DLI Engineering Corp.

Trademark Trial and Appeal Board

Sep 12, 2001

No. 75725582 (T.T.A.B. Sep. 12, 2001)

9/12/01

Paper No. 9
EJS

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re DLI Engineering Corporation
________

Serial No. 75/725,582
_______

Donald L. Otto of Renner, Otto, Boisselle & Sklar, LLP for
DLI Engineering Corporation

Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney)
_______

Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

DLI Engineering Corporation, dba PREDICT/DLI, has
applied to register SMARTMACHINE TECHNOLOGIES for “computer
software and hardware for predicting and communicating
maintenance needs for industrial machinery.”1 Applicant has
offered a disclaimer of SMART MACHINE which has not been
accepted by the Trademark Examining Attorney. Instead, the

1 Application Serial No. 75.725,582, filed July 8, 1999, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/725,582
2
Examining Attorney has refused registration pursuant to
Section 2(e)(1) of the Trademark Act on the ground that
applicant’s mark is merely descriptive of its identified
goods. Registration has also been refused pursuant to
Section 2(d) of the Act on the ground that applicant’s mark
so resembles the mark SMART MACHINES, (with the word SMART
disclaimed), previously registered for “computer programs
and programs [sic] manuals all sold as a unit”2 that, if
used on applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed appeal briefs, but an oral
hearing was not requested.3
We turn first to a consideration of the Section
2(e)(1) refusal. It is the Examining Attorney’s position
that SMARTMACHINE TECHNOLOGIES is merely descriptive of
applicant’s computer software and hardware because it “is
descriptive of a feature, function, use and purpose of the
applicant’s goods; the applicant’s computer hardware and

2 Registration No. 1,468,041, issued December 8, 1987; Section 8
affidavit accepted; Section 15 affidavit received.
3 In her appeal brief the Examining Attorney notes certain other
applications assertedly filed by applicant. These applications
were never made of record, nor even alluded to during the
examination of the application, and the reference to them in the
Examining Attorney’s brief is manifestly untimely. See Trademark
Rule 2.142(d).

Ser. No. 75/725,582
3
software use technology (the application of science to
industrial or commercial objectives) to predict and
communicate maintenance needs for smart machines in
industry.” Brief, p. 8. In support of this position the
Examining Attorney has made of record a dictionary
definition of “technology” (a. “the application of science,
especially to industrial or commercial objects”; b. the
scientific method and material used to achieve a commercial
or industrial objective”);4 excerpts from the NEXIS database
showing the term “software” used in connection with “smart
machine(s)”;5 and 19 third-party registrations 6 in which
the word TECHNOLOGY or TECHNOLOGIES has been disclaimed.7
The Examining Attorney has also requested in her appeal
brief that we take judicial notice of the following

4 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
5 For example, “software could transform today’s dumb appliances
into smart machines” (“U.S. News & World Report,” December 1,
1997); “The most critical mission for these smart machines will
be manning the Star Wars shield. But writing the millions of
lines of software that will tell them when to press the button is
no easy task.” (“The Nation,” November 28, 1988).
6 The Examining Attorney indicates that 18 registrations were
made of record, but our review of the file finds 19
registrations.
7 See, for example, Reg. No. 2,352,288 for NOVALIS TECHNOLOGIES
and design for computer software, namely, modules to manage and
analyze land records, namely, information relating to land title,
property evaluation, mapping and land-use planning.
Ser. No. 75/725,582
4
dictionary definition for “smart machine,” which request we
hereby grant:8
Any device which uses a microprocessor
to evaluate the input and make
decisions about which path to take.
For example, a smart car headlight can
be designed to automatically monitor
the level of external light. When it
becomes sufficiently dark outside, the
microprocessor switches on the driving
lights, and continues to monitor the
environment in order to switch the
light off when the sun rises
(conditional on the ignition system
being turned on).9

The Examining Attorney also points out that in the
application as originally filed applicant identified its
goods as “computer software, hardware and/or technology for
predicting and communicating maintenance needs for
industrial machinery.” However, because the identification
has been amended, and now contains no reference to
“technology,” the original identification is of no moment.
We must determine the issue of descriptiveness with respect
to the goods as currently in the identification, not with
respect to items that have been deleted from the
identification.

