SmartMart, Inc.

Trademark Trial and Appeal Board

Feb 26, 2021

88055727 (T.T.A.B. Feb. 26, 2021)

Mailed: February 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SmartMart, Inc.
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Application Serial No. 88055727
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Shawn D. Sentilles of Walk Cook Lakey PLC for SmartMart, Inc.

Jeri Fickes, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Bergsman, Wellington and Dunn, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

SmartMart, Inc. (Applicant) seeks registration on the Principal Register of the
mark SMARTMART, in standard character form, for the goods and services listed
below:
Automated vending machines in the form of a convenience
store structure comprising internal electrical and
mechanical components for dispensing convenience store
items, in International Class 7; and
Retail store services featuring grocery items and over-the-
counter pharmacy items; retail store services featuring
convenience store items and gasoline; retail store services
featuring automated selection and delivery of grocery store
items, over-the-counter pharmacy items and convenience
store items without assistance of in-store clerks; retail
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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store services featuring grocery items, over-the-counter
pharmacy items and convenience store items, in
International Class 35.1
The Examining Attorney refused to register Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
SMARTMART is merely descriptive of the goods and services listed in the application.
The applied-for mark SMARTMART immediately conveys
information to consumers regarding primary features of
applicant’s goods and services, specifically, that applicant’s
goods and services are automated and that the services are
marts and the goods [are] for use in performing mart
functions.2
In addition, the Examining Attorney refused to register Applicant’s mark for the
goods in International Class 7 on the ground that Applicant failed to comply with the
requirement to provide a definite identification of goods as required by Trademark
Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6), and to provide an acceptable specimen showing
use of the mark on or in connection with the vending machines.
I. Background
According to Applicant, “[a] SMARTMART™ store functions like a convenience
store, but also like a very large vending machine.”3
A SMARTMART™ store building is a specially designed
structure that houses complicated mechanical, electrical
and computer devices, which together form the operational

1 Serial No. 88055727 was filed on July 27, 2018, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), based on Applicant’s claim of first use of its mark anywhere and in
commerce as of September 15, 1995 for the goods and services in both classes.
2 Examining Attorney’s Brief (6 TTABVUE 7).
3 Applicant’s Brief, p. 3 (4 TTABVUE 2). Applicant identified three patents protecting its
SMARTMART technology. Id. However, because Applicant failed to make the patents of
record, we cannot give the patents any consideration.
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components of the vending machine. The structure is
resistant to theft and vandalism yet allows store managers
access to all parts of the interior in order to efficiently
repair operational components and to stock inventory. …
The operational components dispense purchased items to
the outside of the structure at dispensing locations, similar
to the way a conventional vending machine dispenses
purchased items. Applicant’s dispensing locations are
carefully designed to deliver goods of many sizes, prevent
theft, resist damage (e.g. from the impact of a car or truck),
and even to avoid injury to customers. The operational
components store the inventory, process and track orders,
and dispense and deliver purchased items to consumers at
the dispensing locations. All of this is done twenty-four
hours a day, seven days a week without a human clerk.
Although the operational components are very complex,
they must also be durable, low maintenance, and virtually
error free.4
Applicant submitted the specimen reproduced below for both the automated
vending machines and the retail store service.

4 Id. at pp. 3-4 (4 TTABVUE 2-3).
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The outside walls of the facility are solid, rather than
glassed, in order to protect dispensing machinery and retail
items inside of the facility. The image on the side of the
building is a large photograph that gives the appearance
that the outside wall is glass, in the manner of a
conventional convenience store, but this is illusory.
Customers drive or walk up to one of the dispensing
locations, select items for purchase from a menu displayed
on a screen, and pay for the items.5
___
The specimen is a photograph of signage on applicant’s
actual store, which is essentially a large and complicated
vending/dispensing machine.6
In sum, Applicant’s SMARTMART building is a vending machine.
II. Whether SMARTMART is merely descriptive.
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
precludes registration of a mark on the Principal Register that, when used in
connection with an applicant’s goods, is merely descriptive of them. 15 U.S.C.
§ 1052(e)(1). “A mark is merely descriptive if it immediately conveys information
concerning a feature, quality, or characteristic of the goods or services for which
registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965,
128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363,
123 USPQ2d 1707, 1709 (Fed. Cir. 2017)).
We “must consider the mark as a whole and do so in the context of the goods
or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.,

