Appeal Board

Sep 3, 2004

No. 78134622 (T.T.A.B. Sep. 3, 2004)

Mailed: September 3, 2004
Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ziptronix, Inc.
________
Serial No. 78134622
_______
Laura M. Kelley of Myers Bigel Sibley & Sajovec, P.A. for
Ziptronix, Inc.
Jacqueline A. Lavine, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Hohein, Chapman and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Ziptronix, Inc. has filed an application to register
the term "ZIPRAM" on the Principal Register for "integrated
circuits" in International Class 9; "custom manufacture of
integrated circuits for others" in International Class 40; and
"custom design of integrated circuits for others" in
International Class 42.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
1 Ser. No. 78134622, filed on June 11, 2002, which is based on an
allegation of a bona fide intention to use the such term in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78134622
2
ground that, when used in connection with applicant's goods and
services, the term "ZIPRAM" is merely descriptive thereof.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and 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 or services 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 or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
Ser. No. 78134622
3
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Applicant, while conceding in its brief that "'zip' can
refer to compression formats, and 'ram' can refer to a type of
computer memory," asserts that because "these terms have other
meanings as well," the combination thereof into the term "ZIPRAM"
is not merely descriptive of its goods and services. In
particular, applicant notes that it has made of record the
following definitions which it "found in a search on Mirriam-
Webster.com" [sic]:
ZIP: to close or open with or as if
with a zipper; to enclose or wrap by
fastening a zipper; to cause (a zipper) to
open or shut; to move, act, or function with
speed and vigor; to travel with a sharp
hissing or humming sound; to impart speed or
force to; to add zest, interest or life to;
to transport or propel with speed.
While acknowledging "the fact that a term may have different
meanings is not controlling," applicant contends in view thereof
that its "ZIPRAM mark is not limited to 'compression formats' and
'computer memory'," as argued by the Examining Attorney in her
final refusal. Applicant maintains, therefore, that "it is not
readily apparent from the term ZIPRAM exactly what the goods or
services offered are," especially since, applicant admits,
"[i]ntegrated circuits have many functions other than providing
compression formats and computer memory." Applicant accordingly
concludes that:
Based on the numerous definitions shown
above and the fact that the proposed uses of
the mark are much broader than "compression
formats" and "computer memory", the mark
Ser. No. 78134622
4
ZIPRAM is at most merely suggestive of a
portion of Appellant's goods and services.
The Examining Attorney, on the other hand, although
conceding in her brief that a "mark that combines descriptive
terms may be registrable if the composite creates a unitary mark
with a separate, nondescriptive meaning," argues that in this
case, however, "each component retains its descriptive
significance in relation to the goods or services, [such that]
the combination results in a composite that is itself
descriptive." In particular, the Examining Attorney, while also
conceding in her brief that "ZIP has many meanings," cites a
"definition from PCWebopaedia.com where ZIP is defined as a
[popular data] compression format"2 and urges that "the relevant
meaning here is a 'compression format' as relating to computers."
Noting further that "RAM is defined as a [type of] 'computer
memory' [that can be accessed randomly]," as set forth in the
definition of record from PCWebopaedia.com,3 the Examining
2 Although indicating that several "definitions were attached in the
Final Office Action," the Examining Attorney states in her brief that
"apparently the definition regarding ZIP was not properly reproduced
on the paper" and thus, since such may not be of record, requests that
the Board "take judicial notice of this definition because it comes
from a standard reference work." Inasmuch as it is settled that the
Board may properly take judicial notice of definitions from
dictionaries and other standard reference works, the Examining
Attorney's request is granted. See, e.g., In re Hartop & Brandes, 311
F.2d 249, 135 USPQ 419, 423 n. 6 (CCPA 1962); Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
3 While the Examining Attorney, in her brief, specifically refers to
"Dictionary.com and MirriamWebsters.com" [sic] where a RAM is defined
as a 'computer memory,'" it is noted that no such references are of
record.
Ser. No. 78134622
5
Attorney asserts that the "relevant meaning of RAM is computer
memory, a synonym for random access memory," and that "[c]omputer
memory may be found on integrated circuits, which are applicant's
goods and the subject of applicant's manufacturing and design
services." In view thereof, the Examining Attorney maintains
that, when the descriptive terms "ZIP" and "RAM" are combined:
Clearly ZIPRAM refers to [an integrated
circuit that contains] a computer memory that
is in a compressed format. There is nothing
unique about the combination of the terms to
find a separable unitary meaning. The
examining attorney has submitted definitions
showing that ZIPRAM is merely descriptive and
not entitled to registration on the Principal
Register.
In addition, while referred to in her final refusal but
not mentioned in her brief, the Examining Attorney has made of
record "evidence from the Google Research Database showing that
ZIP RAM is a commonly used term to refer to a type of ram."
Among the articles referred to are the following (emphasis
added):
"Picture showing the DSP socket and the
ZIP RAM banks [in the Amiga A3000 computer].
-- http://www.amiga-hardware.com/a3000plus.-
html;
"2 MB (up to 4Mb possible with socketed
zip ram chips)" -- http://www.old-computers.-
com/museum/computer.asp?st=1&c=706;
"As you may know the A3000 and the Tower
make use of ZIP-type Memory which was
inexpensive in the past but now is highly
overpriced.
.... Of course you could still pay
somewhere between $10 to $15 USD per meg for
