Sharp Kabushiki Kaisha

Trademark Trial and Appeal Board

Jun 13, 2001

No. 75501156 (T.T.A.B. Jun. 13, 2001)

06/13/01
Hearing: Paper No. 17
March 14, 2001 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sharp Kabushiki Kaisha, ata Sharp Corporation
________
Serial No. 75/501,156
_______
Robert W. Adams of Nixon & Vanderhye P.C. for Sharp
Kabushiki Kaisha, ata Sharp Corporation.
LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On June 12, 1998, Sharp Kabushiki Kaisha, ata Sharp
Corporation filed an application to register the mark SMART
PACKAGE on the Principal Register for goods identified, as
amended, as “integrated circuits for use in liquid crystal
display apparatus” in International Class 9.1
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e),
1 Application Serial No. 75/501,156, filed June 12, 1998, based
on applicant’s assertion of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/501156
2
on the basis that, when used on or in connection with
applicant’s goods, the term SMART PACKAGE is merely
descriptive of them.
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs. An oral hearing was held on March 14, 2001.
The Examining Attorney contends that the mark is
comprised of two descriptive terms, the combination of
which does not change the overall descriptiveness of the
mark. The Examining Attorney specifically contends that
applicant’s goods, “integrated circuits,” are essentially
computer chips2; that the word “smart” is a synonym for
intelligent, and in relation to computer hardware and
software, a capability of processing information; and that
the word “package” is descriptive of integrated circuits
because it refers to a type of PCB (printed circuit board)
component which contains a chip and the package serves as
the electrical connection between the chip and the printed
board. Based thereon, the Examining Attorney concludes
2 In order to more fully understand the identified goods, we take
judicial notice of the following Random House Dictionary (2d ed.
1987) definition of “integrated circuit”:
Electronics. a circuit of transistors,
resistors, and capacitors constructed on a
single semiconductor wafer or chip, in
which the components are interconnected to
perform a given function. Abbr.: IC Also
called microcircuit.
Ser. No. 75/501156
3
that applicant’s mark is merely descriptive whether it is
seen as describing either “a smart circuit contained in a
package” or “a smart integrated circuit package, a pre-
assembled unit.” (Brief, p. 12.)
The evidence relied on by the Examining Attorney in
support of the refusal consists of dictionary definitions
of the words “smart,” “package,” and “integrated circuit”3;
several excerpted stories from the Nexis database showing
that the terms “smart” and “package” are commonly used in
relation to integrated circuits and liquid crystal
displays; several third-party registrations wherein the
term “smart” was disclaimed, or the marks were registered
under Section 2(f) or on the Supplemental Register; and the
material submitted by applicant in response to the
Examining Attorney’s requirement for advertisements or
promotional materials for the same types of goods as those
which applicant intends to sell under this mark.
Applicant, on the other hand, argues that the mark
SMART PACKAGE “is a completely arbitrary term that has no
meaning, let alone a generic or merely descriptive meaning,
3 The Examining Attorney’s request that we take judicial notice
of the on-line dictionary definition of the term “package,” as
well as “any other dictionary definitions” included with her
brief, is granted. See University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also, TBMP
§712.01.
Ser. No. 75/501156
4
with respect to integrated circuits used in LCDs” (brief,
p. 4); that the Examining Attorney has not met her burden
of proving “that the combination word mark has any merely
descriptive or generic meaning” (Id.)4; that the mark does
not immediately and only tell potential purchasers what
applicant’s goods are, or their function; that there are
several third-party registrations in which the term “smart”
was not disclaimed; and that the mark is arbitrary or at
least suggestive because it requires imagination, thought
and perception to determine the nature of the goods.
Applicant also specifically contends that the present
refusal is improper in view of the United States Patent and
Trademark Office’s (USPTO) allowance of the two
registrations originally cited, but later withdrawn as a
basis for refusal, by the Examining Attorney.5
The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the term immediately conveys information concerning
4 There is no refusal to register on the basis of genericness.
5 The first Examining Attorney had refused registration under
Section 2(d), citing Registration Nos. 1,964,130 issued January
2, 1996 for the mark SMART PAC and design for “products for
access control, namely an electronic circuitry for powering an
electronic strike over a range of voltages with minimum electric
power demand,” and No. 1,989,083, issued July 23, 1996 for the
mark SMARTPAK for “removable computer data storage modules and
base units.” The refusal to register under Section 2(d) was
withdrawn as to both registrations.
