Apple Inc.

Trademark Trial and Appeal Board

Jan 12, 2021

86857587 (T.T.A.B. Jan. 12, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Apple Inc.
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Serial No. 86857587
_____

Glenn A. Gundersen, Jennifer Insley-Pruitt, and Jesse Lambert of Dechert LLP
for Apple Inc.
Robert A. Cohen, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
_____

Before Cataldo, Wellington and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Apple Inc., applied to register the mark SMART KEYBOARD, in
standard characters, on the Principal Register for an “Accessory for a handheld
mobile digital device, namely, a protective and decorative cover for a tablet computer
that functions as a computer stand and incorporates a keyboard,” in International
Class 9.1

1 Application Serial No. 86857587 was filed on December 22, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere and in commerce
of November 11, 2015. Applicant submitted a voluntary disclaimer of “KEYBOARD.”
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The Trademark Examining Attorney originally refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that SMART
KEYBOARD is merely descriptive of Applicant’s goods. When the descriptiveness
refusal was made final, Applicant filed a notice of appeal, as well as a request for
reconsideration wherein it amended the application to seek registration on the basis
that the mark has acquired distinctiveness under Section 2(f) of the Trademark Act,
15 U.S.C. § 1052(f).
In a subsequent office action, the Examining Attorney rejected Applicant’s 2(f)
claim and issued a new refusal under Sections 1, 2, and 45 of the Trademark Act, 15
U.S.C. §§ 1051-1053 and 1127, on the ground that SMART KEYBOARD is a generic
term, and maintained, in the alternative, the 2(e)(1) descriptiveness refusal and the
determination that the showing of acquired distinctiveness is insufficient. When the
Sections 1, 2, and 45 genericness refusal was made final, Applicant filed a request for
reconsideration and amended the application to seek registration on the
Supplemental Register.
In a further office action, the Examining Attorney denied Applicant’s second
request for reconsideration and issued a new refusal under Sections 23(c) and 45 of
the Trademark Act, 15 U.S.C. §§ 1091 and 1127. The new refusal effectively only
amended the statutory basis for the genericness refusal from a proposed mark on the
Principal Register to one on the Supplemental Register. When the genericness
refusal, now under Sections 23(c) and 45, was made final, Applicant requested
reconsideration, which once more was denied.
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The appeal is fully briefed and an oral hearing was held on November 19, 2020.
We affirm the refusal.
I. Preliminary Issue – Applicant’s Motion to Remand
On December 19, 2020, one month after oral argument for this appeal, Applicant
filed a request for suspension of the appeal and remand of the application to the
Examining Attorney “so that Applicant may amend the Application [back] to the
Principal Register and seek registration under Section 2(f) of the Trademark Act in
light of Applicant’s November 11, 2020 attainment of five years of substantially
exclusive and continuous use of the SMART KEYBOARD mark.”2 Applicant requests
that the Board remand the application at this late stage of the appeal in order to
provide the Examining Attorney an opportunity to withdraw the genericness refusal
based on Applicant’s attainment of five-year-use status.3
A request for suspend and remand an application to introduce evidence after an
appeal has been filed must include a showing of good cause.4 See TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 1207.02 and 1213. “The length
of the delay in making the request after the reason for the remand becomes known,
or the point in the appeal process at which the request for remand is made,
will be considered in the determination of whether good cause exists. Generally, the
later in the appeal proceeding that the request for remand is filed, the stronger the

2 35 TTABVUE 2.
3 Notably, Applicant failed to notify the Board at the oral hearing held in this matter on
November 19, 2020—just one day before the five-year use date—that Applicant intended to
seek remand of the application to claim acquired distinctiveness under a different theory.
4 Id. at 3.
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reason that must be given for good cause to be found.” TBMP § 1207.02 (emphasis
added).
Under the circumstances, we find that remand of the application at this stage
would unduly delay this appeal which, together with prosecution, has already lasted
more than five years. “[C]reation of the record to be considered in an ex parte appeal
must, at some point, be concluded.” In re Zanova, Inc., 59 USPQ2d 1300, 13002 (TTAB
2001).5 Applicant’s request for remand and suspension is denied.
II. Genericness – Applicable Law
Because Applicant’s claim of acquired distinctiveness was not made in the
alternative, it was a concession that the proposed mark is not inherently distinctive
and, thus, not registrable on the Principal Register absent proof of acquired
distinctiveness. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d
1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant seeks registration
on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s
reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”).
Applicant’s amendment to seek registration on the Supplemental Register had the
same effect. See e.g., Perma Ceram Enters. Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134
n.11 (TTAB 1992) (An application for registration on the Supplemental Register is a

5 We further observe that Applicant’s request for remand, if granted, would be futile
inasmuch as the Examining Attorney has already denied Applicant’s claim of acquired
distinctiveness based on evidence and, in view of our affirmance of the genericness refusal,
the additional claim of acquired distinctiveness is moot. See In re Johanna Farms, Inc., 223
USPQ 459, 461 (TTAB 1984) (“once [a term is] determined to be generic, no amount of
purported evidence of secondary meaning can provide legal protection to the generic term”).
Serial No. 86857587
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concession that the mark was merely descriptive of the identified goods or services
“at least at the time of the registrant’s first use of the term.”). As a result of
Applicant’s amendment to seek registration on the Supplemental Register, the
question of whether Applicant’s alleged mark has acquired distinctiveness under
Trademark Act Section 2(f) is not before us.
Thus, we must determine whether SMART KEYBOARD is capable of
distinguishing Applicant’s goods from those of others. “Generic terms do not so
qualify.” In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB
2017); see also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1810 (Fed. Cir. 2001) (generic terms “are by definition incapable of indicating
a particular source of the goods or services”). A generic term “is the common
descriptive name of a class of goods or services” and unregistrable on either the
Principal or the Supplemental Register. Princeton Vanguard, LLC v. Frito-Lay N.
Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (citing H. Marvin
Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986)). “To allow trademark protection for generic terms, i.e., names which
describe the genus of goods being sold, even when these have become identified with
a first user, would grant the owner of the mark a monopoly, since a competitor could
not describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
The Examining Attorney must establish that a proposed mark is generic. In re
Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); Merrill
Serial No. 86857587
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Lynch, 4 USPQ2d at 1143. There is a two-part test used to determine whether a
designation is generic: (1) what is the genus (class or category) of the goods or services
at issue? and (2) does the relevant public understand the designation primarily to
refer to that genus of goods or services? Princeton Vanguard, 114 USPQ2d at 1830
(citing Marvin Ginn, 228 USPQ at 530); Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014).
III. Genus of the Goods at Issue
Our first task is to determine the proper genus of the goods at issue. In defining
the genus, we commonly look to the identification of goods in the application. In re
Reed Elsevier Prop. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007);
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)
(a proper genericness inquiry focuses on the identification set forth in the application
or certificate of registration); In re Serial Podcast, LLC, 126 USPQ2d 1061, 1063
(TTAB 2018) (proper genus generally is “set forth by the [identification of goods] in
each subject application.”).
The Examining Attorney asserts that “applicant’s identification of goods helps to
clarify the overall genus but itself does not completely define it.”6 Rather, “[t]he body

6 23 TTABVUE 6 (Examining Attorney’s Brief). Citations to TTABVUE throughout the
decision are to the Board’s public online database that contains the appeal file, available on
the USPTO website, www.USPTO.gov. The first number represents the docket number in
the TTABVUE electronic case file and the second represents the page number(s). Citations
to the examination record refer to the Trademark Office’s online Trademark Status and
Document Retrieval system (TSDR) and the page references are to the downloadable .pdf
versions of the documents.

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of evidence … shows that the term ‘SMART KEYBOARD’ is used to refer to a category
of technologically advanced keyboards, thus comprising a genus of goods; applicant’s
goods being one example of a keyboard-centered peripheral featuring technological
means for communicating with a device such as a tablet or computer.”7 The record
includes the following definitions:
o Smart – “(hardware) incorporating some kind of digital electronics”
(encyclopedia2.thefreedictionary.com);8 and “informal. Equipped with,
using, or containing electronic control devices, as computer systems,
microprocessors, or missiles: a smart phone; a smart copier”
(dictionary.infoplease.com).9

o Smart Device – “an electronic gadget that is able to connect, share and
interact with its user and other smart devices (techopedia.com).10

o Keyboard – “a set of keys, usually arranged in tiers, for operating a
typewriter, typesetting machine, computer terminal, or the like”
(dictionary.infoplease.com), and “the whole arrangement of keys (as on
a computer or typewriter” (merriam-webster.com).11

The Examining Attorney also provided numerous printouts of third-party Internet
webpages and articles showing use of the term SMART KEYBOARD and close
derivatives to describe various types of technologically advanced keyboards.
Ordinarily, we would discuss that evidence within the context of the second prong of
the Marvin Ginn test. However, since the Examining Attorney relies on public
perception evidence, in addition to the identification of goods, to determine the genus,

7 15 TTABVUE 3 (January 7, 2020 Request for Reconsideration Denied).
8 April 4, 2016 Office Action, TSDR 8.
9 Id. at 15.
10 November 17, 2016 Final Office Action, TSDR 8.
11 April 4, 2016 Office Action, TSDR 17-22.
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it is appropriate to list some of that evidence here, which includes the following (bold
emphasis added):
o An advertisement for an Always Innovating “Swiss Army Knife” Smart
Keyboard featuring USB adapters and Bluetooth technology: “Have you
ever dreamt of a keyboard that can do it all? … Our smart keyboard
is obviously a USB keyboard/touchpad… it also offers Bluetooth
connectivity. No need of all those cables on your desk. … First, there is
a USB chain. No need to look for this dongle: it’s here, just accessible in
your keyboard. We have also added a USB-to-HDMI Dual Screen
Adapter. … Add a second monitor (including TV) to your PC”
(alwaysinnovating.com);12

o Articles discussing a smart keyboard developed by Das Keyboard:

--“Do We Really Need a ‘Smart Keyboard,” (August 29 and 30 2016):
“As the Internet of Things evolves, it seems that an ever growing
number of devices are connected to the Internet. … An example of this
is the smart keyboard that’s developed by Das. The device uses an
array of LEDs underneath the keys to try and help us to work more
efficiently. Smart Keyboards – The product … allows users to program
their keyboard to do various things at various times. … Because it’s a
cloud-enabled output device, [it] is different than any other keyboard
ever made…. (adigaskell.org and dzone.com);13

--“Das Keyboard Launches New Q-Series Cloud-Connected Smart
Keyboard for up to $249” (date unknown): Das Keyboard today
introduced the future of mechanical keyboards with the long-anticipated
launch of its groundbreaking Q-series – a family of smart, cloud-
connected keyboards that increase productivity by empowering users to
stream information from the Internet directly to their Q-enabled

12 June 28, 2017 Office Action, TSDR 19.
13 Id. at 20-21; February 5, 2018 Office Action, TSDR 97-98.
Serial No. 86857587
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keyboards” (wccftech.com):14

o Articles discussing a OneBoard “smart keyboard,” and a point-of-sale
website listing:

“This Smart Keyboard Can Recognize Its Owner” (January 21, 2015):
“‘It offers an unprecedentedly accurate, unique, and permanent typing
pattern for further verification and recognition purposes.’ Arguably
better than the security aspects of the keyboard are its other benefits.
For one thing, it harnesses the energy generated from typing to power
itself or other small devices” (fastcompany.com);15

--“OneBoard to rule them all? This smart keyboard PC runs
Windows or Android” (May 25, 2015): “This very clever PC-in-a-
keyboard plugs into almost any screen…. As manufacturers turn
almost every device into something smart and connected,
Beijing-based AC000 has come up with a smart keyboard that actually
makes sense…. While keyboard peripherals have been all the rage for
modern tablet devices, OneBoard looks to flip the relationship. It’s a
computer contained entirely within the keyboard, and all a user will
need to do is plug into the screen” (cnet.com);16