5 February 3, 2020 Response to Office Action (TSDR 1 and 5).
6 Id. at TSDR 2 and 6.
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695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (emphasis added); In re
Calphalon Corp., 122 USPQ2d 1153, 1162 (TTAB 2017). “Whether consumers could
guess what the product is from consideration of the mark alone is not the test.” In re
Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Rather, “the question is
whether someone who knows what the goods and services are will understand the
mark to convey information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting
In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
This applies to compound marks as well.
In considering a mark as a whole, the Board may weigh the
individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its
various components. … [I]f ... two portions individually are
merely descriptive of an aspect of appellant’s goods [or
services], the PTO must also determine whether the mark
as a whole, i.e., the combination of the individual parts,
conveys any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004).
The issue before us is whether the mark SMARTMART is merely descriptive when
used in connection with the identified goods and services. Alternatively, as stated
above, the issue is to determine how a consumer encountering an automated vending
machine that dispenses convenience store items or a retail store featuring
convenience store items perceives the term SMARTMART.
In this case, the only evidence in the record is dictionary definitions of the terms
“smart” and “mart.” Merriam-Webster.com defines “smart,” inter alia, as “operating
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by automation // a smart machine tool.”7 It defines “mart,” inter alia, as a “market.”8
Thus, SMARTMART engenders the commercial impression of an automated market.
According to the Examining Attorney,
In this case, both the individual components and the
composite result are descriptive of applicant’s goods and
services and do not create a unique, incongruous, or
nondescriptive meaning in relation to the goods and
services. Specifically, the combined wording indicates the
applicant’s goods and services involve an automated store.
The identification of goods and services indicate the
services include “retail store services featuring automated
selection and delivery of goods without assistance of in-
store clerks; retail store services for automated
convenience stores” and goods are “Automated dispensers
for convenience store items.” Therefore, registration is
refused because the applied-for mark merely describes
applicant’s goods and services.9
In the context of automated vending machines and retail stores services, each
component – the word “smart” and the word “mart” – maintain their dictionary
definition in the composite term SMARTMART. In other words, the joining of the
individual words “smart” and “mart” does not create a different, non-descriptive
meaning. SMARTMART describes the goods (automated vending machines for
dispensing convenience store items) and services (retail store services featuring
automated selection and delivery of grocery store items, over-the-counter pharmacy
items and convenience store items without assistance of in-store clerks) without the

7 November 20, 2018 Office Action (TSDR 9).
Citations to the examination record refer to the USPTO Trademark Status and Document
Retrieval System (TSDR) by page number in the downloadable .pdf format.
8 Id. at TSDR 10.
9 Id. at TSDR 3.
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need for multi-step reasoning.10 Thus, the compound word SMARTMART is merely
descriptive just as the individual words “smart” and “mart” are merely descriptive.
See In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006), aff'd per curiam, 223 F.
App'x 984 (Fed. Cir. 2007) (SMARTSFP held merely descriptive of optical
transceivers because the separate terms SMART and SFP are merely descriptive and
when combined, they do not present a unique or incongruous meaning); In re Tower
Tech Inc., 64 USPQ2d 1314, 1315 (TTAB 2002) (the mark SMARTTOWER held
merely descriptive of commercial and industrial cooling towers because it is
comprised of two descriptive components, SMART and TOWER, and the combination
thereof does not change the overall descriptiveness of the mark); In re Cryomedical
Scis. Inc., 32 USPQ2d 1377 (TTAB 1994) (finding SMARTPROBE merely descriptive
for cryosurgical probes having electronic or microprocessor components).
Applicant contends that SMARTMART “suggests but does not describe
characteristics of applicant’s automated convenience stores and vending machine
components.”11
In applicant’s mark, “SMART” modifies the descriptive
term “MART” to suggest a desirable characteristic of a
convenience store, one that differs in some unspecified way
from a conventional “mart.” However, the term does not

10 The mark need not describe all the goods and services identified in a particular class, as
long as it merely describes one of them. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d
1087, 1089 (Fed. Cir. 2005) (“[T]he Trademark Office may require a disclaimer as a condition
of registration if the mark is merely descriptive for at least one of the products or services
involved.”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir.
2004) (“A mark may be merely descriptive even if it does not describe the ‘full scope and
extent’ of the applicant’s goods or services.”) (citing In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).
11 Applicant’s Brief, p. 6 (4 TTABVUE 7).
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immediately tell something about the goods or services. For
example, SMARTMART™ does not describe
characteristics such as the absence of a store clerk,
automated selection and delivery of purchased items,
security of the stored retail items, efficient segregation of
refrigerated and non-refrigerated sections, and so forth.12
We disagree. As noted above, the word “smart” means “automated.” When
Applicant uses “smart” in the composite mark SMARTMART to identify vending
machines for dispensing convenience store items and, inter alia, “retail store services
featuring automated selection and delivery of grocery store items, over-the-counter
pharmacy items and convenience store items without assistance of in-store clerks,”
the mark directly conveys to consumers that the goods and services are an automated
market.
Applicant also contends that SMARTMART is suggestive because it has no
inherent connection to conventional convenience stores or vending machines.13
Thus, if applicant applied to register SMARTMART for
conventional vending machines, it would be difficult to
point to any characteristics of vending machines that
render the mark descriptive. Likewise, if applicant applied
to register SMARTMART for use on conventional
convenience stores, it would be hard to point to any
characteristics of conventional convenience stores that
render the mark descriptive. It is only because applicant
combined the characteristics of two vastly different
products/services that the term “SMARTMART” – a term
that did not exist in any prior form until applicant adopted
it twenty-five years ago – starts to arguably take on
characteristics of a descriptive rather than suggestive
mark.14