8 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). We also point out that applicant has
not objected to the Examining Attorney’s request.
9 Prentice Hall’s Illustrated Dictionary of Computing, 3d ed. ©
1998).
Ser. No. 75/725,582
5
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Act, if it
immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods with which it is
used. A mark is suggestive, and therefore registrable, if
imagination, thought, or perception is required to reach a
conclusion on the nature of the goods. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It has been
recognized that there is but a thin line of distinction
between a suggestive and a merely descriptive term, and it
is often difficult to determine when a term moves from the
realm of suggestiveness into the sphere of impermissible
descriptiveness. In re Recovery, Inc., 196 USPQ 830 (TTAB
1977), and cases cited therein.
There is no doubt that SMARTMACHINE is a descriptive
term as applied to applicant’s goods. Applicant has
acknowledged this by offering a disclaimer of SMART
MACHINE. However, the question before us is whether
SMARTMACHINE TECHNOLOGIES as a whole is merely descriptive
of computer software and hardware for predicting and
communicating maintenance needs for industrial machinery.
The word TECHNOLOGIES, although it has been disclaimed in
many third-party registrations, is an amorphous term. The
dictionary definition submitted by applicant—the
Ser. No. 75/725,582
6
application of science, especially to industrial or
commercial objectives—is rather vague, and does not clearly
show that the term is descriptive. See In re Hutchinson
Technology, 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir.
1988) (“the fact that the term ‘technology’ is used in
connection with computer products does not mean that the
term is descriptive of them”). When TECHNOLOGIES is
combined with SMARTMACHINE in the mark SMARTMACHINE
TECHNOLOGIES, we are hard-pressed to articulate how this
mark immediately and directly conveys knowledge of the
characteristics of the goods with which it is used.
Although “technology” is involved in computer software and
hardware, we are not persuaded on this record that
consumers of applicant’s computer software and hardware
will immediately understand, upon seeing the mark used in
connection with goods, a function, purpose or use of the
goods. In the context of the mark, TECHNOLOGIES has no
more definite meaning than “know-how.”
As stated previously, the courts have long recognized
that it is frequently difficult to determine when a mark is
suggestive, and when it is merely descriptive. See In re
Gyulay, supra. Accordingly, it is a well-established
practice that, where reasonable people may differ, doubt
Ser. No. 75/725,582
7
must be resolved in the applicant’s favor. In re The
Gracious Lady Service, Inc., 175 USPQ 380 (TTAB 1972).
Therefore, we reverse the refusal of registration on
the ground of mere descriptiveness.
We think it appropriate to comment on the concurring
opinion’s view that SMARTMACHINE TECHNOLOGIES is merely
descriptive. Much of that view appears to be based on
material which is not in the record. For example, the
concurring opinion refers to applicant’s web page, but no
material from that web page, or even the url address, is in
this record. The concurring opinion also states, in the
first paragraph, the following:
Applicant has developed diagnostic
systems that can be customized for use
by original equipment manufacturers
that want to take advantage of state-
of-the-art, predictive maintenance
technologies. Sensors integrated into
the machinery can detect, for example,
changes in vibration, oil and wear
particles. Applicant touts the fact
that when these advanced diagnostics
are combined with expert systems, the
resulting smart machine can communicate
directly with on-site managers, expert
mechanics, or even the machine’s vendor
at a remote location.

However, we can find no such evidence in the record. The
application is based on an intent-to-use the mark, and does
not even include specimens. Applicant has not described
its computer software and hardware, except as indicated in
Ser. No. 75/725,582
8
its identification of goods, and to say that applicant’s
identified computer software and hardware are integrated to
predict and communicate maintenance needs for industrial
machinery. There is no indication in this record that
applicant has developed diagnostic systems that can be
customized for use by original equipment manufacturers, or
that sensors are integrated into machinery which then
detects changes in vibration, oil and wear particles. Nor
is there anything in this record which shows that applicant
touts anything about its products.
Our job as Trademark Trial and Appeal Board
Administrative Trademark Judges is to consider the record
created by the applicant and the Examining Attorney when we
rule on the propriety of a refusal. It is not our job to
act as Super-Examiners. We might well have come to a
different conclusion on the issue of mere descriptiveness
on a different record. However, it is the record before us
on which our determination must be based, and on the actual
record we find that the Office has not met its burden of
proving that applicant’s mark is merely descriptive of its
goods.
This brings us to the second basis for refusal, that
applicant’s mark is likely to cause confusion with SMART
MACHINES for computer programs and program manuals all sold
Ser. No. 75/725,582
9
as a unit.10 As noted in numerous decisions, a
determination under Section 2(d) is based on an analysis of
all of the facts in evidence which are relevant to the
factors bearing on the issue of whether there is a
likelihood of confusion, as set forth in In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
Turning first to the goods, we find that they are, in
part, legally identical. The registrant’s computer
programs, being unlimited as to their nature or purpose,
must be deemed to encompass the more specifically
identified computer software in applicant’s application.
Although applicant states that its computer software and
hardware “are integrated to predict and communicate
maintenance needs for industrial machinery,” brief, p. 4,
the issue of likelihood of confusion must be determined on
the basis of the goods are they are set forth in the