14 October 2, 2018 Office Action, TSDR 34-41. The Examining Attorney also provided an
Amazon.com listing for a Das “Smart Mechanical Gaming Keyboard,” which is described as
the “ultimate smart RGB Keyboard for professionals who like to game: no interruptions, fully
programmable,” and “the world’s first Smart Crossover (Work/Gaming) Keyboard.” May 9,
2019 Final Office Action, TSDR 34-37.
15 February 5, 2018 Office Action, TSDR 99-101. Other articles discussing this smart
keyboard were provided from the PBS News Hour (pbs.org), id. at 113-114; the American
Chemical Society (acs.org) and Science Daily (sciencedaily.org), id. at 92-94; the News and
Observer newspaper (Raleigh, NC), June 28, 2017 Office Action, TSDR 10; futurity.org, id.
at 34-39; Popular Science (popsci.com), October 2, 2018 Office Action, TSDR 42-46); and
gadgetify.com, May 9, 2019 Final Office Action, TSDR 30-33.
16 Id. at 89-91.
Serial No. 86857587
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17

o Advertisement for a Samsung Smart Wireless Keyboard: “Enhance
your Smart TV experience with the VC-KBD2500 Wireless Keyboard. …
Connect to your smartphone or tablet with the wireless keyboard, and
write text messages and emails more comfortably. … It provides
complete control of your Samsung TV and Smart Hub so you don’t need
a separate mouse” (samsung.com/us):18

o Advertisement for a Belkin Mobile Wireless Keyboard: “Never choose
between your tablet and your smartphone again. Now you can wirelessly
pair up to two devices at the same time with a Bluetooth Smart
keyboard. In fact, any Bluetooth 4.0 enabled device can be paired with
the Mobile Wireless Keyboard” (belkin.com);19

17 May 9, 2019 Final Office Action, TSDR 29 (point-of-sale listing on banggood.com).
18 Id. at 105-108.
19 Id. at 170-171.
Serial No. 86857587
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o Articles and advertising for a Satechi Bluetooth wireless smart
keyboard:

--“Must-have tech gadgets for college; GADGETS” (September 11, 2015):
“Satechi’s BT wireless smart keyboard works with both Mac and PC
computers, as well as iOS and Android smartphones and tablets”
(Dayton Daily News);20

--Amazon.com listing for a Satechi Bluetooth Wireless Smart
Keyboard with 4-Device Sync for Macbook Pro, Macbook Air, iMac,
Mac Pro and iOS Devices” (amazon.com):21

o Amazon.com listing for an ONHI wireless Bluetooth smart keyboard
case: “7 COLORS BACK-LIT IPAD SMART KEYBOARD – 2017 new
apple ipad pro case 10.5 with keyboard have [sic] 7 different backlight
colors … to bring you … visual enjoyment and comfortable typing
experience” (amazon.com):22

20 June 28, 2017 Office Action, TSDR 9. The Examining Attorney also provided a transcript
from NBC-13 WVTM in Birmingham, AL discussing features of Satechi’s Bluetooth Wireless
Smart Keyboard” (October 6, 2014). 15 TTABVUE 15-16 (Request for Reconsideration
Denied, Part 1).
21 February 5, 2018 Office Action, TSDR 175-183.
22 Id. at 197-198.
Serial No. 86857587
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o New York Times article, “STATE OF THE ART; Less Than A Laptop,
And More” (July 5, 2001) discussing several technologically advanced
smart keyboards made by Logitech, AlphaSmart keyboard, Perfect
Solution, QuickPad, and CalcuScribe: “Now, these aren’t traditional
laptops by any stretch; they’re more like glorified keyboards (In fact, you
can use most of them as keyboards when you’re not on the road). …
Smart keyboards start up and shut off instantly, are apparently crash-
proof, save your work automatically and preserve your files when the
batteries are removed. The best-known smart keyboard is the
AlphaSmart 3000 … created by a pair of former Apple engineers.
… These strange devices, populating a rarefied product space
somewhere between handheld devices and laptops, require about as
much power and maintenance as a Frisbee”;23

o Article from the Bradenton Herald, “Gadgets any father (or anyone,
really) would love” (May 15, 2014): “Smart keyboard saves inputting
headaches[.] Anytime you use a set-top box such as Apple TV or Roku
you are forced into the cumbersome process of inputting username and
passwords with the remote, scrolling around for one letter at a time. To
the rescue comes Logitech’s Harmony Smart Keyboard, a one-touch
media control, universal remote and a keyboard for your system. Look
at the smart keyboard as a control center….; and a Logitech webpage for
its Harmony Smart Keyboard” (Logitech is one of the companies
mentioned in the above New York Times article as a smart keyboard
developer) (support.logictech.com);24

23 15 TTABVUE 11-15 (Request for Reconsideration Denied, Part 1).
24 Id. at 19-21; February 5, 2018 Office Action, TSDR 200-202.
Serial No. 86857587
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Applicant argues that “the Trademark Office has misconstrued the genus of
Apple’s goods.”25 Noting that a proper genericness inquiry focuses on the description
of goods set forth in an application, Magic Wand, 19 USPQ2d at 1552, Applicant
asserts that it is “not trying to register a mark for a technologically advanced
keyboard. [Applicant’s] SMART KEYBOARD accessory combines a tablet keyboard,
cover, and stand into a single unit. The Examining Attorney ignores the multifaceted
nature of [Applicant’s] product in defining the relevant genus, thereby narrowing the
product and its functionality and skewing the genericness analysis.”26
Applicant elevates form over substance. As the Examining Attorney observes,
“Applicant’s identification of goods structurally places the keyboard element toward
the end of the description, but doing so does not otherwise alter the core nature of the
goods.”27 Thus, while the good described in the application is an “accessory for a
handheld mobile digital device, namely, a protective and decorative cover for a tablet
computer that functions as a computer stand and incorporates a keyboard,” the same
good can also be described, perhaps more aptly, as either: (1) an accessory for a

25 20 TTABVUE 3 (Applicant’s Brief).
26 Id. at 6.
27 23 TTABVUE 8 (Examining Attorney’s Brief).
Serial No. 86857587
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handheld mobile digital device, namely, a keyboard that functions as tablet computer
cover and folds into a stand, or as (2) an accessory for a handheld mobile device,
namely, a keyboard that folds into a computer stand and becomes a tablet computer
cover. Applicant’s specimen of use, promotion of the goods on its website and other
websites (such as Amazon.com), as well as a number of reviews of Applicant’s goods
on third-party websites, drives home the point that “[t]he keyboard and connective
technology are the core features of the goods,” as noted in the following excerpts of
evidence:28
29

28 Id.
29 Specimen of Use, submitted on December 22, 2015 with TEAS RF New Application.
Serial No. 86857587
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30

30 December 22, 2017 Response to Office Action, TSDR 15.
Serial No. 86857587
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31

31 Id. at 16.
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32

32 Id. at 17.
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33

33 Id. at 18.
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34
35

34 4 TTABVUE 208 (Request for Reconsideration).
35 Id. at 225.
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36
Applicant complains that “the examining Attorney previously stated that the
identification ‘adequately defines the genus at issue” but later chose “to look past the
identification of goods in [the] application, imposing its own definition of the genus
… as ‘technology advanced keyboards.’”37 However, “[t]he Examining Attorney
ignores the multifaceted nature of [Applicant’s] product in defining the relevant
genus, thereby narrowing the product and its functionality….”38
We disagree with Applicant’s assessment. Just as a reclining chair does not cease
to be a reclining chair if it features a function that converts to be a bed and/or has a
retractable desk; a showerhead does not cease to be a showerhead if it features a
handle and/or an embedded light; and a turntable does not cease to be a turntable

36 February 5, 2018 Office Action, TSDR 186.
37 20 TTABVUE 6 (Applicant’s Brief, internal citations omitted).
38 Id.
Serial No. 86857587
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because it has legs that act as a stand and/or an embedded CD-player; neither does
Applicant’s keyboard cease to be a keyboard because it has additional features. The
core of the goods, as demonstrated by Applicant’s own specimen, advertising and
promotion of its SMART KEYBOARD goods, as well as other evidence in the record
in the nature of product reviews for Applicant’s goods, are indeed keyboards. Not just
any keyboards: keyboards that are “smart,” in that they are able to connect, share
and interact with its user and other smart devices.39 The fact that the keyboard can
be folded into a cover (“And when you’re done, it folds into a slim, lightweight cover”)
does not make it not a keyboard.
As the Examining Attorney correctly notes, while “a proper genericness inquiry
focuses on the description of [goods] set forth in the [application],” Magic Wand, 19
USPQ2d at 1552, other relevant evidence of record may be considered in order to
properly determine the genus at issue. The Board considered this issue in In re DNI
Holdings Ltd., 77 USPQ2d 1437-1438 (TTAB 2005), where an applicant attempted to
“carve out” what were “arguably its core services” to avoid a genericness refusal.
There, the Board held that Magic Wand did not restrict the genus analysis to the
identification of goods or services. Rather, the focus on the identification is based on
the premise that the identification accurately reflects actual conditions of use of the
involved term:
In determining the first part of the Marvin Ginn genericness inquiry in

39 Applicant’s counsel was also asked at the oral hearing whether “smart” had a recognized
meaning in connection with Applicant’s goods and related computer goods having at least
some level of processing ability, which Applicant denied, responding (paraphrasing): “Well,
what does smart mean?”
Serial No. 86857587
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this case, we are faced immediately with the question of whether it is
consistent with the letter and the spirit of the Lanham Act for an
applicant to carve out from the recitation contained in the application
what are arguably its core services in order to avoid a likely finding of
genericness. Specifically, applicant has deftly carved out any reference
to “sports betting services,” all the while admitting that its website may
well offer sports betting services. Must this Board turn a blind eye to the
reality of what is being offered on the named website, restricting our
purview to the recitation of services in the application itself, as
suggested by the Magic Wand case?

We do not believe that is what Magic Wand requires. The Magic Wand
case involved a petition to cancel the registration of the service mark
TOUCHLESS on the ground that the term TOUCHLESS was generic
for “automobile washing services.” The petitioner in that case attempted
to focus on a “relevant public” that was unwarranted by the description
of services, namely, manufacturers and dealers of car wash equipment,
and not the automobile owners and operators to whom the automobile
washing services would be directed. Thus, the decision’s statement that
“a proper genericness inquiry focuses on the description of [goods and]
services set forth in the certificate of registration” must be read in that
context, i.e., as an explanation of the error in petitioner’s attempt to
focus on a relevant public not warranted by the actual recitation of
services. Further, the quoted reference from the Magic Wand case is
preceded by the Federal Circuit’s observation that “[t]he description in
the [application or] registration certificate identifies the [goods and]
services in connection with which the [applicant or] registrant uses the
mark.” … Thus, it is clear that the analytical focus on the recitation of
services is based on the premise that the recitation accurately reflects
actual conditions of use of the involved term.

Somewhat analogous to the situation in DNI Holdings, Applicant, here, appears
to have purposely “structured” its identification of goods in a manner that
deemphasizes the core function of its goods in order to avoid a likely finding of
genericness. However, we need not turn a blind eye to the reality of what is offered
by Applicant’s description of goods as shown by the evidence, including Applicant’s
own evidence. Based on that evidence, we find that “technologically advanced
keyboards for mobile digital devices” is an accurate description of the genus of the
Serial No. 86857587
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goods at issue which include keyboards that contain various levels of smart features,
and that Applicant’s goods fit comfortably within that genus.
IV. Relevant Public Understanding of SMART KEYBOARD
The second part of the Marvin Ginn test considers whether the term sought to be
registered is understood by the relevant public primarily to refer to the genus of goods
under consideration. “The relevant public for a genericness determination is the
purchasing or consuming public for the identified goods.” Frito-Lay N. Am., Inc. v.
Pinceton Vanguard, LLC, 124 USPQ2d 1184, 1187 (citing Magic Wand, 19 USPQ2d
at 1553). See also Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351
(TTAB 2013). We agree with the Examining Attorney that “the relevant public
comprises ordinary consumers who purchase applicant’s goods, because there are no
restrictions or limitations to the channels of trade or classes of consumers.”40
The relevant public is the purchasing or consuming public for the identified goods.
Magic Wand, 19 USPQ2d at 1553. “Evidence of the public’s understanding of the term
may be obtained from any competent source, such as purchaser testimony, consumer
surveys, listings in dictionaries, trade journals, newspapers and other publications.”
Merrill Lynch, 4 USPQ2d at 1143; see also In re Cordua Rests., 823 F.3d 594, 118
USPQ2d 1632, 1634 (Fed. Cir. 2016). In some cases, dictionary definitions and an
applicant’s own description of its goods may suffice to show genericness. In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987); see also In re Am.
Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). Competitor