Ser. No. 75/501156
5
a quality, characteristic, function, ingredient, attribute
or feature of the product or service in connection with
which it is used. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture
Associates, 226 USPQ 285 (TTAB 1985); and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). A mark does not
have to describe every quality, feature, function, etc. of
the goods or services in order to be found merely
descriptive; it is sufficient for the purpose if the mark
describes a single significant quality, feature, function,
etc. thereof.
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 term or phrase is being used on or in connection
with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995); and In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991). The question is not whether
someone presented with only the mark could guess what the
goods are. Rather, the question is whether someone who
Ser. No. 75/501156
6
knows what the goods are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
In this case, we agree with the Examining Attorney that
SMART PACKAGE is merely descriptive of the involved goods.
The Examining Attorney submitted the following
dictionary definition of “smart” from the Microsoft Press
Computer Dictionary (2d ed.):
“A synonym for intelligent; in relation
to software or hardware, capable of
processing information, typically
beyond what is currently expected.
Smartness does not imply rationality.”
(Italics in original.)
In addition, we take judicial notice of the following
Random House Dictionary (2d ed. 1987) definitions of
“smart”:
“17. Informal. equipped with, using, or
containing electronic control devices,
as computer systems, microprocessors,
or missiles: a smart phone; a smart
copier. 18. Computers. intelligent.”
(Italics in original.)
Applicant is correct that the Examining Attorney did
not submit any Nexis articles showing use of the term
“SMART PACKAGE”; however, there are numerous excerpted
Nexis articles showing use of “smart” or “smart circuit” or
Ser. No. 75/501156
7
“LCD,” or “integrated circuit package,” examples of which
are shown below (emphasis added):
Headline: Doing the Local Motion [--]
Long-Distance Firms, Start-ups [and]
Cable All Want Piece of for Whom Bell
Tolls
Graphic: ...Joe Lacher, Southern Bell’s
Florida president displays “smart”
circuit pack. “Sun-Sentinel (Fort
Lauderdale),” March 28, 1994;
Headline: Digital dampers; K2 Smart
Shock damping shock
In the variable damping suspension, a
sensor in the shock reads the piston’s
speed and position, then sends the data
back to a smart circuit that transmits
the signal to a piezoelectric actuator
in the valve, flexing it in
milliseconds. “Mechanical Engineering-
CIME,” March 1988;
Headline: 3M’s Big Bets
Microflex circuits—Description: Used in
inkjet printers, hearing aids and
integrated circuit packages...
“Star Tribune (Minneapolis, MN),”
September 13, 1999;
Headline: Digital Imaging for Circuit
Boards
...The difficulty with this checking
system is it does not identify specific
internal problems with integrated
circuit packages on the board.
Specific areas of difficulty had to be
located through a time-consuming and
costly manual process.” “NDT Update,”
September 1999;
Headline: Cadence releases IC Packaging
Tool; SPECTRAQuest from Cadence Design
Systems...
Cadence Design Systems Inc., San Jose,
today is announcing a tool for silicon
Ser. No. 75/501156
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and package optimization of integrated-
circuit (IC) packaging. SPECTRAQuest
interconnect designer for IC packaging,
part of the Cadence Advanced packaging
ensemble expert system, merges
electrical and physical design into an
environment that provides a complete
solution for optimizing IC package
performance.” “Electronic News,”
August 23, 1999;
Headline: Super Lynx to get new cockpit
display
At the heart of the new cockpit will be
active matrix liquid crystal technology
using “smart” integrated display units
capable of displaying self-generated
symbology and video. “Aerospace
Daily,” June 23, 1999;
Headline; Controller Delivers On-Screen
Animation
...access to VRAM, allowing the new IC
to virtually eliminate display screen
distortion. The on-chip I/O register
control logic for the display enhances
flexibility in designing the
microcontroller interface, increases
CPU speed, and reduces the number of
I/O pins necessary for the LCD
controller package. “Display
Development News,” August 1998; and
Headline: Mitsubishi Forklift Trucks
Introduces New Models
...The LCD smart display monitors the
truck’s performance levels and
operational indicators, such as battery
charge indicator, travel speed, truck
hours, drive motor hours and clock.
