BAE Systems Land & Armaments L.P.

Trademark Trial and Appeal Board

Jan 3, 2011

No. 77363645 (T.T.A.B. Jan. 3, 2011)

Mailed: 1/3/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BAE Systems Land & Armaments L.P.
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Serial No. 77363645
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Kyle T. Peterson of Patterson Thuente Christensen Pedersen
for BAE Systems Land & Armaments L.P.

Naakwama Ankrah, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Walters and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

BAE Systems Land & Armaments L.P. filed, on January 3,
2008, an intent-to-use application to register the mark
SMART SAFETY SYSTEMS (“SAFETY SYSTEMS” disclaimed) for
“sensors and detector units for use in controlling the
actuation and operation of firearms, ammunition,
projectiles, explosives, missiles, and weapons” in
International Class 9.
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. No. 77363645
2
§1052(e)(1) on the ground that applicant’s mark, when
applied to applicant’s goods, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.1
Applicant argues that its applied-for mark, when
considered as a whole, is only suggestive of “a desired
result of safe operation of a weapons system.” (Brief, p.
8). In this regard, applicant states that although “the
‘desired results’ may include avoidance of human error or
mechanical malfunction that may result in harm to the

1 There is a bit of ambiguity regarding the disclaimer of the
words “Safety Systems.” After issuance of a final refusal on the
ground of mere descriptiveness under Section 2(e)(1), applicant
filed a request for reconsideration. In response, in an Office
action dated June 29, 2009, the examining attorney indicated that
while the Section 2(e)(1) refusal was withdrawn, a disclaimer of
“Safety Systems” was required. Applicant complied with the
disclaimer requirement, and the examining attorney approved the
application for publication. According to the examining
attorney, however, the senior attorney required the examining
attorney to maintain the final refusal under Section 2(e)(1). In
the new final refusal dated September 10, 2009, the examining
attorney stated that “[t]he disclaimer is withdrawn.” Applicant,
in recounting the examination history in its appeal brief, noted
that the examining attorney had “withdrawn” the disclaimer;
applicant indicated again, however, that it is disclaiming the
words “Safety Systems.” (Brief, p. 3, n.1). It is unclear from
the examining attorney’s brief whether or not the examining
attorney considers the disclaimer to be entered.
Given that applicant has again offered a disclaimer of the
words “Safety Systems,” we see no reason to dwell on the mere
descriptiveness/genericness of these words, see infra. Rather,
we consider the disclaimer to be entered and we will focus our
attention, as have applicant and the examining attorney, on the
mere descriptiveness of the word “Smart,” and then determine if
the applied-for mark as a whole is merely descriptive.
Ser. No. 77363645
3
operator, friendly fire, or unwanted collateral damage,”
this suggestiveness does not equate to descriptiveness.
(Brief, pp. 8-9). Applicant also points to the number of
different meanings of the word “smart,” including
“fashionable,” “elegant” and “amusingly clever.” Further,
applicant highlights the existence of four third-party
registrations of marks that include the word “SMART,” as
well as a recent Board decision (unpublished) finding that
a mark comprising in part the word “SMART” is not
descriptive. Applicant relies on the tests of “degree of
imagination” and “competitors’ needs” in its analysis,
concluding that any doubt on the issue of mere
descriptiveness must be resolved in its favor.
The examining attorney maintains that applicant’s mark
merely describes safety systems comprising sensors and
detectors that are highly automated. The examining
attorney further asserts that the meanings of the word
“smart” in other contexts are immaterial to the
descriptiveness analysis that must focus on meaning in the
context of the goods. In support of the refusal the
examining attorney submitted dictionary definitions of the
terms comprising the involved mark, and excerpts of third-
party websites.
Ser. No. 77363645
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A mark is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A mark need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the mark describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether
a mark 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 on or in connection with the goods or services,
and the possible significance that the mark would have to
the average purchaser of the goods or services because of
the manner of its use. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). Contrary to the gist of some of
applicant’s remarks, it is settled that “[t]he question is
not whether someone presented with only the mark could
Ser. No. 77363645
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guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. If each component
retains its merely descriptive significance in relation to
the goods or services, the combination results in a
composite that is itself merely descriptive. See, e.g., In
re Tower Tech Inc., supra (SMARTTOWER is merely descriptive
of commercial and industrial cooling towers); and In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS
is merely descriptive of computer programs for use in
development and deployment of application programs).
With respect to applicant’s goods, applicant states:
In use, the “function” of the sensors
and detector units is to control the
firing and reloading operations of
various types of tactical weaponry.
The sensors and detectors can analyze
data indicative of a number of
parameters, such as, for example,
relative position, temperature,
velocity, distance, and firing rate.
This “function” occurs regardless of
Ser. No. 77363645
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whether the weaponry is used in a safe
manner.” (Brief, p. 8).