12 Id. at p. 7 (4 TTABVUE 8).
13 Id. at pp. 8-9 (4 TTABVUE 9-10).
14 Id.
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However, Applicant seeks to register SMARTMART for “automated vending
machines … for dispensing convenience store items” and “retail store services
featuring automated selection and delivery of grocery store items, over-the-counter
pharmacy items and convenience store items without assistance of in-store clerks.”
We must analyze whether SMARTMART is merely descriptive based on the
identification of goods and services and, in doing so, we find that SMARTMART
directly conveys the characteristics of those goods and services.
Applicant asserts that SMARTMART is incongruous.
The word “mart” is conventionally associated with an
inexpensive, general purpose retail outlet for conveniently
purchasing everyday items (e.g. WAL-MART®, K-MART®,
NEBRASKA FURNITURE MART®). Thus, “marts” are
associated with convenience and low prices, not higher
level qualities such as “smartness.”15
There are several problems with this argument. First, there is no evidence in the
record that the word “mart” is conventionally associated with inexpensive, general-
purpose retail outlets. “Attorney argument is no substitute for evidence.” Zheng Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)
(“Attorney argument is no substitute for evidence.”) (quoting Enzo Biochem, Inc. v.
Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)).
Second, the only evidence of record, the Merriam-Webster.com definition, defines
“mart,” inter alia, as a “market” without any restriction, limitation, or indication that
it is conventionally associated with inexpensive, general purpose retail outlets.16

15 Id. at p. 7 (4 TTABVUE 8).
16 Id. at TSDR 10.
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Finally, we analyze whether Applicant’s mark is merely descriptive “in the context
of the goods or services at issue.” DuoProSS Meditech, 103 USPQ2d at 1757;
Calphalon, 122 USPQ2d 1162. In this case, the goods are automated vending
machines for dispensing convenience store items and the services are, inter alia,
“retail store services featuring automated selection and delivery of grocery store
items, over-the-counter pharmacy items and convenience store items without
assistance of in-store clerks.” Contrary to Applicant’s assertion that the commercial
impression engendered by SMARTMART is a high-level quality of “smartness,”
Applicant is using its mark to identify vending machines and retail stores services
characterized as “inexpensive, general purpose retail outlet for conveniently
purchasing everyday items.”
Applicant asserts, again without any evidence, that the Merriam-Webster
Dictionary (merriam-webster.com) definition of the word “smart” does not apply to
Applicant’s goods and services.
But in reality, this is not the reaction of the relevant
purchasing public for applicant’s goods and services.
Applicant has been using SMARTMART™ on automated
convenience stores continuously since 1995 and even
owned a U.S. registration for SMARTMART™. There is
thus no doubt that applicant has extensive common law
rights in SMARTMART™. The meaning of “smart” may
have evolved over the past twenty plus years, but applicant
respectfully suggests that use of the term “smart” in the
context of a convenience outlet does not inherently describe
operation by automation. Rather, when “smart” is
combined with the descriptive term “mart,” the combined
mark suggests a desirable but vague characteristic. As
such, applicant respectfully suggests that applicant’s
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mark, when taken as a whole, is suggestive rather than
descriptive of automated retail outlets and services.17
Again, as noted above, “[a]ttorney argument is no substitute for evidence.” Zheng
Cai, 127 USPQ2d at 1799 (quoting Enzo Biochem, 76 USPQ2d at 1622). In addition,
as pointed above, we find that SMARTMART directly conveys the nature of
Applicant’s goods (an automated vending machine for dispensing convenience store
items) and services (retail store services featuring automated selection and delivery
of grocery store items, over-the-counter pharmacy items and convenience store items
without assistance of in-store clerks) without the need for multi-step reasoning,
thought, logic, or cogitation.
Finally, Applicant argues, in essence, that because it is the first and only user of
SMARTMART operating in the vending machine and convenience store “space,”
“applicant’s own ingenuity should not be used as a basis for declaring its mark
descriptive rather than suggestive.”18 However, the fact that an applicant may be the
first and only user of a merely descriptive designation does not justify registration if
the only significance conveyed by the term is merely descriptive. See In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Nat’l Shooting Sports
Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983). See also KP Permanent Make-Up,
Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004)
(trademark law does not countenance someone obtaining “a complete monopoly on
use of a descriptive term simply by grabbing it first”) (citation omitted).