40 23 TTABVUE 9 (Examining Attorney’s Brief). Applicant does not argue otherwise.
Serial No. 86857587
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use may also provide evidence of genericness. See BellSouth Corp. v. DataNational
Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995) (“The cases have
recognized that competitor use is evidence of genericness.”) (citing Remington Prods.,
Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1446 (Fed. Cir. 1990));
Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172, 176 (TTAB
1986) (finding evidence that competitors have used a particular word as the name of
their goods is persuasive evidence of genericness).
The Examining Attorney provided evidence consisting of “news articles, point of
sale displays, blog posts, computer hardware publications, patents, and published
patent applications” to show “generic us [sic] of ‘smart keyboard’ as a label for
technologically advanced keyboards in the years prior to applicant’s launch of its
product, and ongoing to this day.”41
A. News Articles, Industry Reviews, and Point of Sale Displays
Identifying and/or Discussing a “Smart Keyboard”
In addition to all of the evidence referenced in the genus discussion above, the
Examining Attorney provided news articles, blog and industry reviews, and point of
sale listings that he contends, taken together, show “that ‘smart keyboard’ would be
understood by consumers to refer to a group of technologically advanced keyboards,”
including the following (emphasis added):
o Article from The Austin American-Statesman, “Tanisys signings hint at
sales rise” (October 4, 1994): “In addition to SpinWizard, Tanisys
officials say the company is close to completing agreements with makers
of computer keyboards…. A big keyboard-maker is expected this fall to
demonstrate a ‘smart’ keyboard with special Windows commands

41 Id. at 10.
Serial No. 86857587
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built into little-used function keys….”;42

o Passage from a book, “Coping with Dyslexia” (Published 2000): “To carry
this technology with you to school, you would need a laptop computer.
Laptops can be expensive. An alternative is a ‘smart keyboard.’
Smart keyboards usually run on regular batteries…. can be used for
spell checking or note taking. You can use them to list homework
assignments. You can also begin writing projects that you will finish
when you get home. When choosing a smart keyboard, you should
select one that is easy to operate. You don’t need a fancy complex
machine with functions you will never use”;43

o Article from the Daily News, “Ball State U. report results inform
advertisers of behavior during commercials” (October 3, 2006): “The
observers recorded the different behavior in five-second increments
using the Alphasmart Dana, known as Dana for short. It’s a smart
keyboard with a screen that responds to touch and allows observers to
monitor behavior changes in the viewing subject.”;44

o Article from Network World, “Windows 8 Update: Microsoft sets Oct. 26
release date; EU eyeballs Windows 8 browser policy, tablet keyboards
with brains” (July 19, 2012): “Smart keyboards Microsoft put a lot of
thought into what’s the best keyboard for Windows 8 tablets and came
up with two answers. First, a QWERTY keyboard for users to type on
with all their fingers, and then a split QWERTY keyboard with the
halves pushed out toward the right and left edges for typing with
thumbs”;45

o Article from the St. Paul Pioneer Press: “A quiet morning, with the
newspaper … the birds … the cats … and what’ve they got now” (July
19, 2012): “...popular in Remington’s manual typewriters launched in
1878. It kept the keys from jamming. Here we are in 2012, and everyone
is still learning and using it. … Can’t someone design a smart
computer keyboard that can still recognize the old qwerty style, but
at the push of a button switch to a newer, more logical standard?”;46

o Article from the Los Angeles Times: “Movers and shakers in a motion-

42 May 9, 2019 Final Office Action, TSDR 10-11.
43 June 28, 2017 Office Action, TSDR 26-29.
44 15 TTABVUE 17-19 (Third Request for Reconsideration Denied, Part 1).
45 June 28, 2017 Office Action, TSDR at 13.
46 Id. at 14.
Serial No. 86857587
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sensor revolution; An O.C. father and son are hoping their device
providing precise data on athletes’ movements will catch on like GPS”
(September 6, 2013): “‘Smart helmets. Smart keyboards,’ he said. ‘We
definitely want to be a driving force for that transformation’”;47

o Article from Upstart Business Journal: “Ritzy Blackberry-Porsche is a
beautiful heartbreaker” (November 20, 2013): “The phone is beautiful.
Fans of the Italian cars will see the resemblance-Italian leather and all.
And with a customized BlackBerry 10.2 OS that includes a ‘priority hub’
for easily managing conversations across platforms; a smart keyboard
that learns how you type….;48

o Stigviewer.com product discussion: “Smart (intelligent or
programmable) keyboard is used in conjunction with a KVM switch
when the KVM switch is connected to ISs of different classification
and/or sensitivity” (August 4, 2014): “Keyboards that include USB ports,
smart card slots, and removable media slots are considered smart
keyboards”;49

o Article from the Chicago Business Journal: “Naperville entrepreneur to
pitch anti-bullying tech on Shark Tank” (September 23, 2016): “ReThink
is an app that uses patent-pending, sophisticated context sensitive
algorithms to sense when a hurtful message is about to be sent, and send
an alert asking students to pause and think before sending.
Essentially, it’s a smart keyboard that knows when kids are about
to say something mean, and asks them to stop before they do something
harmful.... The tech has steadily gained traction since Prabhu first
launched the app in 2014: the app been downloaded thousands of times
on Google Play”;50

o Article from firstpost.com: “LG Rolly Keyboard is a Full-Sized Smart
Bluetooth Keyboard That’s Quite Portable” (August 28, 2015): “LG
has announced a new bluetooth keyboard called the LG Rolly Keyboard,
which rolls up to resemble a tiny soundbar or a mobile battery. When
unrolled, the Rolly becomes a full-size smart bluetooth keyboard”;51

o Published study titled “Designing Smartphone Keyboard for Elderly

47 Id. at 12.
48 Id. at 11.
49 Id. at 18.
50 Id. at 7-8.
51 October 2, 2018 Office Action, TSDR 54.
Serial No. 86857587
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Users” in “Communications in Computer Science,” from the 18th Int’l
Conference 2016, Toronto, Canada (July 17-22, 2016), authors from LG
Electronics in Seoul, South Korea, publisher in Switzerland, editor in
Greece, published in Library of Congress: “This study aims to explore
the cognitive perception by elderly users when using smartphone
keyboard, and to discover the suitable design that achieves higher
satisfaction and performance. … A prototype of a Smart Keyboard,
which user can manually adjust the key’s overall height, each key’s
width, and font size and bold styling of characters in each key, is
installed in a 5.5 inch touch screen smartphone.”;52

o Website, forrestluu.com, discussing collaboration with Dell computers to
design a new keyboard (© 2017): “dell smart keyboard[.] Dell wanted
to explore future interpretations of the keyboard. Our team set out to
provide design solutions that embrace current trends, user
behavior/needs, and provide an enhanced experience”:53

o Website, kickstarter.com, development project: “Nums: Ultra-think
Smart Device to Transform Laptop Trackpads. … It transforms your
MacBook trackpad into a smart number computer. … Simply attach
the ultra-thin smart keyboard onto the trackpad, download the
application … and you are all set:”

o Newegg.com listing for a VIBOTON S1 Mini 2.4GHz Wireless Smart

52 June 28, 2017 Office Action, TSDR 30-32.
53 Id. at 33.
Serial No. 86857587
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Keyboard: “Perfect for PC, Tablet, Android TV Box, Google TV Box,
Xbox360, PS3 … etc. Ultra-thin shortcut key design, swift switch
between multiple devices. Compact size for ease of carrying … Built-in
wireless smart touchpad with 360-degree flip design”;54

o Article from joyofapple.com, “10 Best iPad Smart Keyboard Cases (Most
Sold” (November 30, 2018) with excerpts shown below:55

…

54 Id. at 109-112.
55 May 9, 2019 Final Office Action, TSDR 44-54.
Serial No. 86857587
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…

o Article from ikream.com, “7 Best Smart Keyboard [sic] For 12.9-inch
iPad Pro” (April 2, 2019): “No sure what Smart Keyboard for the 12.9-
inch iPad Pro to get? That’s why we’ve assembled this list of the seven
Serial No. 86857587
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best smart keyboards for you. Follow along below, and we’ll show you
our top picks”;56

…

…

...

…

56 Id. at 55-62.
Serial No. 86857587
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o Article from bibblebytes.com, “Best Smart Keyboards For 12.9 Inch
iPad Pro 2019, comparing Applicant’s product with several other
technologically advanced keyboards;57

o Amazon.com listings for Trent iPad Case Airbender Star with
Detachable Wireless Bluetooth Smart Keyboard” for the Apple iPad:58

B. Patent Evidence Identifying and/or Discussing a “Smart Keyboard”
The Examining Attorney also provided U.S. patents and published patent
applications that identify and/or discuss a “smart keyboard” within the context of
various inventions. According to the Examining Attorney, this patent evidence, from
parties apparently unrelated to Applicant, “shows that ‘smart keyboard’ is
understood to be a common name for a broad range of technologically advanced

57 Id. at 38-43.
58 Id. at 76-86.
Serial No. 86857587
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keyboards,” and includes the following (arranged in date order, emphasis added):59
o Patent No. 7091955B2, titled “Multi-purpose Keyboard,” (issued August
16, 2006), describing in the background of the invention, what can give
a keyboard the status of being a “smart keyboard”:60

Due to different key layouts in different countries, it is
necessary to implement a look-up technique in order to use
the same basic keyboard for a plurality of countries. . . .
Macros can be stored on the computer’s memory, or
embedded in the keyboard hardware (usually memory
means), which gives the keyboard the status of
“smart keyboard.”

Due to recent developments of a combination between TV
and the Internet, a new type of keyboard design is
flourishing nowadays. …

It is … an object of this invention to provide a method and
apparatus for replacing a keyboard on a host machine….,
which associates between a keyboard and a computer’s
application…., [and] which associates between a keyboard
and a computer’s setup….61

o Patent Application No. 2010/0149105A1, titled “Portable Electronic
Device” (published June 17, 2010) for an invention described as “a
portable electronic comprised by a main enclosure, a QWERTY keyboard
assembly, and a holder:”62

1. Technical Field[.] The present disclosure relates to
portable electronic devices and, particularly, to a portable
electronic device with a smart keyboard.63

o Patent No. 7831923B2, titled “Providing Visual Keyboard Guides
According to a Programmable Set of Keys,” for “a system and method for
providing visual keyboard guides” (issued November 9, 2010) with

59 23 TTABVUE 12 (Examining Attorney’s Brief).
60 November 17, 2016 Office Action, TSDR 51-64.
61 Id. at 54-55.
62 Id. at 48-50.
63 Id. at 49.
Serial No. 86857587
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repeated references to use of the invention with a “smart keyboard”
throughout the summary, drawing description, and claims, e.g.:64

SUMMARY… [The] smart keyboard detects the presence
of a user’s finger tips in proximity to individual keys of the
smart keyboard without the user having to actually
depress the keys of the keyboard. … Moreover, the smart
keyboard may be a physical keyboard similar to
conventional keyboards or may be a virtual
keyboard, such as a projected keyboard or the like. …65

CLAIMS (13). 1. A method, in a data processing device, for
providing visual keyboard guides, comprising: receiving an
input specifying one or more keys of a smart keyboard,
less than a total number of keys of the smart keyboard, for
which visual guides are to be provided in response to
detecting a presence of a user’s instrument over the one or
more keys; … receiving an input from the smart
keyboard indicating at least one key of the smart
keyboard with which a user’s instrument is in proximity,
the smart keyboard having sensors for detecting a
presence of the user’s instrument in proximity to the at
least one key of the smart keyboard….66

o Patent Application No. 2011/0208974A1, titled “Countermeasure
Against Keystroke Logger Devices” (published August 25, 2011) for an
anti-key logging protocol executable by a computer platform and a
corresponding keystroke input device (e.g., keyboard or keypad), which
functions as a countermeasure to a key logger device, and describing a
preferred embodiment that refers to a “smart keyboard”:67

The keystroke input device (a.k.a., “smart keyboard”)
204 includes a processor and memory, wherein the
processor is operable to execute certain aspects of the AKL
protocol in cooperation with the computer platform (i.e.,
the processor of the computer platform) as a
countermeasure to a keystroke logger device. Similarly to
a standard keyboard, the smart keyboard may also

64 Id. at 65-87.
65 Id. at 72.
66 Id. at 66.
67 February 5, 2018 Office Action, TSDR 80-87.
Serial No. 86857587
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include alphabetic characters, numbers, symbols,
punctuation symbols and various function or navigation
keys; and may communicate keystroke information to the
computer platform. … (numbered figure specifications
omitted).68

o Patent No. 8135889, titled “Direct Connection Single User-Interface
Control of Multiple Computers and Displays” (issued March 13, 2012),
which repeatedly describes a “smart keyboard” in drawings of various
embodiments of the invention, e.g.:69

FIG. 1 illustrates a first example embodiment of a system
for providing single user-interface control of multiple
computers and displays [and] … includes a smart
keyboard device (i.e., a peripheral computer device)
storing a configuration map, and a computer mouse (i.e., a
peripheral computer device) operatively connected to the
keyboard device. The system further includes a first
computer, a second computer, and a third computer each
capable of being operatively connected to the smart
keyboard device via a direct communication link. …

The smart keyboard device provides traditional
keyboarding capability as well as an interface to the
computer mouse (e.g., a USB [universal serial bus]
interface or a PS/2 interface). The smart keyboard
device is further capable of automatically tracking a
current mouse position of the computer mouse, mapping
mouse position of the computer mouse to display position
of at least two computers, and automatically directing the
current mouse position of the computer mouse, any current
mouse command of the computer mouse, and any current
keyboard command of the smart keyboard device
directly to one of the computers (numbered figure
specifications omitted).70

o Patent No. 8432362B2, titled “Keyboards and Methods Thereof” (issued
April 30, 2013) for an invention relating “to advanced input device
technology. More particularly, the present invention relates to

68 Id. at 85.
69 Id. at 48-68.
70 Id. at 60.
Serial No. 86857587
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keyboards that incorporate one or more touch pad, virtual human
interface device (HID), and projector functions” and identifying various
embodiments of the invention used with a “smart keyboard,” e.g.:71

According to one embodiment of the present invention, a
method and a “smart keyboard” are provided which
integrate a virtual human-computer interface, a micro-
projector, or both on a magic keyboard. …

In one embodiment, the smart keyboard may be
implemented as a stand-alone device that may directly and
wirelessly connect to or be integrated into a host
master/slave device.