SC ZIP Ram. The ZIP Ram only provides a
slight speed advantage, about 15%. ...." --
http://ucug.org/amiga/aminews/1997/971110-
powersolutions.html; and
Ser. No. 78134622
6
"Since I get different symptoms
everytime [sic] I rearrange my ZIP chips I am
assuming this is a ZIP RAM problem. Does
anyone know of any ZIP RAM diagnostic
software? Something that will probe the
memory and tell me what is wrong, what chips
are dead or connected improperly." --
http://mail-index.netbsd.org/port-amiga/-
2000/12/17/0000.html.
Moreover, in addition to the definition of "ZIP" from
"PCWebopaedia.com" which, as indicated above, is relied on by the
Examining Attorney, the record contains the following, and more
complete, definition of "RAM" retrieved from the same source
(italics in original):
Pronounced ramm, acronym for random
access memory, a type of computer memory that
can be accessed randomly, that is, any byte
of memory can be accessed without touching
the preceding bytes. RAM is the most common
type of memory found in computers and other
devices, such as printers.
....
In common usage, the term RAM is
synonymous with main memory, the memory
available to programs. ....
Furthermore, judicial notice is taken of the following pertinent
definitions. Specifically, we note that The Computer Glossary
(9th ed. 2001) sets forth "zip" at 453 as "(ZIP) (Zig-Zag Inline
Package) Similar to a DIP [chip], but smaller and tilted on its
side for mounting on boards with limited space." The same
dictionary also lists both "RAM" and "RAM chip" at 322 as,
respectively, "(Random Access Memory) A group of memory chips
that function as the computer's primary workspace" and "(Random
Access Memory chip) A memory chip" and defines "memory" at 241 as
Ser. No. 78134622
7
"[t]he computer's workspace (physically a collection of RAM
chips."4
Likewise, judicial notice is taken that the Computer
Desktop Encyclopedia (9th ed. 2001) sets forth "zip" at 1103 in
more detail as "(ZIP) (Zig-Zag Inline Package) A chip package
similar to a DIP [chip], but both rows of pins come out of one
side in an alternating pattern." The same reference work also
defines "RAM" more specifically at 822 as "(Random Access Memory)
A group of memory chips, typically of the dynamic RAM (DRAM)
type, which functions as the computer's primary workspace" and
lists definitions of "RAM chip" at 822 and "memory" at 593 which,
respectively, are identical to the definitions thereof noted
above from The Computer Glossary.5
In view thereof, the Examining Attorney maintains in
her brief that:
[W]hile ZIP could also refer to a zipper and
RAM could refer to an animal, considering
applicant's computer related goods and
services, clearly ZIPRAM is more likely to be
understood to refer to memory circuits
embedded with compressed formats.
Descriptiveness is considered in relation to
the relevant goods and services. The fact
that a term may have different meanings in
other contexts is not controlling on the
4
For clarity, judicial notice is additionally taken that such
dictionary defines "chip" at 56 as:
A set of microminiaturized, electronic circuits that
are designed for use as processors and memory in computers
and countless consumer and industrial products. .... The
terms chip, integrated circuit and microchip are
synonymous. ....
5 It is also pointed out that the Computer Desktop Encyclopedia defines
"chip" at 133 in the same manner as set forth in The Computer
Glossary.
Ser. No. 78134622
8
question of descriptiveness. In re Chopper
Industries, 222 USPQ 258 (TTAB 1974); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 591
(TTAB 1979); In re Champion International
Corp., 183 USPQ 318 (TTAB 1974); TMEP
§1209.03(e).
She also contends, as to applicant's argument that its goods and
services involve more than just integrated circuits which provide
compression formats and computer memory, that "a term need not
describe all of the purposes, functions, characteristics or
features of the goods and/or services to be merely descriptive."
Instead, she properly notes that "it is sufficient that the term
describe only one attribute of the goods and/or services to be
found merely descriptive," citing "In re H.U.D.D.L.E., 216 USPQ
358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973);
[and] TMEP §1209.01(b)."
Upon consideration of the evidence and arguments
presented, we agree with the Examining Attorney that, when
considered in its entirety, the term "ZIPRAM" is merely
descriptive of applicant's goods and services. Such term, as
shown by the evidence noted above, immediately conveys, without
speculation or conjecture, not only that its integrated circuits
include those which, as applicant admits, provide compression
formats and computer memory, but that its RAM chips include those
available in a standardized zig-zag in-line package. The term
also merely describes a significant attribute of applicant's
services, which involve both the custom manufacture and the
custom design of such integrated circuits or chips (as
applicant's goods are also known) as RAM chips with zip features
such as either a compression format or a zig-zag in-line package.
Ser. No. 78134622
9
See, e.g., In re Wickerware, Inc., 227 USPQ 970, 971 (TTAB 1985)
["WICKERWARE" for "mail order and distributorship services in the
field of wicker furniture and accessories" designates "a central
characteristic of appellant's services" and thus is not
registrable]. Plainly, when viewed in the context of applicant's
goods and services, rather than in the abstract as applicant
essentially urges, there is nothing in the term "ZIPRAM" which,
to those who would purchase and/or utilize integrated circuits,
would be ambiguous, incongruous or otherwise require the exercise
of any imagination, cogitation or mental processing or would
necessitate the gathering of further information in order for the
merely descriptive significance of such term to be readily
apparent. In short, because the term "ZIPRAM" designates a type
or category of integrated circuits that provide computer memory
in a compression format or in a zig-zag in-line package and,
hence, also conveys forthwith the nature of the products which
are custom manufactured and/or designed by applicant for others,
such term accordingly is merely descriptive of applicant's goods
and services within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed as to all three classes of goods and services.