GAI-Tronics Corp.

Trademark Trial and Appeal Board

Mar 7, 2001

No. 75257553 (T.T.A.B. Mar. 7, 2001)

03/07/01 Paper No. 17
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re GAI-Tronics Corporation
___________
Serial Nos. 75/257,552 and 75.257,553
___________
Laura Genovese Miller and Bonnie G. Klein of Woodcock,
Washburn, Kurtz, Mackiewicz & Norris for applicant.
Lisa W. Rosaya, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
____________
Before Hohein, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
GAI-Tronics Corporation has filed two trademark
applications to register SMARTSERIES and the mark shown
below, both for “micro-processor-based communications
system, communications management system, and emergency
notification system, for use in industrial environments and
featuring a control panel; telephone handsets; telephone
receivers; telephone interfaces; radio interfaces;
supervised input/output devices; software; amplifiers;
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial Nos. 75/257,552 and 75/257,553
2
alarms; microphones; loudspeakers; receivers; strobe lights;
and printers.”1
In application Serial No. 75/257,522, for the design
mark, the Trademark Examining Attorney has issued a final
refusal requiring a disclaimer of SMARTSERIES, under Section
6 of the Trademark Act, 15 U.S.C. 1056, on the ground that
applicant’s mark is merely descriptive of its goods, under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1).
In application Serial No. 75/257,553, for the word mark, the
Examining Attorney has issued a final refusal of
registration, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive of its goods.

1 Serial Nos. 75/257,553 and 75/257,552, respectively. Both
applications are in International Class 9, were filed March 14, 1997,
and are based on use of the marks in commerce, alleging first use and
use in commerce of both marks as of January 13, 1997. Application
Serial No. 75/257,552, for the design mark, includes a statement that
“the drawing consists of stylized, back-to-back letter ‘S’s’ and the
word SMARTSERIES within a rectangular shape.”
Serial Nos. 75/257,552 and 75/257,553
3
Applicant has appealed the refusal in each application.
Applicant and the Examining Attorney have filed briefs in
both cases, but oral hearings were not requested.2
Because the word mark SMARTSERIES and the term
SMARTSERIES in the design mark are identical and the facts
and legal issues are essentially the same in both cases, we
consider these two cases together and issue a single
opinion.
The question in both cases is whether SMARTSERIES is
merely descriptive in connection with the identified goods.
The additional question with respect to the design mark is,
if we find SMARTSERIES to be merely descriptive, is the mark
unitary so that a disclaimer is not appropriate.
The Examining Attorney contends that “the two terms
which make up the applicant’s mark – SMART and SERIES – are
not distinct in that they merely describe a characteristic
or feature of the applicant’s goods, namely, that
applicant’s communications products contain microprocessors
which process information – or ‘smart’ technology – and
these products are part of a larger group or line (or
series) of similar products.” She argues that the term
SMARTSERIES consists of two words that, considered both
individually and together, are merely descriptive of

2 Applicant submitted evidence with its reply brief. Such evidence is
untimely and has not been considered. Trademark Rule 2.142(d).
Serial Nos. 75/257,552 and 75/257,553
4
features of the goods; and that, as applied to the goods,
the combined term does not evoke a unique commercial
impression or provide an incongruous meaning.
Additionally, with respect to the design mark, the
Examining Attorney contends that the mark is not unitary
because the term SMARTSERIES is separate from the “SS”
design, and the black rectangle is merely a background
carrier and does not serve to unify the mark. Thus, she
argues, a disclaimer of SMARTSERIES is appropriate.
Applicant contends that, while the Examining Attorney
relied on evidence of “the use of the term ‘smart’ in the
computer industry to refer to items containing a
microprocessor … applicant supplies communications products,
not computer products”; and that, “although ‘smart’ and
‘series’ are arguably ‘common words,’” its mark consists of
“the novel combination of words ‘smart’ and ‘series,’ two
words whose joint impact is incongruous as to the goods
associated with this mark.”
Applicant and the Examining Attorney submitted
dictionary definitions. Of these entries, we note that
“smart” is defined as “synonym for intelligent; in relation
to software or hardware, capable of processing information,
typically beyond what is currently expected,”3 and as
“computer science – having the capacity to perform