In one embodiment, the smart keyboard is
programmable to provide a set of user-definable buttons
and touchable boxes to meet the needs of specific
applications.72

o Patent Application No. 20150029404A1, titled “Smart keyboard”
(published January 29, 2015), which uses the term “smart keyboard”
repeatedly in the abstract, background, summary, and claims of the
invention:73

What is claimed is: 1. A smart keyboard for establishing
bidirectional communication between a television and a
portable device. . . . 14. The smart keyboard of claim 1,
wherein the portable device is a mobile phone, a
tablet personal computer, or a digital assistant. . . . 74

Description of the Prior Art…. Particularly, when the
mobile phone and the television are developed toward
intelligence, the keyboard provided by the prior art can not
(sic) satisfy a requirement of the user, so a smarter and
more convenient smart keyboard is very essential
for the user.75

71 November 17, 2016 Office Action, TSDR 88-112.
72 Id. at 101.
73 Id. at 38-47.
74 Id. at 38.
75 Id. at 41-42.
Serial No. 86857587
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o Patent Application No. 2015/0116219A1, titled “Smart Mouse System
and Method of Use” (published April 30, 2015) for an invention related
to transferring data from one computer to another and other uses, and
describing a “smart keyboard” as an independent embodiment with
similar functions as a smart mouse:76

The smart keyboard is an independent embodiment
of the smart mouse that can adopt similar connectivity
between multiple computers and a single keyboard. The
smart keyboard active computer functionality can be
added as part of the Mousetop window computer switching
or could be separately switched between computers
without a smart mouse using specific keystrokes or
functions to toggle between active computers sharing the
same keyboard. In this disclosure, references to the
smart mouse also refer to similar functions
embodied in a smart keyboard.77

o Patent No. 9423836, titled “Super-slim Touch Keyboard and Super-slim
Device for Smart Keyboard Having the Same” (issued August 23,
2016) for an invention described as “a portable electronic comprised by
a main enclosure, a QWERTY keyboard assembly, and a holder”;78

o Patent Application No. 2017/0277287A1, titled “Computing Device
Contact Mitigation” (published September 28, 2017) for an invention
that assists in eliminating occurrences of unintentionally triggered
device contacts that interfere with computing, and describe a smart
keyboard in one example implementation of the invention:79

Looking now at FIG. 1, this figure depicts an example
computing device in accordance with an implementation.
The computing device may comprise, for example, a
notebook, detachable notebook/tablet, a smart keyboard,
or another computing device that includes a keyboard and
touchpad. As shown, the computing device includes a
display, keyboard, touchpad, and keyboard management
module (numbered figure specifications omitted).80

76 February 5, 2018 Office Action, TSDR 31-47.
77 Id. at 43.
78 Id. at 12-30.
79 Id. at 69-79.
80 Id. at 76.
Serial No. 86857587
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The Examining Attorney also relies on additional U.S. patent evidence identified
by Applicant in its request for reconsideration of the final refusal. According to the
Examining Attorney, “Applicant has provided a search result summary of the
USPTO’s PAIR database showing ‘keyboard’ paired with other terms but of note
actually found even more patents, some 34 total, that involve ‘smart keyboard’ or
other smart peripherals,” including the following listed patents, the third of which
is owned by Applicant (numbered figure specifications omitted):
o Patent No. 10419214B2, titled “Mobile Device Management Delegate for
Managing Isolated Devices” (issued September 17, 2019) for a device
manager, wherein the term ‘smart keyboard’ is used as part of the
description of an advanced peripheral device used in some embodiments
of the invention:81

In some embodiments, smart peripheral device represents a
peripheral device that includes, at a minimum, storage sufficient
to store peripheral key part and sufficient functional or
processing capability to push or otherwise transmit peripheral
key part over either a local connection or a networked connection.
The smart peripheral device is represented by a smart
keyboard, a flash drive, and a graphics adapter, all of which may
be compatible with USB or another suitable peripheral bus. In
these examples, smart keyboard and graphics adapter may be
intended to provide human-useable I/O interfaces for headless
embodiments of gateway device….82

o Patent No. 10328341B2, titled “Programmable Actuation Inputs of an
Accessory and Methods Thereof” (issued June 25, 2019) for providing
efficient management and utilization of computer gaming accessories
(e.g., headset, a keyboard, and mouse) in which a “smart keyboard” is
referenced in one of the invention’s embodiments:83

81 15 TTABVUE 22-27, 16 TTABVUE 2-10, 17 TTABVUE 2-10 (Request for Reconsideration
Denied, Parts 1-3).
82 16 TTABVUE 7 (Request for Reconsideration Denied, Part 2).
83 17 TTABVUE 11-12, 14 TTABVUE 2-8, 18 TTABVUE 2-9, 11 TTABVUE 2-10 (Request for
Reconsideration Denied, Parts 3-6).
Serial No. 86857587
- 38 -

It is further noted that the functions described above that can be
performed by the computing device can be delegated to a
processor of the keyboard. Hence, a smart keyboard can be
adapted by a user to have programmable thresholds for AP and
RP and to perform substitution functions of the AMS application
as will be described below.84

o Patent No. 10234960B1, titled “Variable Response Key and Keyboard”
(issued March 19, 2019), owned by Applicant by assignment, which
discusses the use of a “smart keyboard” or “smart keyboard system”
eighteen times in the course of explaining various embodiments of the
invention, for example:85
86

FIG. 1 illustrates one example of an electronic device with a
smart keyboard including smart keys; …87

The following disclosure generally relates to a “smart” input
device used in electronic devices. A smart input device may
vary certain operational parameters or adjust material properties
to provide a different feel or response when it receives an input
force. A smart input device may be stiffer, travel less, move
differently, or otherwise react differently to a received input force
as a property of the smart input device is varied.

For example, in one embodiment, a smart keyboard including a
group of keys is disclosed, the smart keyboard providing a

84 14 TTABVUE 4 (Request for Reconsideration Denied, Part 4).
85 11 TTABVUE 11, 12 TTABVUE 2-9, 13 TTABVUE 2-9, 10 TTABVUE 2-6 (Request for
Reconsideration Denied, Parts 6-9).
86 11 TTABVUE 11 (Request for Reconsideration Denied, Part 6).
87 12 TTABVUE 3 (Request for Reconsideration, Part 7).
Serial No. 86857587
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variable or adaptable output (or other response) in response to a
force exerted on an input surface. …88

FIG. 2 provides a schematic diagram of an example smart
keyboard system according to various embodiments. The smart
keyboard system includes a key with an MR variable response
material, magnetic field source, controller, and a key cap
configured to receive an input force on an input surface of the key
cap. …89

In one embodiment of the smart keyboard system, one or more
pairs of electromagnets are fitted on opposing sides of an MR
material, the MR material disposed below or adjacent a key cap
of the group of key, the MR material being a magneto-rheological
elastomer.90

C. Other Evidence Related to the Term “Smart”
In addition to the evidence provided regarding use of the term “smart keyboard,”
the Examining Attorney also provided evidence of the term “smart” being “used in
direct connection with a variety of computer peripherals, including computer mice,
and wearables that feature novel and non-traditional connectivity with their parent
device” that are “not seen by consumers, as source identifiers.”91 That evidence
includes several articles from trendhunter.com, and computeralliance.com.au,
smartandhealth.com discussing various computer mice described as a “smart mouse,”
and another from gadgetsandwearables.com discussing “smart rings” and listing
other “smart” computer compatible gadgets such as smartwatches, smart scales, and

88 12 TTABVUE 4 (Request for Reconsideration Denied, Part 7).
89 Id. at 8.
90 10 TTABVUE 2 (Request for Reconsideration Denied, Part 8).
91 23 TTABVUE 16 (Examining Attorney’s Brief).
Serial No. 86857587
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smart glucometers.”92 He provides this evidence to support the proposition that “[u]se
of a term as an adjective or adjectival phrase does not prevent that term from being
generic if it refers to the relevant genus or category of goods,” citing In re Serial
Podcast, LLC, 126 USPQ2d 1061, 1068 (TTAB 2018) (quoting TRADEMARK MANUAL
OF EXAMINING PROCEDURE (TMEP) (Oct. 2017) §1209.01(c)(ii) and cases cited therein).
D. Applicant’s Arguments and Evidence Regarding Public
Understanding of “SMART KEYBOARD”
Applicant argues that the evidence of record “is simply insufficient to meet the
legal standard to demonstrate genericness.”93 Specifically, Applicant argues
[T]here is no evidence of such widespread third-party use before
[Applicant] introduced the product in November 2015, nor is there
current ongoing use. The Trademark Office has therefore failed to make
the strong showing required to prove that the relevant public
understands SMART KEYBOARD to refer to the specific class or
category of goods identified in the application – namely, a protective and
decorative cover for a tablet computer that functions as a computer
stand and incorporates a keyboard goods identified in the application –
namely, a protective and decorative cover for a tablet computer that
functions as a computer stand and incorporates a keyboard.94

As discussed above, the genus is this case is not limited to Applicant’s
characterization of the goods based on an identification carefully crafted to avoid a
genericness refusal. Rather, it is based on the actual nature of those goods as shown
by the evidence, which indicates that the genus to be: technologically advanced
keyboards. We turn now to Applicant’s various arguments directed to the sufficiency
of the evidence.

92 February 5, 2018 Office Action, TSDR 110-131.
93 20 TTABVUE 4 (Applicant’s Brief).
94 Id. at 7-8.
Serial No. 86857587
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1. “The Evidence From Obscure Sources Has Little Probative Value”
Applicant argues that “[m]any of the websites cited by the examining attorney
have so little traffic from U.S. visitors that the Alexa web analytics service doesn’t
even list them. Thus, a significant portion of the examining attorney’s evidence …
can be excluded on the basis that the general public is simply unlikely to see what
appears there.”95 Applicant points specifically to the evidence “such as that drawn
from” the websites joyapple.com, computerlanguage.com, smartandhealth.com,
mybleant.com, forrestluu.com, bibblebytes.com, and nordicsemi.com.96 According to
Applicant:
[T]here is a distinct lack of substantiating evidence from national
newspapers or other mainstream press. Only two of the news clippings
offered with the office actions are from a periodical with a broad national
readership, but neither refers to “smart keyboard” in connection with
the relevant goods. . . .

The rest of the periodical evidence introduced by the Office is drawn
from local newspapers or periodicals in various parts of the country. This
evidence also fails to support the refusal of Apple’s mark in connection
with the identified goods.97

The Examining Attorney asserts that Applicant’s obscurity argument “is not
persuasive as it would exclude local and regional publications which serve the same
bodies of consumers, be it college students, general consumers, engineers, doctors, or
other general or sophisticated consumers that purchase applicant’s goods. Websites,
newspaper articles and publications are generally a competent source for determining

95 Id. at 8 (internal citations omitted).
96 Id.
97 Id. at 9.
Serial No. 86857587
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how the public perceives the mark in connection with applicant’s goods.”98
Applicant’s argument that “a significant portion of the examining attorney’s
evidence can be excluded” because it comes from websites that are poorly trafficked
is unpersuasive. First, the Alexa webpage printouts provided by Applicant are barely
legible. Second, Applicant provided no explanation or analysis of the data contained
in those printouts; Applicant simply refers to them and concludes that a “significant
portion” of the websites are poorly trafficked, but that conclusion has no context.
Poorly trafficked as compared to what? The relevant public considered in this case is
not the “the general public,” as Applicant suggests, but rather the purchasing or
consuming public for technologically advanced keyboards. Third, Applicant has
provided no evidence regarding the metrics and insights provided by the Alexa data
it provided. Apart from indications that the search results pertain to traffic for the
last 90 days prior to the search, we have no evidence regarding how the metrics for
the results are obtained, such as whether the results are obtained based on samples
or direct measurements.
Fourth, the websites highlighted by Applicant in its brief as being sites “that the
general public is simply unlikely to see” are cherry-picked from what Applicant
acknowledges to be “cumulative office action evidence,”99 but none of them are
individually relied on by the Examining Attorney as definitive in and of themselves.