17 Id. at p. 8 (4 TTABVUE 9).
18 Id. at p. 9 (4 TTABVUE 10).
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We affirm the Section 2(e)(1) of the Trademark Act refusal to register
SMARTMART as being merely descriptive.
III. Whether Applicant’s specimen for the goods in International
Class 7 is acceptable.
A trademark application for registration under §1(a) of the Trademark Act must
include one specimen for each class, showing use of the mark in commerce on or in
connection with the goods. The specimen must show the mark as used on or in
connection with the goods. A trademark specimen should be a label, tag, or container
for the goods, or a display associated with the goods. Trademark Rule 2.56(b)(1),
37 C.F.R. § 2.56(b)(1).
Applicant submitted a photograph of “signage on exterior of automated
convenience store featuring dispensing ports for automated dispenser located inside
of store,” reproduced below, as its specimen showing use of SMARTMART for the
automated vending machines in International Class 7.19

19 Application (TSDR 2 and 4). See also Applicant’s Brief, p. 10 (4 TTABVUE 11) (“The
specimen is a photograph of signage on applicant’s actual store.”).
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Applicant explains that the photograph of the mark on Applicant’s store is an
acceptable specimen for its automated vending machines because Applicant’s store is
a giant vending machine.
Applicant’s stores are essentially large and complicated
vending/dispensing machines. … The specimen shows how
applicant’s vending/dispensing machine looks and how it is
used in actual commerce.20
Applicant’s “product is a complex vending/dispensing machine that happens to
function like a convenience store.”21
As can be seen in the specimen, multiple product
dispensing locations are provided on the outside of the
facility. In the specimen, two product dispensing locations
can be seen directly under the signs that read “Drive-Thru
Shop.” The outside walls of the facility are solid, rather
than glassed, in order to protect dispensing machinery and
retail items inside of the facility. The image on the side of
the building is a large photograph that gives the
appearance that the outside wall is glass, in the manner of
a conventional convenience store, but this is illusory.
Customers drive or walk up to one of the dispensing
locations, select items for purchase from a menu displayed
on a screen, and pay for the items. Upon payment, the
operational components inside of the facility retrieve the
selected items and deliver them to the customer through
the dispensing location.22
SMARTMART appears as signage on the building that is the automated vending
machine. Applicant has affixed the SMARTMART trademark on the product.
Accordingly, we find that Applicant has submitted an acceptable specimen showing
the mark SMARTMART used to identify the goods in International Class 7.

20 Applicant’s Brief, p. 10 (4 TTABVUE 11).
21 Applicant’s Brief, p. 11 (4 TTABVUE 12).
22 Applicant’s Brief, pp. 2-3 (4 TTABVUE 3-4).
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IV. Whether the International Class 7 description of goods is
sufficiently definite.
Applicant’s International Class 7 description of goods, as amended, reads as set
forth below:
Automated vending machines in the form of a convenience
store structure comprising internal electrical and
mechanical components for dispensing convenience store
items,
The Examining Attorney refused to register Applicant’s mark on the ground that
Applicant failed to comply with the requirement for a definite description of goods.
At the root of the examining attorney’s objection to
applicant’s proposed identification language is the lack of
clarity it provides as to the nature of applicant’s
International Class 7 goods. Applicant appears to want to
identify its products as both automated vending machines
and as automated convenience store services in one hybrid
identification classified in International Class 7. ... A
convenience store is a function or service, and not a
physical good. To state in the identification that the goods
are “in the form of a convenience store structure comprising
internal electrical and mechanical components” is unclear
and indefinite.23
We agree with the Examining Attorney. Applicant’s insistence on retaining the
phrase “convenience store” which connotes services in an identification of goods
makes the nature of the goods unclear and indefinite. The proposed description of
goods that Applicant declined to accept – “automated vending machines in the form
of permanent or portable building structures” – is a definite description of goods
because it does not blend goods and services.24 Accordingly, we affirm the refusal to

23 Examining Attorney’s Brief (6 TTABVUE 12).
24 December 11, 2020 Notation to File.
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register Applicant’s mark for the goods in International Class 7 because Applicant
failed to comply with the requirement to provide a definite description of goods.
Decision: We affirm the refusals to register Applicant’s mark SMARTMART on
the ground that it is merely descriptive under Section 2(e)(1) of the Trademark Act
and on the ground that Applicant failed to comply with the requirement to provide
an acceptable description of goods for the goods in International Class 7.
We reverse the refusal to register on the ground that Applicant failed to comply
with the requirement to provide an acceptable specimen for the goods in International
Class 7.