UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 

Serial Number  76/424590

 

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:	Superchips, Inc.	:	BEFORE THE
Trademark:	SUPERCHIPS INC.	:	TRADEMARK TRIAL
Serial No:	76/424590	:	AND
Attorney:	David Sigalow Allen, Dyer, Doppelt, Milbrath, & Gilchrist, PA	:	APPEAL BOARD
Address:	255 Sourth Orange Avenue Suite 1401 PO Box 3791 Orlando, FL 32802	:	ON APPEAL

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

 

FACTS

 

Applicant filed the instant application Serial No. 76/424590 on June 26, 2002 to register the mark SUPERCHIPS, INC. for “automotive computer chips; and hand-held electronic devices for use in programming automotive computers.”  In an office action dated November 1, 2002, the examining attorney refused registration under Trademark Act Section 2(e)(1) on the grounds that the applied-for mark is merely descriptive of the goods identified in the application.  In addition, the examining attorney required that applicant amend the identification of goods and submit a drawing of the mark which matches the specimens of use.  Applicant’s response of April 18, 2003  amended the identification of goods to “automotive computer chip; held-held electronic computers for use in programming automotive computers”, amended the mark to SUPERCHIPS INC., provided a disclaimer of INC. and set forth arguments in favor of registration.  The examining attorney accepted the amended identification of goods and substitute drawing and made final the refusal to register under Section 2(e)(1) in an office action dated June 18, 2003.  On July 8, 2003, applicant filed a notice of appeal and a request for reconsideration in which it amended the identification of goods to “hand-held electronic computers for use in programming automotive computers”.  On August 7, 2003, the examining attorney accepted the amended identification of goods, continued the Section 2(e)(1) refusal and issued a failure to function specimen refusal because applicant had deleted the goods which the specimens supported.  Applicant filed substitute specimens for the remaining goods in a response dated December 16, 2003.  In an office action dated January 29, 2004, the examining attorney accepted the substitute specimens of use and returned the application file to the Trademark Trial and Appeal Board for consideration of the Section 2(e)(1) final refusal.  Applicant filed its appeal brief on April 2, 2004 and the Office reassigned the application file to the undersigned examining attorney on April 8, 2004.  No other issues remain.

 

ARGUMENT

 

SUPERCHIPS INC. MERELY DESCRIBES A FEATURE, FUNCTION, USE AND PURPOSE OF HAND-HELD ELECTRONIC COMPUTERS FOR USE IN PROGRAMMING AUTOMOTIVE COMPUTERS.

 

The sole issue on appeal is whether the term “SUPERCHIPS INC.” immediately describes a characteristic, function, feature, purpose or use of hand-held electronic computers for use in programming automotive computers.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

 

The American Heritage Dictionary of the English Language (c. 1992) defines “super” as 

 

     Very large, great, or extreme: “yet another super Skyscraper” (Dylan Thomas).[1]

 

and “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 microchip; An integrated circuit.[2]

The computer and automotive industries widely use the term “superchips” or “super chips” to describe chips which are very fast or have large memories.  See the representative articles from the examining attorney’s search in a computerized database which are attached to the November 1, 2002 and January 29, 2004 office actions.  Those articles state, inter alia:

“’Super chips, electronic devices that alter the engine computer’s programming are another popular aftermarket performance part. These chips enrichen fuel delivery and advance ignition timing for increased performance, but at the expense of fuel economy and emissions…[o]f course, these chips will void new car engine warranties…”; “…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”;  “Back Street Automotive…ram air hoods, super chips, ground effects/rear spoilers, other accessories”; “super chips for sale most models of cars available…[i] sell super chips…if any one wants car super chips that increase speed of your car…”; “…Even compared with today’s super chips that exceed 1 gigahertz (GHz)…”; “…Motorola’s Superchip…[t]he result would be a superchip…[i]nstead of having multiple chips in a DVD player doing different tasks…a single chip could handle it all…”;  “the former providing hardware (such as super-chips, computers…)”;   “with his view on the growing [system on a chip] trend and the increasing use of memories on those chips…Design the next ‘super chip’ without emptying your pockets…[i]ntegrating large amounts of memory cost effectively becomes the bottleneck to designing these ‘super chips’”; “…[s]o as technology advances there will be a single chip a [sic] powerful as 1000 ‘super’ chips we have today”; “…The current microprocessor market is about eight billion units a year, only a minute fraction or about 150 million units are year are high-end super chips” [emphasis added].

 

 

Applicant’s hand-held electronic computers for use in programming automotive computers contain computer chips and are used to program “any and all types” of automotive computer chips.  Applicant’s December 16, 2003 response at page 1 and Brief at page 2.  “Any and all” chips encompasses super chips.  A feature of applicant’s goods is that they contain and program super chips, i.e., those chips with large memory and/or which are very fast.  See the definitions and articles referenced above.  The addition of the corporate designation “INC.” to the descriptive term SUPERCHIPS does not alter the descriptive  nature of the mark.  The term INC. has no trademark significance in this case.

 

Applicant, in arguing that the mark is suggestive, places great weight on the fact that “chips” has other meanings, including that “chips” was a television series in the 1980’s and that the California Highway Patrol allegedly uses the acronym “chips”.[3]  Applicant’s Brief at pg. 5-6.  Applicant’s goods, however, are not television shows about the California Highway Patrol, nor are they sold particularly to the California Highway Patrol.  Applicant’s goods are hand-held computers which contain chips and which program chips in automotive computers.  The examining attorney must consider descriptiveness in relation to the relevant goods.  The fact that a term may have different meanings in another context is not controlling on the question of descriptiveness.  In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979).  In relation to applicant’s hand-held computers used to program chips, it is not likely that the public will believe that “chips” has a second meaning of “California Highway Patrol”. 

 

Applicant’s argument that the “mark might somehow suggest that the hand-held device that is its product will ‘supe’ (phonetically ‘soup’) up the performance of the automotive vehicles…” is  also flawed.  Applicant’s Brief at pgs. 6-7.  The mark is not SUPECHIPS or SOUPCHIPS.  Applicant’s apparent argument that SUPER might somehow suggest SOUP UP to a consumer is without basis in the record or in the English language.  The spelling of “soup up” is SOUP and not SUPE.  Applicant’s argument that consumers would be likely to think SUPER then SUPE and then SOUP UP is not logical. 

 

 

Applicant also appears to be arguing that the consumers are not sophisticated and, therefore, would not understand or have any interest in the meaning of “chips” or “super chips” in relation to its computers for programming chips.  Applicant’s judgment that mechanics who program chips in automobiles are not intelligent enough to understand that they are programming chips or super chips has no basis in the record.  It is merely applicant’s judgment and speculation.

     

CONCLUSION

 

For the foregoing reasons, the examining attorney respectfully maintains that the mark is merely descriptive of the identified goods, and urges that the refusal to register on the Principal Register should be affirmed pursuant to Trademark Act Section 2(e)(1); 15 U.S.C. Section 1052 (e)(1).

 

 

                                                      Respectfully submitted,

 

 

                                                      /Rebecca Gilbert/

                                                      Trademark Examining Attorney

                                                      Law Office 113

                                                      (Odette Bonnet, Managing Attorney)