98 23 TTABVUE 17 (Examining Attorney’s Brief).
99 20 TTABVUE 7 (Applicant’s Brief).
Serial No. 86857587
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Rather, the evidence comes “from a variety of publications”100 and sources, some of
which are well-known, others perhaps lesser known, which, taken as a whole with
the all of the other evidence in this case consistently shows “smart keyboard” being
used to describe technologically advanced keyboards.
We disagree with Applicant’s contention that “there is a distinct lack of
substantiating evidence from national newspapers or other mainstream press” and
that “[o]nly two of the news clippings [from the New York Times] offered with the
office actions are from a periodical with a broad national readership, but neither
refers to “smart keyboard” in connection with the relevant goods.”101 A significant
portion of the evidence comes from well-known publications and online sources, such
the Los Angeles Times, Chicago Business Journal, cnet.com, fastcompany.com, or is
corroborated by other evidence by online retailers.
For example, information regarding one of the Das smart keyboards, similar to
those mentioned in three of the provided tech websites (adigaskell.org, dzone.com,
and wccftech.com),102 is corroborated by a recent Amazon.com point-of-sale listing of
the product with 1,322 product reviews and referred to as “the world’s first Smart
Crossover (Work/Gaming) Keyboard” that was “named best crossover (work/play)
computer by washable.”103 An article regarding a Logitech smart keyboard discussed

100 23 TTABVUE 14 (Examining Attorney’s Brief).
101 20 TTABVUE 9 (Applicant’s Brief).
102 June 28, 2017 Office Action, TSDR 20-21; February 5, 2018 Final Office Action, TSDR 97-
98; October 2, 2018 Office Action, TSDR 34-41.
103 May 9, 2019 Final Office Action, 34-37.
Serial No. 86857587
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in a 2014 article in the Bradenton Herald, a Florida publication, and Logitech’s
current website, provides updated information about smart keyboards developed by
that company, which the New York Times article identified as one of the companies
developing smart keyboards back in 2001.104
And a Satschi-branded “smart keyboard” mentioned in a Birmingham, Alabama
NBC local news broadcast in 2014, was reported on in 2015 by the Dayton Daily
News, an Ohio publication, and listed in a recent Amazon.com point-of-sale page
(inviting potential purchasers to compare that product with other keyboards
including another wireless Bluetooth keyboard from Applicant).105 We need not
discuss each piece of evidence provided by the Examining Attorney here. Suffice to
say, having reviewed the record in its entirety, we find that the wide range of website
and publication evidence provided by the Examining Attorney is expansive and covers
a wide range of relevant consumers over a course of many years.
Applicant argues that apart from the cited New York Times article, “[t]he rest of
the periodical evidence introduced by the Office … fails to support the refusal of
[Applicant’s] mark in connection with the goods.”106 Applicant similarly argues that
“[t]he other record evidence consists of obscure publications unrelated to tablet
computer accessories for consumers. They shed no light on how consumers

104 15 TTABVUE 11-15, 19-21 (Third Request for Reconsideration Denied); February 5, 2018
Final Office Action, TSDR 200-202.
105 15 TTABVUE 15-16 (Third Request for Reconsideration Denied, Part 1); June 28, 2017
Final Office Action, TSDR 9; February 5, 2018 Office Action, TSDR 175-183.
106 20 TTABVUE 9 (Applicant’s Brief).
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understand SMART KEYBOARD.”107 Applicant characterizes the purported
irrelevance of some of those publications in the following examples:108
• An article from the Chicago Business Journal refers to a software app
that knows when “kids are about to say something mean,” not a
keyboard.

• An article from the St. Paul Pioneer Press asks whether “someone [will]
design a smart computer keyboard” and expresses hope that someone
has “some smarter alternatives out there.” It does not refer to an
existing genus of keyboard products.

• An article from the Los Angeles Times similarly hypothesizes about
“new sciences” that might emerge in the future, including potentially
“smart helmets” or “smart keyboards.” As with the prior reference, this
does not refer to any particular keyboard product on the market.

• An article from the News and Observer refers to a computer security
device being developed by researchers that recognizes a particular
computer user by the way he or she types.

• A page from the book Coping with Dyslexia that refers to a stand-alone
word processor that can be used as an alternative to a laptop computer.
The book was published more than 17 years ago and no longer appears
to be in print.

Applicant’s depiction of the referenced articles, is clearly tempered by its
characterization of the genus at issue and misses the point. All of the articles
provided by the Examining Attorney (including the third-party website evidence
mentioned above), definitively relate to, discuss, or promote, the genus at issue in
this case: technologically advanced keyboards for mobile digital devices. For example,
viewed in the proper context,
o The Chicago Business Journal article is not just about a software
application that knows when “kids are about to say something mean”;

107 Id. at 10.
108 Id. at 9-11.
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it’s about an application based on a “smart” technology, “[e]ssentially,
it’s a smart keyboard” that can address that subject matter.

o The St. Paul Pioneer Press article is not simply an “expression of hope”
that someone will come up with something called a “smart computer
keyboard”; it’s an article discussing the need for a particular type of
“smart keyboard,” (a particular type of technologically advanced
keyboard) that can, “at the push of button switch” between “the old
qwerty style” of keyboard to “a newer, more logical standard.” That the
particular “smart keyboard” referred to in the article may not have
existed at the time the article was written is immaterial. What is
important is the article’s recognition that a “smart keyboard” would
address the keyboard problem discussed in the article.

o The same is true with respect to cited Los Angeles Times article, which
does not simply hypothesize about “new sciences” that might emerge in
the future, but a recognition that a “smart keyboard,” something the
articles make clear is well-understood by a wide swath of the public,
could be utilized to advance motion-sensor technology.

o The article from the News and Observer—and eight other articles from
fastcompany.com, cnet.org, acs.org, sciencedaily.org, popsci.org, pbs.org,
futurity.org, gadgetify.org., as well as a point-of-sale listing—is not
merely about a computer security device that can recognize its owner,
but rather a technologically advanced keyboard, a “smart keyboard” that
achieves that purpose, and provides other technologically advanced
features such using typing to power itself and other small devices.

o The excerpt from book “Coping with Dyslexia” does not simply refer to a
stand-alone computer alternative to a laptop computer; it refers
specifically to a “smart computer” as an alternative to a stand-alone
word processor, one that can be used for spell checking or note taking.
Applicant speculates, without support, that the book “no longer appears
to be in print.” That the book was published 17 years ago is indicative of
the many years that the term “smart keyboard” has been in use to
describe a technologically advanced keyboard.

2. “Non-U.S. References Do Not Establish Genericness in the United
States”
Applicant challenges certain evidence provided by the Examining Attorney as
being foreign based, and therefore not probative of U.S. consumer perception.
Specifically, Applicant contends that
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Much of the evidence introduced by the examining attorney is from
foreign websites, including firstpost.com from India, wccftech.com from
Dubai, twice.com from the United Kingdom, and Pulse.ng from Nigeria.
Similarly, the examining attorney has introduced a page from a book,
HCI International 2016, which itself is a compilation of abstracts of
posters presented at a scientific conference in Canada. The cited page
describes a research project involving a virtual keyboard with
customizable keys, which was installed on the touchscreen of a
smartphone. The research was conducted in South Korea, and the
virtual keyboard was a prototype. There is no indication that the
keyboard has ever been commercialized.109

The Examining Attorney argues that the “foreign sourced evidence in the record,
which is comprised of seven sources out of a much larger record of evidence, carries
probative weight. All of the evidence is in the English language and is accessible over
the internet from the United States and use the “smart keyboard” term in a generic,
non-source identifying manner.”110
In In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007), the
Federal Circuit disagreed with the Board’s conclusory statement in that case that
references originating in foreign countries are not probative. To the contrary, the
Court asserted that “information originating on foreign websites or in foreign news
publications that are accessible to the United States public may be relevant to discern
United States consumer impression of a proposed mark,” citing inter alia In re King
Koil, 79 USPQ2d 1048, 1050 (TTAB 2006) (assigning some probative value to
information of foreign origin) and In re Remacle, 66 USPQ2d 1222 n. 5 (TTAB 2002)
(finding use of foreign website information acceptable as internet is a widely-

109 Id. at 11-12.
110 23 TTABVUE 18 (Examining Attorney’s Brief).
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available resource and noting that “it is reasonable to assume that professionals in
… computers, telecommunications and many other fields are likely to utilize all
available resources, regardless of country of origin or medium.”). “The probative
value, if any, of foreign information sources must be evaluated on a case-by-case
basis.” Id.
We agree with the Examining Attorney that foreign-sourced evidence in this case
is probative, particularly the websites that are foreign websites from English
speaking countries including those in which English is an official or primary language
(e.g., United Kingdom, Australia, India, Nigeria, and Dubai (UAE)) and they are in
English, thus making them accessible to U.S. consumers. Particularly in the age of
the Internet where geography is no obstacle, it is not unreasonable to infer that
consumers seeking information and product reviews about a product, particularly in
the global field of consumer electronics, would be impacted by the information
provided by foreign sources. Moreover, as the Examining Attorney notes, “[t]he
subject matter of the articles, “smart keyboards” are part of the larger computer
hardware universe and something that many large computer companies sell globally,
including applicant.”111 As he further observes, “several of the articles discuss a
“smart keyboard” product with pricing in U.S. Dollars, have staff writers within the
United States, tout that their readership is in the United States, or keyboards that
interact with software operating systems that are used globally, such as Android.”112

111 Id. at 19.
112 Id.
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We also agree with the Examining Attorney that the seven foreign sources at issue
are part of a much larger record of evidence. Thus, while we find those to be probative,
we do not rely on any one of them specifically, and instead find that they are
corroborative of the evidence at large. Several of them just corroborate other U.S.
website evidence providing similar information. For example, wccftech.com (Dubai)
provides corroborating information about the Das smart keyboard provided by U.S.
websites in the record, adigaskell.org and dzone.com, and a U.S. Amazon.com point-
of-sale advertisement. Pulse.com (Nigeria) provides corroborating information about
the OneBoard smart keyboard already provided by the U.S. websites in the record,
fastcompany.com, cnet.com, acs.org, sciencedaily.org, popsci.com, and gadgetify.com,
a transcript from pbs.org, an article in the News and Observer newspaper, and a
banggood.com point-of-sale listing.
3. “Patents Do Not Evidence Genericness”
Applicant argues the patent evidence cannot support a finding of genericness in
this case. Specifically, Applicant asserts that “the text of patents has no influence on
how average consumers use or perceive a term. Inventors and patent attorneys read
patents; consumers do not.”113 “In any event,” Applicant argues, “the number of
patents cited is far from sufficient to prove genericness: [t]wo of the cited patents do
not even mention ‘smart keyboard,’ and are entirely irrelevant; [o]nly thirteen of
them actually cover some form of keyboard technology; [and] [o]nly one patent No.
9,423,836, describes an invention that is similar to the goods identified, showing a

113 20 TTABVUE 14 (Applicant’s Brief).
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keyboard, cover, and stand.”114 Moreover, Applicant asserts, “[e]ven if one assumed
that some of these patents were relevant, they are infinitesimal in comparison to the
overall number of patent applications filed covering keyboard technology”:115
As of November 2019, the word “keyboard” appears in the text of
approximately 568,000 patents and 698,000 published patent
applications. The earliest patent cited by the examining attorney was
filed in 2006. From 2006 through the present, approximately 382,000
patents have been filed containing the word “keyboard.” More than
75,000 were filed from December 1, 2015, after Apple’s launch.

Of these hundreds of thousands of patent applications, the examining
attorney has cited only sixteen patents that contain the phrase “smart
keyboard,” only eleven of which actually cover keyboards. Thirteen
patents over a seven-year period hardly shows common usage. If “smart
keyboard” were in fact a term of art for keyboard technology, the phrase
would appear with much more frequency. [Applicant’s evidence showed]
significantly more prevalent use of the phrases “wireless keyboard,”
“Bluetooth keyboard,” “ergonomic keyboard,” “gaming keyboard,” and
“wired keyboard” in patents.”