“Southwest Contractor,” April 1999;
Applicant submitted four pages (consisting of the
front cover, the content page, page 5 showing “TFT LCD
Ser. No. 75/501156
9
Drivers,” and the back page) from its 1999/2000 Integrated
Circuits catalog.6 The “CONTENTS” page lists several
categories of goods, such as “LCD DRIVERS,” “IC PACKAGES,”
“SPECIAL-FUNCTION ICs,” “ASICs,” and “MICROCOMPUTERS.”
Thus, applicant’s own catalog treats integrated circuit
packages as a category.
In this case, “smart” means “intelligent,” and
“capable of processing information beyond what is typically
expected”; and the record clearly shows that “package” is
used to refer to integrated circuits. Thus, the two words
separately have an easily understood meaning in the
integrated circuit industry, and when combined and used on
or in connection with applicant’s goods (“integrated
circuits for use in liquid crystal display apparatus”),
there is no unique or incongruous meaning created. When
the combined words are used in connection with integrated
circuits, they immediately and directly convey that the
goods are smart integrated circuit packages.
The fact that applicant’s goods are integrated
circuits specifically used in liquid crystal displays does
6 This was submitted on March 23, 2000 in response to the
Examining Attorney’s request for advertising or promotional
materials for the same types of goods. Applicant stated that
“Such material showing use of the mark of the present application
are not available. However, enclosed are materials for the same
type of goods that applicant intends to sell under the subject
mark.” March 23, 2000 Request for Reconsideration, p. 7.
Ser. No. 75/501156
10
not negate the descriptiveness of the mark SMART PACKAGE.
The common meanings of the words and what purchasers will
make of them in the context of the goods are pivotal. See
Remington Products Inc. v. North American Philips Corp.,
892 F.2d 1576, 13 USPQ2d 1444 (Fed. Cir. 1990), and the
discussion therein of DeWalt, Inc. v. Magna Power Tool
Corporation, 289 F.2d 656, 129 USPQ 275 (CCPA 1961). To
the extent that the term SMART PACKAGE is used in
connection with “integrated circuits for use in liquid
crystal display apparatus,” it immediately describes,
without conjecture or speculation, a significant
characteristic or feature of those goods, namely, that the
integrated circuit has some type of computational or logic
ability used for operating or controlling either the
integrated circuit itself or the product in which the
integrated circuit is installed. That is, applicant’s use
of the mark SMART PACKAGE would be perceived by consumers
as relating to the logic capability of the integrated
circuits.
In the record now before us, the Examining Attorney
has established a prima facie showing that this mark is
merely descriptive of the identified goods. See In re
Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994)
(SMARTPROBE held merely descriptive of disposable
Ser. No. 75/501156
11
cryosurgical probes, that is involving the term “smart”
with the generic term for the goods).
Applicant has submitted several third-party
registrations, all for marks which include either the word
SMART or PACKAGE. These registrations offer little help in
making a determination of the merits of this appeal. While
uniform treatment under the Trademark Act is certainly a
goal of the USPTO, the Board’s task in this appeal is to
determine, based on the record before us, whether
applicant’s mark is merely descriptive. As often noted by
the Board, each case must be determined on its own set of
facts. We are not privy to the records in the files of the
referenced third-party registrations. See In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001). Certainly, the Board has not established a “per se
rule” that the term SMART is not registrable. Rather,
registrability of a mark must be determined on a case-by-
case basis and in relation to the involved goods or
services. See In re Dos Padres, Inc., 49 USPQ2d 1860 (TTAB
1998).
Applicant’s argument that the record contains no
evidence of third-party use of “SMART PACKAGE” is
unavailing. Even if applicant is the first (and/or only)
entity to use the term SMART PACKAGE in relation to
Ser. No. 75/501156
12
integrated circuits for use in liquid crystal display
apparatus, such is not dispositive where, as here, the term
unquestionably projects a merely descriptive connotation,
and should remain available so that others engaged in the
relevant industry remain free to use the term. See In re
Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994), and cases
cited therein.
In this case, it is our view that, if applied to
applicant’s identified goods, the term SMART PACKAGE
immediately describes, without conjecture or speculation, a
significant feature or characteristic 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 customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
SMART PACKAGE as it pertains to applicant’s goods.
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) of the Trademark Act is
affirmed.