Friday, September 07, 2012

Precedential No. 29: TTAB Affirms 2(e)(1) and Failure-to-Function Refusals of SEMICONDUCTOR LIGHT MATRIX for Light Curing Systems

In a straightforward decision, the Board affirmed two refusals to register the mark SEMICONDUCTOR LIGHT MATRIX, finding that it is merely descriptive of "Light curing systems composed primarily of light emitting diodes for industrial applications; UV curing systems composed primarily of light emitting diodes, for commercial applications, namely, for curing inks, coatings, adhesives, and a variety of other materials," and further that, as used on the Applicant's specimen of use, it fails to function as a trademark. In re Phoseon Technology, Inc., 103 U.S.P.Q.2d 1822 (TTAB 2012) [precedential].

Mere Descriptiveness: Examining Attorney Kim Teresa Moninghoff relied on use of the term in dictionary definitions of the constituent words, in published articles, on third-party websites, and in two patent applications, leading the Board to find that "SEMICONDUCTOR LIGHT MATRIX describes the technology featured in applicant's products and, therefore, is merely descriptive of a significant feature of the product."

Failure to Function: Phoseon's specimen of use (above) consisted of a photo showing "use of the mark in association with the goods at a trade show." The Examining Attorney maintained that the term SEMICONDUCTOR LIGHT MATRIX identifies a technology, not the source of the UV curing system.

The critical issue concerned how the relevant public would perceive the mark; for example, whether the alleged mark would be perceived as identifying the source of the goods, or merely as an informational phrase. The Board found that the display engenders the commercial impression that Phoseon is selling a UV curing system that uses semiconductor light matrix technology. In other words, consumers will perceive the term SEMICONDUCTOR LIGHT MATRIX as identifying the technology used in Phoseon's product, not as identifying the source of the goods.

And so the Board affirmed both refusals.

TTABlog comment: Two questions comes to mind: (1) WYHA? (2)WITDP? (Why Is This Decision Precedential?)

Text Copyright John L. Welch 2012.


At 9:55 AM, Anonymous Anonymous said...

Tech sector clients with a preference for a descriptive product names often propose to adopt and use an initialiam or acronym as their trademark. Would Phoseon have fared better under 2(e)(1)applying to register SLM? What if the evidence includes third party use of "semiconductor light matrix (SLM)"? (see Wednesday's TTABlog report on OpenCL). WYHRT?


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