The Examining Attorney argues that “Applicant’s position runs contrary to past
Board practice,” citing four non-precedential decisions in support of this contention,
including In re Fidelity Nat’l Info. Servs. Inc., App. No. 87006159, 18 TTABVUE, 2020
TTAB LEXIS 215 (TTAB May 6, 2020) (finding genericness refusal supported by
third-party patents and patent application); In re BioArray Solutions, Ltd., App. No.
78908764, 10 TTABVUE, 2008 TTAB LEXIS 814 (TTAB June 4, 2008) (finding
genericness refusal supported by third-party patents and patent applications); In re

114 Id. Applicant also argues that because the ’836 Patent “was filed by a Korean inventor
based on Korean patent application[s] … and [a] PCT application, … all of which are in
Korean[,] [t]he resulting U.S. patent is therefore a technical translation from Korean, and
not representative of a U.S. inventor’s understanding of industry terminology.” Id.
115 Id. at 14-15.
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Sharp, App. No. 78765022, 2009 TTAB LEXIS 595 (TTAB August 31, 2009) (Aff’’d.
404 Fed. Appx. 501 (Fed. Cir. 2010)) (finding genericness refusal supported by PCT
patent application); and In re General Kinematics Corp., App. No. 74366705, 1999
TTAB LEXIS 154 (TTAB April 12, 1999) (finding genericness refusal supported by
patent evidence, and rejecting applicant’s argument that patent evidence is not
competent for genericness purposes).116 He observes that “[g]enericness is the
ultimate in descriptiveness,” citing Weiss Noodle Co. v. Golden Cracknel and
Specialty Co., 290 F.2d 845, 129 USPQ 411 (CCPA 1961) and Int’l Ass’n of Fire Chiefs,
Inc., 782 F.3d 987, 989, 228 USPQ 528 (Fed. Cir. 2018).117 “Therefore,” he urges, “it
stands to reason that patents and published patent applications are competent forms
of evidence for evaluating genericness.”118
As noted by the Examining Attorney, the Board has considered patent evidence
in past cases as part of its determination of whether a mark is generic. In addition to
the non-precedential cases cited by the Examining Attorney, in In re Empire Tech.
Dev. LLC, 123 USPQ2d 1544, 1546, 1551 (TTAB 2017), the Board relied in part on

116 23 TTABVUE 12-13 (Examining Attorney’s Brief). Non-precedential decisions “are not
binding on the Board, but may be cited for whatever persuasive weight to which they may be
entitled.” TBMP § 101.03. “If a non-precedential decision does not appear in the United States
Patents Quarterly or the USPTO’s public electronic databases, the citing party should
append a copy of the decision to the motion or brief in which the decision is cited.” Id. (quoting
Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007)).
The Fidelity Nat’l Information Servs., BioArray Solutions, and Sharp decisions appear in the
USPTO’s public electronic database TTABVUE. In addition, the Examining Attorney
provided copies of some of the decisions, including the General Kinematics decision with the
denial of Applicant’s final request for reconsideration, 10 TTABVUE 7-14, 9 TTABVUE 2-8
(Parts 9 and 10).
117 Id. at 12.
118 Id.
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the applicant’s published U.S. patent application describing “coffee flour” in finding
the term generic and affirming the Office’s refusal to register the term COFFEE
FLOUR on the Supplemental Register for flour as a dry ingredient in food and
beverage products for consumer use.
The Board has also relied on patent evidence when adjudicating descriptiveness
refusals. “[P]roof of mere descriptiveness may originate … in U.S. patents obtained
or patent applications filed by Applicant; and such proof also may be found in U.S.
patents or patent applications of third parties.” In re Omniome, Inc., 2020 USPQ2d
3222, at *14-15 (TTAB 2019) (finding descriptiveness refusal supported by patent
evidence). See also In re Tekdyne Inc., 33 USPQ2d 1949, 1951-52 (TTAB 1994)
(numerous descriptive references of the designation MICRO-RETRACTOR in
applicant’s patent for its goods were relied on in part by the Board in affirming mere
descriptiveness refusal to register term); In re Int’l Game Tech. Inc., 1 USPQ2d 1587,
1588 (TTAB 1986) (excerpts from U.S. utility patents made of record to show that the
term “on-demand,” in the phrase ON-LINE, ON-DEMAND, had descriptive
significance with respect to computers, computer-controlled equipment, or other
automated equipment - merely descriptive refusal affirmed).
We agree with the Examining Attorney that patent evidence may be considered
in determining genericness. Simply put, in making our determination, we must
evaluate all of the evidence presented, including the patent evidence.
Applicant’s statement that “[i]nventors and patent attorneys read patents;
consumers do not” misses the point. The patent evidence in this case provides strong
Serial No. 86857587
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corroboration to the wide variety of third-party generic use of the term “smart
keyboard” already of record in this case. Patent applicants are required to provide
written descriptions of their inventions, and the processes of making and using them,
“in such full, clear, concise, and exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly connected, to make and use the
same.” Patent Act § 112, 35 U.S.C. § 112(a). Here, the patent evidence of record, which
includes the thirteen patents and patent applications highlighted above that were
issued or published between 2006 and 2019, provides a strong showing that the term
“smart keyboard” has been widely used over the course of many years to describe
various types of technologically advanced keyboards.
All of the sixteen patents and patent applications of record that refer to a “smart
keyboard” identify a keyboard that incorporates some kind of digital electronics and
is equipped with, uses, or contains some kind of electronic control device (see
definition of “smart,” supra); and identify an electronic gadget that is able to connect,
share and interact with its user and other smart devices (see definition of “smart
device,” supra). That evidence includes Applicant’s own U.S. Patent No. 10234960B1
(Variable Response Key and Keyboard) (issued March 19, 2019), describing an
invention generally relating to a “‘smart’ input device used in electronic devices,”
which in the example embodiments may be comprised of a “smart keyboard
providing a variable or adaptable output (or other response) in response to a force
exerted on an input surface” and a “smart keyboard system” that includes “a key
with an MR variable response material, magnetic field source, controller, and a key
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cap configured to receive an input force on an input surface of the key cap.”119 Thus,
even Applicant’s own patent makes generic use of the term “smart keyboard” to
describe a technologically advanced keyboard.
Applicant’s contention that “the number of patents cited is far from sufficient to
prove genericness” is misplaced, as well as constrained by its view of the genus as
being limited to an “accessory [that] combines a tablet keyboard, cover, and stand”
combined by a single unit.120 As the evidence demonstrates, Applicant’s particular
keyboard (and its feature of being foldable into a stand and cover) is but one of many
technologically advanced keyboards that may be described as a smart keyboard.
Moreover, it is not the quantity of patents that is relevant, but the quality of
information provided therein that is important. See In re Omniome, Inc., 2020
USPQ2d 3222, *31 (relying on four patents/patent applications owned by applicant,
in addition to other evidence of record, to affirm descriptiveness refusal). Cf. In re
Int'l Game Tech. Inc., 1 USPQ2d 1587, 1588 (TTAB 1986) (excerpts from U.S. utility
patents made of record to show that the term “on-demand,” in the phrase ON-LINE,
ON-DEMAND, had descriptive significance with respect to computers, computer-
controlled equipment, or other automated equipment -- merely descriptive refusal
affirmed).
Applicant argues that “[e]ven if one assumed that some of these patents were
relevant, they are infinitesimal in comparison to the overall number of patent

119 January 7, 2019 Denial of Final Request for Reconsideration, TSDR 62-83.
120 20 TTABVUE 6 (Applicant’s Brief).
Serial No. 86857587
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applications filed covering keyboard technology.” Notwithstanding, we do not rely on
the patent evidence as being conclusive on the issue of genericness. Instead, we find
that the patent evidence corroborates all of the other evidence in the record
demonstrating that “smart keyboard” is a generic term to describe technologically
advanced keyboards. The patent evidence in this case, which includes Applicant’s
own patent, shows use of the term “smart keyboard” to describe a variety of
technologically advanced keyboards and suggests that the patent examiners in those
patents considered the term to be a full, clear, concise, and exact term to describe
such devices, thus further supporting the genericness of “smart keyboard.”
4. “The Trademark Office Has Failed to Demonstrate that SMART
KEYBOARD Was Generic Prior to November 2015”
According to Applicant, “[t]he refusal is premised on the notion that SMART
KEYBOARD was generic before Apple adopted the mark”:121
The theory is that the industry used SMART KEYBOARD generically
before Apple adopted it, but that Apple’s use has discouraged others in
the industry from continuing to use the phrase. If this were true, then
the evidence of genericness prior to November 2015 would be far more
extensive than afterwards. However, the evidence from before
November 2015 is slim.

We do not agree that the evidence showing use of “smart keyboard” to describe
technologically advanced keyboards prior to Applicant’s launch of its product in
November 2015 is “slim.” Indeed, one could only come to that conclusion if viewed
through the skewed lens of Applicant’s genus restriction. To the contrary, there is
ample evidence in the record of use of the term “smart keyboard” by multiple third

121 Id. at 15.
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parties, in articles, publications, reviews, advertisements for third-party comparable
products, and in patents, both before and after Applicant began using that
designation for its product, to demonstrate that the term is viewed by the relevant
public as being generic. Although Applicant, understandably, attempts to show that
individual portions of evidence are not, in and of themselves, demonstrative of
genericness, we view the evidence in its totality and find it provides substantial
support to the Examining Attorney’s argument that SMART KEYBOARD is generic.
5. “The Evidence of Current Use on Retail Sites Does Not
Demonstrate Genericness”
Applicant contends that “[t[he keyboard product categories on current retail sites
are consistent with those in the past. Apple’s introduction of SMART KEYBOARD
did not motivate any of the leading retailers to add the phrase as a generic category
of keyboard.”122 Referring to the Examining Attorney’s retail evidence as being “a
handful of pages from retail sites purporting to show that others use SMART
KEYBOARD to refer to their product,” Applicant asserts that “[m]ost of these can be
discounted as irrelevant, because they either do not use the phrase “smart keyboard”
or the phrase refers to Apple’s own product.”123 Moreover, it urges, “none of these are
the websites of major national retailers, who sell the largest share of consumer
electronics. All but one are independent Amazon storefronts, and one can’t conclude
that these small sellers have an appreciable impact on the marketplace or consumer
perception. In fact, one can’t necessarily assume that they have genuine merchandise

122 Id. at 16.
123 Id. at 16-17.
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at all.”124 Applicant provides several examples:125
• Amazon - ONHI Wireless Keyboard Case for iPad Smart Folio Case. The
product is a “Smart Folio Case,” not a “Smart Keyboard.”

• Amazon - Das Keyboard X50Q Soft Tactile RGB Mechanical Keyboard.
The product is described as being used for “Smart Gaming,” not a “Smart
Keyboard.”

• Amazon – Smart Keyboard for iPad. This is [Respondent’s] own product.

The Examining Attorney asserts, in response, that Applicant’s argument “is
unpersuasive for the same reasons in that as long as the evidence shows non-source
identifying use, the evidence is relevant to assessing consumer perception. There is
no per se rule that only evidence from a large nationwide retailer can be acceptable
evidence in a genericness case.”126
We are unpersuaded by Applicant’s characterization of the retail use evidence,
which does not address the evidence overall but instead focuses on what Applicant
contends are weak references. However, even the listed examples do not support
Applicant’s position. The Amazon.com ONHI listing describes the goods in at least
seven different ways: “ipad Pro 10.5 Keyboard case,” “ipad pro 10.5 keyboard,” “ONHI
Wireless Bluetooth Keyboard Case,” “shell Smart Folio Case,” “7 Colors Backlit Ipad
Smart Keyboard,” “keyboard case for ipad,” “keyboard ipad pro 10.5,” and “smart
keyboard ipad 10.5,”127 thus demonstrating, similar to Applicant’s closely related

124 Id. at 17.
125 Id.
126 18 TTABVUE 24 (Examining Attorney’s Brief).
127 February 5, 2018 Final Office Action, TSDR 197-198.
Serial No. 86857587
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product, that the same goods can be described in various ways. The product touts that
“a single charge can make the keyboard standby for 60 days,” and that “[o]pening or
closing the ipad pro 10.5 keyboard 10.5 triggers Keyboard sleep or wake mode to
preserve battery life,” which “can be used for 180 hours” without the backlight,
amongst other features. The product thus fits within the genus of technologically
advance keyboards.
Similarly, with respect to the Das keyboard example, the Amazon.com listing
identifies the product as a “Das Keyboard X50Q Soft Tactile Smart Mechanical
Gaming Keyboard,” the “Ultimate Smart RGB Keyboard,” and “the ultimate RGB
keyboard for professionals who like to game: no interruptions, fully programmable,”
with “Q software … to send notifications to your keyboard and manage RGB lighting,
… pre-built Q applets … advanced mechanical switches 100 million keystrokes …
dedicated media controls,” and other features.128 That the product targets gamers
does not mean it is simply for “smart gaming,” as Applicant suggests. Rather, this
specific type of keyboard, a gaming keyboard purportedly “named best crossover
(work/play) keyboard by washable” is clearly a technologically advanced keyboard to
which the “smart” moniker is being applied.129 Das keyboards have been referred to
as “smart keyboards” in product reviews also in the record.130

