"OpenCL" Not Merely Descriptive of API Component of Operating Software, Says TTAB

In a puzzling decision, the TTAB (Trademark Trial and Appeal Board) reversed three Section 2(e)(1) refusals of the mark OpenCL, in standard character and design forms, finding the term not merely descriptive of "Application programming interface computer software for use in developing applications for execution on central processing units (CPU) or graphic processor units (GPU), sold as an integral component of computer operating software." However, as to the two design marks, the Board agreed with the PTO that Apple's specimens of use were unacceptable. In re Apple, Inc., Serial Nos. 77616247, 77844718, and 77844736 (August 28, 2012) [not precedential].


Mere Descriptiveness: The PTO asserted that OPENCL "immediately identifies the common or generic name of an industry standard language and application programming interface," and therefore cannot be a trademark. Or, put another way, "because OpenCL is the name of a computing language, it is merely descriptive of applications programming interface software that permits software developers to use the language." [Sound like a good argument to me - ed.]

Apple asserted that "the fact that OPENCL identifies a programming language does not preclude recognition of OPENCL as a trademark for software that implements the language." [Why not? - ed.]

The Board posed the question this way: "for OpenCL to be merely descriptive, we have to find the following:

1. OpenCL is an abbreviation for 'Open Computing Language';
2. 'Open Computing Language' is merely descriptive of products in the [trademark] application; and
3. A relevant consumer viewing OpenCL in connection with applicant's products would recognize it as an abbreviation of the term 'Open Computing Language.'"

[Query: didn't Apple concede that OpenCL "identifies a programming language"? - ed.]

The Board found that items 1 and 2 were satisfied, but item 3 was not. Nine of 25 articles cited by the PTO used the term OpenCL followed by the parenthetical term (Open Computing Language), indicating "that these companies and authors believed that they needed to spell out the connection between OpenCL and 'Open Computing Language' because the readers would not immediately understand that the mark OpenCl means 'Open Computing Language.'" [What about the other 16 articles? And how does the Board know why these companies and authors used both terms? - ed.].

Although some consumers might figure out that OpenCL means "Open Computing Language," the process requires some thought, "and that is the essence of a suggestive mark."

The Board therefore reversed the mere descriptiveness refusal.

[I don't understand how, if the term OpenCL identifies a programming language, it is not descriptive of a least a feature or function or characteristic of an API that implements that language. Is the word "French" not descriptive of a software program that teaches French? - ed.]

Specimens of use: In Apple's specimen of use for its design marks, the term OpenCL was used to identify the product as a programming language instead of as an API: "OpenCL in Snow Leopard is a technology that makes it possible ...." Thus that specimen of use was not acceptable.

As to the standard character mark, the specimen of use consisted of a screen shot showing the mark used to identify an API, and that specimen was okay.

And so the Board reversed both refusals as to the standard character mark OpenCL, but affirmed the refusals to register the design marks due to faulty specimens of use.

TTABlog comment: I just don't understand this decision. I spelled out why in my comments above.

Text Copyright John L. Welch 2012.

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