The term “safety” means, in pertinent part, “a device
designed to prevent accidents, as a lock on a firearm
preventing accidental firing.” The term “system” means “a
group of interacting, interrelated, or interdependent
elements forming a complex whole.” The American Heritage
Dictionary of the English Language (4th ed. 2000).
The examining attorney introduced Internet evidence
showing use of the terminology “safety system” in
connection with firearms; a safety system protects against
the accidental firing of a gun. As we indicated above,
applicant disclaimed the words “Safety Systems,” and we
find that the dictionary definitions and Internet evidence
support the proposition that the words “safety systems”
are, at the very least, merely descriptive (if not generic)
in the context of applicant’s goods.
The crux of the appeal centers on the term “smart” and
its significance in relation to applicant’s goods. The
term “smart” is defined, in relevant part, as “being a
guided missile, a laser guided smart bomb; operated by
automation, a smart machine tool.” (www.merriam-
webster.com). Another dictionary defines the term as “of,
relating to, or being a highly automated device, especially
Ser. No. 77363645
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one that imitates human intelligence: smart missiles.”
The American Heritage Dictionary of the English Language
(4th ed. 2000).
Based on the meaning of the individual portions of
applicant’s mark, “SMART” and “SAFETY SYSTEMS,” as well as
the Internet evidence showing use of the terminology “smart
system” in connection with firearms, we find that the
combination SMART SAFETY SYSTEMS is merely descriptive of
applicant’s “sensors and detector units for use in
controlling the actuation and operation of firearms,
ammunition, projectiles, explosives, missiles, and
weapons.” That is to say, SMART SAFETY SYSTEMS merely
describes sensors and detectors for use in highly automated
safety systems for firearms, missiles, weapons, etc. The
individual merely descriptive terms retain their
descriptive character when combined to form the composite
SMART SAFETY SYSTEMS. Stated differently, the mark merely
describes safety systems comprising sensors and detectors
that employ “smart” or highly automated technology for
controlling the actuation and operation of weapons and
ammunition. Applicant’s sensors and detectors “analyze
data indicative of a number of parameters” and function, as
conceded by applicant, to “[avoid] human error or
mechanical malfunction that may result in harm to the
Ser. No. 77363645
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operator, friendly fire or unwanted collateral damage.” No
imagination is required by a purchaser or user to discern
that the applied-for mark, when used in connection with
applicant’s goods, describes sensors and detectors that are
components of a “smart” or highly automated safety system.
See In re Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB
1994) (SMARTPROBE is merely descriptive of disposable
cryosurgical probes).
In determining whether the mark involved herein is
merely descriptive, we have given little weight to the
evidence of third-party registrations submitted by
applicant. The registrations show marks comprising, in
part, the term “SMART.” As often stated, each case must
stand on its own record and, in any event, the Board is not
bound by the actions of prior examining attorneys. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (“Even if some prior registrations had
some characteristics similar to [applicant’s] application,
the PTO’s allowance of such prior registrations does not
bind the board or this court.”). Likewise, the unpublished
Board decision on which applicant relies is not persuasive
of a different result herein.
We conclude that the mark SMART SAFETY SYSTEMS as a
whole is merely descriptive of applicant’s goods.
Ser. No. 77363645
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Decision: The refusal to register is affirmed.