128 May 9, 2019 Final Office Action, TSDR 34.
129 Id. at 35.
130 June 28, 2017 Office Action, TSDR 21; February 5, 2018 Final Office Action, TSDR 97-98;
October 2, 2018 Office Action, TSDR 34-41.
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The third example Applicant provides regarding the Amazon.com list of
Applicant’s own product was not provided by the Examining Attorney to show
another “smart keyboard” use, but rather to show that competitors of Applicant that
use “smart keyboard” to describe their product have received more customer reviews
than Applicant:
In fact the evidence also suggests that competitors have been using the
SMART KEYBOARD with similar keyboard case goods in the same
trade channels, (e.g. Amazon.com), and that competitors have garnered
significantly more consumer reviews than applicant’s. (See, e.g.:
[Satechi Amazon.com listing] (of not [sic] is that this product using the
mark wording has substantially more customer reviews on Amazon than
applicant’s product, (see: [Applicant’s smart keyboard listing]. See also:
ONHI smart keyboard case having a greater number of consumer
reviews than applicant, [ONHI Amazon.com listing]. The evidence
shows that consumers are purchasing other brands using the “smart
keyboard” terminology and that they may recognize the wording in a
non-source indicating manner.131

Contrary to Applicant’s contention, we find that most of the retail evidence of
record does use the phrase “smart keyboard” (or some close derivative thereof that
may include one or more adjective to provide more detail about the features of the
keyboard. e.g., “smart mechanical keyboard,” or “smart wireless keyboard). Based on
our careful and thorough review of the record, we find a generous amount of evidence
of retail use that is probative in our evaluation of the public perception of the alleged
mark.
Applicant urges, without support that “keyboard product categories on current
retail sites are consistent with those in the past,” and asserts that “[it’s] introduction

131 February 5, 2018 Office Final Action, 175-198.
Serial No. 86857587
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of SMART KEYBOARD did not motivate any of the leading retailers to add the
phrase as a generic category of keyboard.”132 Even if these statements are true, they
do not bear on whether SMART KEYBOARD is generic because there is significant
evidence in the record showing use of that term by competitors and the relevant
public. Even if that were not the case, “[t]he absence of examples of competitor or
public use of this exact set of words in the record [would] not obviate the refusal. The
fact that an applicant may be the first and only user of a term in connection with its
specific goods does not justify registration if the only significance conveyed by the
term is that of the category of goods.” In re Greenliant Sys. Ltd., 97 USPQ2d 1078,
1084 (TTAB 2010). “[T]he USPTO must show that the relevant public would
understand the applied-for mark as a whole to have generic significance, not that
they use it in that manner.” In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92
USPQ2d 1682, 1685.
Applicant’s suggestion that the retail evidence should be discounted because it
does not come from “major national retailers, who sell the largest share of consumer
electronics” is also unavailing. As the Examining Attorney notes, there is no per se
rule that evidence of relevant public understanding of a term must come from “major”
retailers. In the age of the Internet, even smaller retailers have access to consumers
worldwide.

132 Id. at 16.
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6. “‘SMART’ is Not Per Se Descriptive or Generic”
Applicant argues that “[t]here is no per se rule that the term SMART is generic,
or even descriptive,” asserting that “categorizing “smart” as generic is the rare
exception rather than the rule.”133 Applicant provides three sets of data in support of
that assertion, including
• Several excerpts of three searches from the USPTO’s Trademark
Electronic Search System (TESS) simply identifying that there are (a)
3815 live applications or registrations for marks that include the word
“smart” for goods in Class 9, along with a Corsearch printout indicating
that 3431 of the marks are published or registered; (b) 663 live
applications or registrations for marks that include and disclaim the
word “smart” for goods in Class 9; (c) 334 live applications or registration
for/on the Supplemental Register that include the word “smart” for
goods in Class 9;134

• An excerpt of a Coresearch printout indicating that there 110 marks
that include the word “smart” in Class 9 that have been registered with
a Section 2(f) claim of acquired distinctiveness;135 and

• Printouts of thirty-four third-party registrations on the Supplemental
Register for marks that include the word “smart” and purportedly “have
the same construction as SMART KEBYOARD – the term SMART
prefacing a descriptive or generic term for goods in Class 9.”136

The Examining Attorney does not dispute Applicant’s contention that the term
‘smart’ is not per se descriptive or generic. Asserting that he “never argued such a
position. Rather, the term ‘SMART’ in the context of the goods in the application are
[sic] generic.”137 He argues that the statistics and examples provided by Applicant

133 20 TTABVUE 18 (Applicant’s Brief).
134 November 12, 2019 Third Request for Reconsideration, TSDR 43-44 (Exhibit H).
135 Id. at 45 (Exhibit I).
136 Id. at 46-160 (Exhibit J).
137 23 TTABVUE 19 (Examining Attorney’s Brief).
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“establish[] nothing about ‘SMART KEYBOARD.”’ Instead, the evidence “addresses
other types of goods, and in the case of applicant’s database evidence, provides no
context as to what the underlying goods are for those marks.”
In reply, Applicant asserts that the Examining Attorney contradicts this
argument by submitting “evidence of computer peripheral devices paired with the
term ‘SMART’ to demonstrate that such goods are understood by consumers to refer
to a technologically advanced genus of the basic peripheral.”138
We agree with both Applicant and the Examining Attorney that there is no per se
rule that the word “smart” is descriptive or generic, since such legal conclusions must
be based on an evaluation of alleged marks in their entireties in view of the goods or
services at issue, and in relation to the relevant purchasing public’s understanding
thereof, not in a vacuum. Cf. Capital Project Management, Inc. v. IMDISI, Inc., 70
USPQ2d 1172 (TTAB 2003) (mere descriptiveness “is not determined in a vacuum,
but rather … is analyzed as the mark is used in connection with the goods and/or
services.”).
The Examining Attorney referred to the relevant consumer understanding of
“smart” in relation to “computer device peripherals,” not to all good and services.
Nevertheless, as he argued in an office action, “inferences may still be drawn from
the evidence that the term ‘SMART’ has a commonly known definition in the world
of computers and that it is recognized by consumers for the communicative processing

138 24 TTABVUE 11 (Applicant’s Reply Brief).
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technology in the goods.”139
While “[w]e must look at these definitions within the context of the goods for which
registration is sought,” In re Finisar Corp, 78 USPQ2d 1618, 1622-23 (TTAB 2006),
at least as early as 1994, the Board recognized that “[it is undeniable that computers
have become pervasive in American daily life” and that “[t]he ‘computer’ meaning of
the term ‘smart,’ as is the case with many ‘computer’ words, is making its way into
the general language.” In re Cryomedical Sciences, Inc. 32 USPQ2d 1377, 1378 (1994).
The takeaway from the evidence related to “smart” devices, generally, which
corroborates the definition of “smart device” as “an electronic gadget that is able to
connect, share and interact with its user and other smart devices,” is that consumers
are predisposed to view the term “smart” as an indicator of what the Examining
Attorney refers to as a device with “communicative processing technology.” The end
determination of whether an alleged mark having the term “smart” is generic
depends on whether there is evidence in the record that the term, when combined
with “keyboard” as SMART KEYBOARD, identifies the genus of the goods.
The statistics Applicant provided regarding third-party registrations of “smart”
marks obtained from select USPTO database searches are irrelevant given the
absence of context, and are misleading. Specifically, the statistics showing that there
are X number of “live applications or registrations” or marks that are “published or
registered” do not distinguish between the two statuses. Thus, we have no
information about the number of applications that have been refused registration (or

139 February 5, 2018 Final Office Action, TSDR 8.
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that have been cancelled) due to descriptiveness or genericness. Moreover, [a]n
application is not evidence of anything except that the application was filed on a
certain date . . . .” In re Ala. Tourism Dep’t., 2020 USPQ2d 10485, at *30 n.27 (TTAB
2020) (citing Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 n.11 (TTAB
2007)). Additionally, the Corsearch results indicating that there are 110 registered
marks that include the word ‘smart’ for goods in Class 9 with a Section 2(f) claim of
acquired distinctiveness shows nothing about descriptiveness without contextual
information about the relevant goods or services.
The third-party Supplemental Registration evidence of marks that include the
word “smart” with the purported same construction as SMART KEBYOARD” are also
not probative. Of the thirty-three active registrations provided, thirty-one are for
goods and services unrelated to computer peripherals, and none are for keyboards.
The remaining two, SMART CHARGER for “an electronic device power source for cell
phones and tablet computers comprised of a wall power supply with integrated
rechargeable battery and charge” and “SMART RECIPE” for goods inter alia
“computers,” do not demonstrate that “SMART” is merely descriptive, and not
generic, when combined with “KEYBOARD.”
We find the marks in those third-party registrations are readily distinguishable
from the mark herein and they do not compel a finding that applicant’s mark is not
generic. In any event, regardless of what these third-party registrations may show,
and even to the extent the marks in these registrations “have some characteristics
similar” to the mark herein, as the Federal Circuit has stated, “the PTO’s allowance
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of such prior registrations does not bind the Board or this court.” In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). It is well settled that
each case must be decided on its own facts, based on the particular mark, the
particular goods or services, and the particular record in each application.
Accordingly, there is “little persuasive value in the registrations” applicant has
submitted. Id. Nor do these third-party registrations establish that there is an Office
practice holding such marks are generally registrable. See In re First Draft, Inc., 76
USPQ2d 1183, 1188 (TTAB 2005) (“[P]roof that various examining attorneys have
registered a particular type of mark in the past does not establish that there is an
Office practice holding such marks are generally registrable.”).
7. If SMART KEYBOARD Were Generic, It Would Be In Dictionaries
Applicant argues that Applicant argues that “[i]f SMART KEYBOARD were
commonly used as a generic term, then one would expect the phrase to appear in
major online reference databases such as Wikipedia and The Free Dictionary, which
contain literally millions of definitions and draw billions of visitors.”140 Applicant
asserts that “both of [those] sites include definitions of ‘smartphone’ and
‘smartwatch’, but neither offers a definition of “smart keyboard” – each lists the
generic as “computer keyboard.”141 Applicant further asserts that “[t]he same is true
of the USPTO Trademark ID Manual and the Nice Classification. In contrast, a

140 20 TTABVUE 21 (Applicant’s Brief).
141 Id.
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search for “smart keyboard” on Wikipedia yields a reference to Apple’s iPad Pro
accessory.”142
However, as the Examining Attorney points out, “the fact that a word or term is
not found in the dictionary is not controlling on the question of registrability.”143 See,
e.g., In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, *31 (TTAB 2019) (“The
presence or absence of ‘Algae Wafers’ in dictionaries is not controlling on the question
of whether a term is generic); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581,
1603 (TTAB 2014) (presence of absence of a term in dictionaries not controlling on
question of whether term is generic); In re Dairimetics, Ltd., 169 USPQ 572, 573
(TTAB 1971) (ROSE MILK refused registration on the Supplemental Register even
though there was no dictionary definition of ROSE MILK). Cf. Gould Paper Corp., 5
USPQ2d at 1112 (SCREENWIPE found to be generic term based on dictionary
definitions of the individual terms “Screen” and “Wipe” and the applicant’s own
description of the product on its specimen).
Nor is it controlling that a word or term is not listed in the USPTO’s ID Manual.
“The manual’s ‘listing is not exhaustive’ and the Office acknowledges that, ‘No listing
could include all possible identifications for the multitude of products and services for
which marks may be registered.’” In re Paper Doll Promotions, Inc. 84 USPQ2d 1660
(TTAB 2007) (citing TMEP § 1402.04). “Therefore, a primary use of the ID Manual’s
listings, in addition to indicating precise identifications that will be accepted, is to

142 Id.
143 23 TTABVUE 22 (Examining Attorney’s Brief).
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indicate by analogy and example the kinds of identifications that will be acceptable
for products and services not covered by the existing listings.” TMEP § 1402.04 (Oct.
2018).144
8. “[Applicant’s] Evidence Refutes Genericness”145
Applicant provides a substantial amount of evidence in support of its argument
that “the public recognizes SMART KEYBOARD as its trademark for the identified
goods.” According to Applicant, this evidence shows the following (internal citations
omitted):
• [Applicant’s] iPad device has been … remarkably innovative and
successful … with sales of more than 130 million units since [it] was
introduced in 2015.146