10 As noted at the beginning of our opinion, the identification
in the cited registration contains a typographical error. We
will, in our discussion, refer to the relevant goods as “program
manuals,” rather than “programs manuals.”

Ser. No. 75/725,582
10
application. In re Dixie Restaurants, Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997). See also, Canadian
Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). Because applicant’s and the
registrant’s computer programs are legally identical, they
must be deemed to travel in the same channels of trade and
be sold to the same classes of consumers.
This brings us to a consideration of the marks,
keeping in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Applicant’s mark is SMARTMACHINE TECHNOLOGIES, and
the cited mark is SMART MACHINES. Obviously, applicant’s
mark begins with the same words as the registered mark, the
only difference being that applicant’s mark depicts the
words without any space between them, and uses the singular
form of MACHINE. However, consumers will still readily
recognize SMARTMACHINE as being the telescoped words SMART
MACHINE, and the absence of a space or the “S” in MACHINE
certainly does not distinguish the marks. Nor does the
additional word TECHNOLOGIES in applicant’s mark. Although
we have declined to find that applicant’s mark
Ser. No. 75/725,582
11
SMARTMARCHINE TECHNOLOGIES is merely descriptive, the
record shows that the word TECHNOLOGIES is of little
source-identifying significance. In particular, the
numerous third-party registrations which contain the word
TECHNOLOGY or TECHNOLOGIES, and are for computer programs
or computer software, show that TECHNOLOGIES is, at the
very least, a highly suggestive term for such goods. As a
result, consumers are not likely to look to the word
TECHNOLOGIES to distinguish applicant’s mark from the
registrant’s; they are far more likely to regard
SMARTMACHINE TECHNOLIGIES, used on computer software for
predicting and communicating maintenance needs for
industrial machinery, as a variation of the mark SMART
MACHINES used on the same goods.
We recognize that the only term in applicant’s mark
which is common to the cited mark is SMARTMACHINE, and this
word has been shown to be, and has been acknowledged by
applicant to be, descriptive of applicant’s goods. We also
recognize that the word SMART in the cited mark has been
disclaimed. Although generally descriptive terms are given
less weight when marks are compared in their entireties, in
this case, because of the (at least) highly suggestive
nature of the non-disclaimed words, we are not persuaded
that MACHINE is the dominant part of the cited mark and
Ser. No. 75/725,582
12
TECHNOLOGIES is the dominant part of applicant’s mark, such
that consumers will pay greater attention to these words in
the respective marks. As the Examining Attorney has
pointed out, when the marks are both used in connection
with computer programs, “it is illogical to argue that
MACHINES is weak in relation to applicant’s mark and
dominant in relation to the cited mark.” Brief, p. 5.
Further, although the words SMART MACHINE and SMART have
been disclaimed in the respective marks, they still remain
as part of the marks, and must be considered in determining
whether the marks are confusingly similar. Industria
Espanola De Perlas Imitacion, S.A. v. National Silver
Company, 459 F.2d 1049, 173 USPQ 796 (CCPA 1972).
Purchasers are not aware of disclaimers which reside only
in the records of the Patent and Trademark Office.
Accordingly, because SMARTMACHINE is the first element
of applicant’s mark, and therefore will be immediately
noticed, because this term is virtually identical to the
cited mark, and because the additional word TECHNOLOGIES in
applicant’s mark is so highly suggestive that consumers are
not likely to regard it as a strong indicator of source, we
find that applicant’s mark SMARTMACHINE TECHNOLOGIES is
likely, when applied to goods which are in part identical
to the goods identified in the cited registration, to cause
Ser. No. 75/725,582
13
confusion with SMART MACHINES for computer programs and
program manuals all sold as a unit.
Decision: The refusal of registration pursuant to
Section 2(d) is affirmed; the refusal of registration
pursuant to Section 2(e)(1) is reversed. Applicant has
offered a disclaimer of the descriptive term SMART MACHINE
which was rejected by the Examining Attorney solely because
of the Examining Attorney’s position that the mark as a
whole was merely descriptive. In view of our decision
herein reversing that refusal of registration, the
disclaimer will be entered into the application.

