Thursday, December 28, 2006

TTAB Affirms Mere Descriptiveness Refusal of "FABLESS SOFTWARE COMPANY"

The TTAB had the last ho-ho-ho when it affirmed the PTO's Section 2(e)(1) refusal to register Mistletoe Technologies' mark FABLESS SOFTWARE COMPANY. The Board found the mark merely descriptive of "computer software for use in operating and maintaining computer systems" and "computer software development , and computer software design." In re Mistletoe Technologies, Inc., Serial No. 76547170 (December 14, 2006) [not citable].

Examining Attorney Eli J. Hellman relied on websites and online dictionaries in maintaining that "fabless" refers to an entity that designs semiconductor chips but does not necessarily own or operate its own fabrication foundry. Applicant agreed that "fabless" is a descriptor for a class of semiconductor firms, but contended that its own goods and services are not "fabricationless."

The Board pointed out that, although Applicant itself may not be fabless, "there is no denying that fabless semiconductor firms comprise a significant, and apparently, growing portion of applicant's market."

"A term may be found to be merely descriptive if it names a user of the relevant goods and/or services. *** It is clear that fabless producers would generally use the software of applicant (or from applicant's competitors) in designing and developing their computer chips."

The record showed that the "fabless model" is increasingly taking hold and "is certain to shape the future of the semiconductor industry." Thus, "fabless" is a major characteristic of the semiconductor industry.

The word "software" is "highly descriptive, if not generic" for Mistletoe's goods and services. And the combined term "would be perceived as merely descriptive by those in the semiconductor industry when used in connection with software for designing and developing computer chips."

"These sophisticated customers would know immediately that the combined term, 'fabless software,' has a singular reference to a suite of software intended solely for their industry."

Finally, the addition of the word "company" does not detract from the mark's descriptiveness. The Board has repeatedly held that "a mark which names the type of commercial establishment from which particular goods come is merely descriptive of those goods."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.


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