• … SMART KEYBOARD is used to identify an accessory for [Applicant’s]
iPad device.147

• [Applicant’s] SMART KEYBOARD product has received extensive
media attention since it first hit the market.148

• [Applicant] has heavily promoted the SMART KEYBOARD device,

144 As to the Wikipedia evidence, although it is admissible, “[t]here are inherent problems
regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website
that permits anyone [including Applicant] to edit the entries. … In fact, the “About
Wikipedia” section of wikipedia.org warns users that articles can be edited by anyone with
access to the Internet. That section further explains that editors do not need any specialized
qualifications to contribute. As a result, entries, especially newer entries and recent edits,
may contain significant misinformation, false or debatable information, “unencyclopedic”
content, unexpected oversights and omissions, vandalism, or unchecked information that
requires removal. At any given time an article may be in the middle of an edit or controversial
rewrite.” In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007).
145 Id. at 19.
146 August 6, 2018 Response to Office Action, TSDR 21-72 (Exhibit A).
147 May 16, 2017 Request for Reconsideration, TSDR 21-22 (Exhibit A).
148 Id. at 25-48 (Exhibits C-D).
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including on its website and in high-profile television commercials.149

• The SMART KEYBOARD device is sold through major national
retailers, including [Applicant’s] own retail stores and website and
chains such as Best Buy, Target, and Staples, and ranks as one of the
top-selling products in the case/cover/keyboard folio category.150

• … SMART KEYBOARD … is part of a family of SMART-formative
marks that [Applicant] uses for closely related iPad accessories, and
consumers encounter the SMART KEYBOARD product in the
marketplace together with the other SMART products for iPad
accessories. [Applicant] previously made of record its own Principal
Register registrations of SMART COVER and SMART CASE (for similar
iPad accessories) and of SMART CONNECTOR (for the interface
between the Smart Keyboard and the iPad Pro).151

• All of the top hits in a Google search for “smart keyboard” are references
to [Applicant’s] product, and searches for the hashtag #smartkeyboard
on social media sites almost exclusively retrieve references to
[Applicant].152

• Major electronics retailers including BestBuy, Amazon, CDW, and
Staples do not use the phrase “smart keyboard” as a generic for a
category of keyboard.153

• A search for “Smart Keyboard” on the sites of [Applicant’s] competitors
like Lenovo and HP yielded no results, indicating that Apple’s
competitors do not use the term to refer to their own goods.154

In response to Applicant’s suggestion that the success of its iPad device is evidence
that SMART KEYBOARD is not generic, the Examining Attorney asserts such

149 Id. at 49-57 (Exhibits E-G). The evidence of high-profile television commercials appears to
be one video on Applicant’s YouTube.com page. Id. at 57 (Exhibit G).
150 October 4, 2016 Response to Office Action, TSDR 70-72 (Exhibit F).
151 Id. at 9-15 (Exhibit A).
152 May 16, 2017 Request for Reconsideration, TSDR 63-66 (Exhibit I).
153 August 6, 2018 Request for Reconsideration, TSDR 104-111 (Exhibit E).
154 Id. at 112-114. (Exhibit F).
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evidence “is immaterial for genericness purposes, and is speculative in nature as it
focuses on consumer perception of a different mark for different goods than those
subject to this application. Applicant has never explained how its ‘IPAD’ mark on its
tablets impacts the way consumers view and understand “SMART KEYBOARD.”155
The Examining Attorney refers to the advertising and marketing evidence as
“Applicant’s Market Saturation Argument,” which he argues “is not persuasive as it
is axiomatic that generic terms cannot be transformed into non-generic ones
saturating the marketplace with advertising.”156 The Examining Attorney also
argues that Applicant’s reference to a “‘SMART’ family of marks” is “not probative for
genericness purposes.”157
There seems little doubt from the evidence, or in common knowledge, that
Applicant is a market leader in the field of computers, tablets, smartphones, and
related goods and accessories; that Applicant has the apparent ability to dominate
the market with its products from the moment it launches such products through
advertising and promotion; that nationally recognized publications are likely eager
to review each such product launches; and that Applicant’s product at issue here
enjoys success, either through Applicant directly and/or through major retailers. Nor
do we doubt that, due to the foregoing conditions and Applicant’s market dominance,

155 23 TTABVUE 21 (Examining Attorney’s Brief).
156 Id. at 20.
157 Id. at 23. Applicant, in reply, clarifies that the evidence relating to the success of its iPad
“simply notes that hundreds of millions of people have iPads, and many of them will
inevitably look for accessories on Applicant’s website, where they will encounter the SMART
family of accessories – including the SMART KEYBOARD device. 24 TTABVUE 10 n. 2
(Applicant’s Brief).
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that millions of people may have been exposed to Applicant’s goods, including the
goods at issue here.
However, successful marketing campaigns, what the Examining Attorney refers
to as “market saturation[s],” do not transform a generic term into a mark. See, e.g.,
In re Log Cabin Homes Ltd., 52 USPQ2d 1206, 1211 (TTAB 1999) (expenditures of
$4,000,000 per year “simply insufficient to demonstrate the “log cabin homes” has
come to be associated with services emanating from applicant.”). Indeed, no amount
of evidence can transform a generic term into a registrable trademark. See In re Half
Price Books, Records, Magazines, Inc., 225 USPQ 219, 222 (TTAB 1984). See also
Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281 (7th Cir.
1977).
Notably, some of the media attention of Applicant’s goods which Applicant
highlights seems to refer to Applicant’s goods generically, such as by highlighting the
wording in quotes or referred to generically, for example:
o Typing on the accessory keyboard: A good but not perfect
experience. [Applicant’s] fold-away “Smart Keyboard” accessory, which
is made of a custom woven fabric and also serves as a cover for iPad Pro,
magnetically attaches to the tablet…. (usatoday.com) (emphasis in
original;158

o The iPad Pro can have a “smart keyboard” attached to it thanks to
magnets in the side of the device. (newsday.com)159

o [Applicant] unveiled the new iPad Pro complete with a Smart Keyboard
at an event on September 9, 2015. (nydailynews.com)160

158 May 16, 2916 Request for Reconsideration, TSDR 30.
159 Id. at 38.
160
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o For many buyers, picking which iPad Pro you want is just the start.
What sets it apart from its predecessor are the new “Smart Keyboard”
and the stylus – which [Applicant] calls the Pencil.” Without them, the
iPad Pro is just a tablet. (computerworld.com)161

We are also unmoved by Applicant’s evidence showing that the “top hits” on
Google or other social media would list Applicant’s product. Given Applicant’s
marketplace dominance, it may well be that Applicant’s SMART KEYBOARD is the
most well-known technologically advanced keyboard on the market, but that does not
speak to the issue of what the public understands a “smart keyboard” to represent. It
is fairly common knowledge that one can take steps to manipulate listings on Google,
either through paid advertising or other methods, so as to appear higher up in search
results. But that does not mean consumers are not otherwise exposed to the term
“smart keyboard,” as we have seen through the evidence.
Nor do we find compelling that “major electronic retailers including BestBuy,
Amazon, CDW, and Staples do not use the phrase ‘smart keyboard’ as a generic for a
category of keyboard.” If SMART KEYBOARD is generic for the genus of
technologically advanced keyboards, it would make no sense to list that as a category
on such retailer’s websites, since that term would encompass most of the categories
of keyboards listed on those websites, such as the ergonomic, gaming, specialty, and
wireless & Bluetooth, categories listed on BestBuy.com. The categories on those
retailers’ websites allow one to narrow smart keyboards by feature.

161 Id. at 47.
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Applicant also asserted that searching the term “smart keyboard” on competitor
websites “like Lenova and HP yielded no results” (providing searches for just those
two companies). Due to its ubiquitous presence, Applicant may not consider smaller
“smart keyboard” providers such as OneBoard, Satechi, Viboton, Belkin, Logitech or
Samsung in evidence here, to be competitors, but they are. Notwithstanding, as
stated earlier, a term may be found generic if the relevant public would understand
it to have such significance, even if it is not used by others in that manner.
1800Mattress.com, 92 USPQ2d at 1685.
Finally, Applicant relies on Merrill Lynch, where the record, like here, was
voluminous, and included use of the term CASH MANAGEMENT ACCOUNT used
in various financial publications following Merrill Lynch’s introduction of its financial
system. Merrill Lynch, 4 USPQ2d at 1143. The Court there found that the evidence
“showed recognition in a substantial number of publications that the source of the
CASH MANAGEMENT ACCOUNT was [Merrill Lynch]” and, thus, held that such
an evidentiary showing does not make CASH MANAGEMENT ACCOUNT generic.
Id. at 1143-44.
Applicant’s response in this case to the Examining Attorney’s evidentiary showing
is fairly impressive, as was the applicant’s in Merrill Lynch. However, unlike the
record in Merrill Lynch, in this appeal, we have unrebutted and unexplained generic
use of the term SMART KEYBOARD or other more specific wording (e.g, smart
wireless keyboard), both before and subsequent to Applicant’s adoption of that term
as its trademark, by no less than ten other companies (e.g., Always Innovating, Das,
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OneBoard, Samsung, Belkin, Satchi, ONHI, Logitech, Viboton, Nums, Zagg Rugged,
and Raydem) to describe their products; numerous reviews of technologically
advanced third-party keyboards described as “smart keyboards,” many of which
include references or comparisons to Applicant’s product; scores of articles and
publications discussing existing or anticipated technologically advanced keyboards
as “smart keyboards”; and more than a dozen patents that use “smart keyboard” as a
term of art to describe a variety of technologically advanced functioning keyboards.
Thus, numerous keyboard users, other than Applicant’s customers encounter SMART
KEYBOARD used in a generic manner.162
The Federal Circuit has “made it clear that the way an applicant uses an alleged
mark …, or the goods or services in connection with which it uses the alleged mark,
in promotional materials or packaging, is relevant to whether consumers will perceive
the mark as an indicator of source or instead as descriptive or generic.” Empire Tech.
Dev. LLC, 123 USPQ2d at 1549 (quoting ActiveVideo Networks, Inc. 111 USPQ2d
1581, 1590 n.22 (citations omitted)); see also Gould Paper Corp., 5 USPQ2d at 1112.
Perhaps the most compelling evidence in this case is the way Applicant itself uses
SMART KEYBOARD, as in the below repeated example, showing Applicant’s touting
of the SMART KEYBOARD as being a technologically advanced keyboard:

162 Notably, two of the seven reviews of Applicant’s product that Applicant provided in
evidence appear to use “smart keyboard” generically: “Recommend this over Logi Smart
Keyboard[.] I purchased this Smart Keyboard and the one made by Logitech. I prefer this
one – more “pro” feel and trust that it’ll protect the screen” (April 6, 2017); and “… no issue
transitioning from a Bluetooth keyboard to this Smart Keyboard with regards to
key size (July 27, 2016) . May 16, 2017 Request for Reconsideration, TSDR 84 (emphasis in
original).
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163

V. Conclusion
As noted by Professor McCarthy, “[t]here is usually no one, single and exclusive
generic name for a product. Any product may have many generic designations. Any
one of those is incapable of trademark significance.” 2 J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12:9 (5th ed. 2020). After
carefully considering all of the arguments and evidence of record, we find that the
evidence including dictionaries, third-party Internet webpages and publications in
the nature of articles, reviews, and retail promotions, and a variety of patents and
patent applications support a finding that purchasers and prospective purchasers
understand the term SMART KEYBOARD as referring to technologically advanced

163 May 16, 2017 Request for Reconsideration, TSDR 50.
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keyboards, the genus of goods that includes Applicant’s goods identified as an
“accessory for a handheld mobile digital device, namely, a protective and decorative
cover for a tablet computer that functions as a computer stand and incorporates a
keyboard,” a subcategory of such genus.164 Hence, we find that SMART KEYBOARD
is generic for those goods and is therefore incapable of registration on the
Supplemental Register.
Decision: The refusal to register is affirmed.

164 Moreover, “a term can be generic for a genus of goods or services if the relevant public …
understands the term to refer to a key aspect of that genus.” Royal Crown Co. v. Coca-Cola
Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (quoting Cordua Rests., 118
USPQ2d at 1637. “[A] term is generic if the relevant public understands the term to refer to
part of the claimed genus of goods or services, even if the public does not understand the
term to refer to the broad genus as a whole.” Id. (citing Cordua Rests., 188 USPQ2d at 1638
(emphasis added). Thus, even if we had construed the genus at issue in this case to the
description of goods set forth in the application, which Applicant refers to as an accessory
that “combines a tablet keyboard, cover, and stand into a single unit,” we still find
genericness, since purchasers and prospective purchasers will understand SMART
KEYBOARD as referring to a key aspect of the goods.