- o O o -
Bucher, Administrative Trademark Judge, concurring in part
and dissenting in part:
We should affirm both of these refusals to register.
This record demonstrates that applicant specializes in
integrating “smart machine technologies” into a wide
variety of industrial machines. Applicant has developed
diagnostic systems that can be customized for use by
original equipment manufacturers that want to take
advantage of state-of-the-art, predictive maintenance
technologies. Sensors integrated into the machinery can
detect, for example, changes in vibration, oil and wear
Ser. No. 75/725,582
14
particles. Applicant touts the fact that when these
advanced diagnostics are combined with expert systems, the
resulting smart machine can communicate directly with on-
site managers, expert mechanics, or even the machine’s
vendor at a remote location. It is appropriate then, that
the dictionary definition of “technology” placed in the
record by the Trademark Examining Attorney specifically
highlights this ‘application of science to industrial
objectives.’
In a manner entirely consistent with the dictionary
entry, applicant’s own Web page is most instructive on the
precise question before us: “SmartMachines technology can
be integrated directly into your machines or sold as a
warranty option.”11 The term “technology” appears in all

11 Note, this usage also shows the mark as “SmartMachines”
(plural). See “The Smart Machine” by Alan Friedman, at
http://www.predict-dli.com/frameset.html .
(Particularly in light of the comments made by the majority
concerning the absence of evidence in this case, supra, pp. 7 and
8, I do trust that in the future, Trademark Examining Attorneys
will more regularly include with the final refusal printed copies
of relevant pages of applicant’s own Web site (and those of
competitors), with citation-like references in the Office action
to the specific URL’s. This evidence is especially useful when
demonstrating descriptiveness or genericness, uncovering the
details of applicant’s business niche, channels of trade and the
specific nature of applicant’s goods or services, etc. In fact,
when searching out evidence relevant to many issues that arise
under the Lanham Act, there is a plethora of good information
available on the Internet that could and should be used to
supplement our traditional, reliable sources of published
materials from, for example, the LEXIS®/NEXIS® database.)

Ser. No. 75/725,582
15
lower case letters befitting this generic term.
Furthermore, in addition to this quoted context, the term
“technology” appears half-a-dozen times within the same Web
page, in the ordinary, dictionary connotation of this noun.
Not surprisingly then, applicant chose to use the phrase
“ … hardware and/or technology … ” in its original
identification of goods herein.
Moreover, if one reviews composite marks used in
connection with similar goods in registrations already
issued on the federal trademark register, it is manifestly
clear that the term “technologies” (or just “technology”)
has no value as a source indicator as applied to computer
software and/or hardware.
Applicant has conceded the descriptiveness of “Smart
Machine,” but claims there is something new in its
composite mark. However, contrary to applicant’s
assertions, when applying the test for descriptiveness laid
down in the majority opinion, no combination of these words
(e.g., “smart machine technology,” “smart machines
technology,” “smart machine technologies,” etc.) requires
any cogitation or contemplation as to what is involved.
We are considering use of this matter by an enterprise
that touts its advances in friction, lubrication, and wear
technologies, employs the expression “SmartMachines
Ser. No. 75/725,582
16
technology” in its own Web page, and earlier used the
phrase “hardware and/or technology” in its original
identification of goods in this very application. Yet, the
majority finds that applicant’s customers and competitors,
upon first seeing the term “smartmachine technologies,”
will find the word “technologies” to be so “vague” and
“amorphous” in the context of these particular, high-
technology goods, that this composite is inherently
distinctive.
In conclusion, I am satisfied from this record that
the examining corps has been fairly consistent in finding
the words “technology” and “technologies” to be merely
descriptive of computer hardware and software. Despite the
majority’s holding herein, I trust that Trademark Examining
Attorneys will continue with the long-standing Office
practice of holding these terms to be merely descriptive in
similar cases. This practice is consistent with logic and
common sense, and should certainly reflect the law. I
question whether dicta from a surname case should be
expanded to decide a case like this one under Section
2(e)(1) of the Act. Cf. In re Hutchinson Technology,
supra.