3 Microsoft Press Computer Dictionary (2nd ed. 1994).
Serial Nos. 75/257,552 and 75/257,553
5
operations independently of the computer.”4 “Series” is
defined as “a number of objects or events arranged or coming
one after the other in succession.”5
We take judicial notice of the following additional
definitions and synonyms:
Series: “A group of objects related by …
configurational characteristics.” Webster’s II
New College Dictionary (1995).
Series: “Set 74.11” “74. Assemblage.” “74.11
set, suit, suite, series, ….” Roget’s
International Thesaurus (3rd ed. 1962).
Smart: “Having some computational ability of its
own[;] smart devices usually contain their own
microprocessor. Computer Dictionary (3rd ed.
1992).
Microprocessor: “Also called a CPU (Central
Processing Unit) – the device within a computer
(or switch or other machine that performs complex
tasks) that controls the transfer of the
individual instructions from one device connected
to its bus … to another …. Some communications
equipment manufacturers actually call a certain
card or portion of the system the CPU.”
Illustrated Telecom Dictionary (1998).
Applicant submitted, inter alia, copies of its
specifications sheets and booklets for its products, one of
which is entitled “SmartSeries™ Intelligent Intra-Plant
Communication and Emergency Notification System.” One
specification sheet states that “[t]he SmartSeries™ Handset
Amplifier is a microprocessor controlled field station that

4 The American Heritage Dictionary of the English Language (3rd ed.
1992).
5 Id.
Serial Nos. 75/257,552 and 75/257,553
6
provides added features over standard industrial
communications equipment.”
The Examining Attorney submitted excerpts of articles
from the LEXIS/NEXIS database that use the word “smart” in
connection with various products containing microprocessors.
Following are several examples:
Like smart cards, iKey includes a microprocessor
and local memory to store digital certificates and
other information. [InternetWeek, March 22,
1999.]
The chargers possess a smart/fast feature that
uses microprocessor technology to charge each
battery assembly within one hour and to detect
when charging is complete. [Battery & EV
Technology, March, 1999.]
The shift to digital-TV technology is driving
broadcasters to build networks of equipment that
include embedded microprocessor-based encoders,
video servers and smart multiplexers with embedded
microprocessor intelligence. [Electronic
Engineering Times, March 1, 1999.]
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used, or intended to be used. In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
Serial Nos. 75/257,552 and 75/257,553
7
single, significant quality, feature, etc. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it
is well-established that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or services
for which registration is sought, the context in which the
mark is used, and the impact that it is likely to make on
the average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
It is clear that the word “smart” is used to describe
various products that contain microprocessors. Applicant’s
identified products contain microprocessors and, as
identified, its systems are “microprocessor-controlled.”
Thus, it is reasonable to conclude that applicant’s products
are “smart,” and that this word merely describes a
significant feature of applicant’s products. See In re
Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994)
[SMARTPROBE held merely descriptive for cryosurgical probes
having electronic or microprocessor components due to
meaning of “smart” as a computer term].
Regarding the term “series,” applicant refers to it as
a “common term.” We agree and, from the definitions and
synonyms of which we have taken notice, we conclude that “a
series” refers to a line of products. In this case,
applicant’s brochure and specifications sheet establish that
Serial Nos. 75/257,552 and 75/257,553
8
its products are a series of products for use in the systems
identified in the application. Because applicant’s products
are microprocessor-based and, thus, are “smart,” it follows
that applicant’s products comprise a “smart series.” There
is nothing about the combination of these two words, as
SMARTSERIES, that is incongruous or creates a meaning
different from the individual meanings of these “common
words.”
We are not persuaded otherwise by applicant’s
arguments. The mere fact that the individual words are
subject to a variety of different meanings does not render
the mark ambiguous because we must consider the meaning in
connection with the identified goods. Nor is the fact that
the dictionary has no entry for the term SMARTSERIES
dispositive. Finally, the LEXIS/NEXIS excerpts submitted by
applicant to show use of the combined term as a trademark or
to show the two words in the same excerpt, but in an
entirely different context, are inapposite.
In the present case, it is our view that, when applied
to applicant’s goods, the term SMARTSERIES immediately
describes, without conjecture or speculation, a significant
feature or function of applicant’s goods, as discussed
herein. Nothing requires the exercise of imagination,
cogitation, mental processing or gathering of further
information in order for purchasers of and prospective
Serial Nos. 75/257,552 and 75/257,553
9
customers for applicant’s services to readily perceive the
merely descriptive significance of the term SMARTSERIES as
it pertains to applicant’s goods.
Finally, we conclude that the design mark in
application Serial No. 75/257,552 is not unitary and,
therefore, disclaimer of the term SMARTSERIES is
appropriate. As the Examining Attorney argued, the term
SMARTSERIES is quite separate from the “SS” design and the
black rectangle serves merely as a background design and
border.
Decision: The refusal in application Serial No.
75/257,553 under Section 2(e)(1) of the Act is affirmed.
The refusal in application Serial No. 75/257,552 based on
the requirement for a disclaimer under Section 6 of the Act
is affirmed.
However, with respect to application Serial No.
75/257,552 for the design mark, this decision will be set
aside, and applicant’s mark will be published for opposition
if applicant submits an appropriate disclaimer of
SMARTSERIES within thirty days from the mailing date of this
decision. See Trademark Rule 2.142(g).