Tony Lutz

Trademark Trial and Appeal Board

Sep 20, 2001

No. 75685069 (T.T.A.B. Sep. 20, 2001)

9/20/01 Paper No. 8
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tony Lutz
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Serial No. 75/685,069
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Ken J. Pedersen of Pedersen & Company for Tony Lutz.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
____________

Before Hanak, Hohein and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Tony Lutz has filed a trademark application to
register the mark SMART PLUG for the following goods:
electrical plug for a standard AC-plug housing
that monitors the power line for voltage and
electric current spikes or variations in voltage
or electric current and records changes in the
line, namely, the elapsed time of usage, maximum
and minimum line voltage, and maximum current
draw, and reads back the data to a personal
computer through a user interface, for the
purpose of monitoring energy consumption or to
determine wear and tear on power tools; and
computer software for use in converting data
from electrical plug, which monitors the current
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/685,069
2
and voltage variations, to a computer readable
and displayable form.1
The Trademark Examining Attorney has issued a final
refusal to register, 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 his goods.2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that applicant’s
product is, essentially, “an electrical plug with
computer software that monitors the power line and
submits data to a computer”; that “smart” is defined as
“of, relating to, or being a highly automated device,
especially one that imitates human intelligence: smart
missiles”3; that “plug” is defined as “a fitting, commonly
with two metal prongs for insertion in a fixed socket,
used to connect an appliance to a power supply”4; and that

1 Serial No. 75/685,069, in International Class 9, filed May 7, 1999,
based on an allegation of a bona fide intention to use the mark in
commerce.
2 In his appeal brief, applicant sought to enter a disclaimer of PLUG.
Such a request is essentially a request for reconsideration, which must
be filed within a six-month period following the final refusal. This
request, filed more than a year after the final refusal, is untimely and
has not been considered. We add that, even if such a disclaimer was
properly of record, our decision in this case would remain the same.

3 The American Heritage Dictionary of the English Language, 3rd ed.,
1992.

4 Ibid.
Serial No. 75/685,069
3
applicant’s “highly automated plugs and the computer
software for use with the plugs combine to form a device
that, relative to a standard AC plug, performs several
highly sophisticated functions beyond the connection of
an appliance to a power supply.” The Examining Attorney
concludes that “the combination of the terms does not
create a unitary mark with a separate nondescriptive
meaning” and, thus, the mark is merely descriptive of the
identified goods. In addition to the noted dictionary
definitions, the Examining Attorney submitted excerpts of
articles, including the following, retrieved from the
LEXIS/NEXIS database and copies of third-party
registrations in support of his position:
These are essentially smart batteries that plug
into the power line between the wall socket and
your computer. They continually keep charged up
from the wall juice and pass it right on to the
computer and other gear. [The San Diego Union-
Tribune, July 20, 1999.]

Before USB, setting up a scanner was an ugly
experience. Now, thanks to these smart sockets,
all you have to do is plug in the device, and
scans happen. [Home Office Computing, February,
1999.]

I want automation products that instantly
interact with all my other smart products when I
plug them into the ac outlet. [EDN, July 8,
1999.]

The marks in the third-party registrations all consist of
two terms, begin with the term SMART, and identify a
Serial No. 75/685,069
4
variety of goods and services. Each registration is
either on the Supplemental Register, on the Principal
Register under Section 2(f) of the Trademark Act, or
includes a disclaimer of SMART.
Applicant contends that its mark is not merely
descriptive because it “is inventive or evokes a unique
commercial impression”; that applicant’s mark “is the
unexpected combination of the terms SMART and PLUG”; that
SMART “suggests sophisticated capabilities,” whereas
PLUG, “as an electrical plug, refers to a completely
passive electrical component … [and] this combination …
evokes a unique commercial impression of incongruity.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a 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 single, significant quality, feature, etc. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Serial No. 75/685,069
5
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.5 In re Recovery, 196 USPQ 830 (TTAB 1977).
It is clear from the dictionary definition and the
goods as identified, and applicant does not dispute, that
the PLUG portion of applicant’s mark is merely
descriptive in connection with those goods.
It is equally clear that SMART is also merely
descriptive in connection with the identified goods. In
addition to the dictionary definition of record, we take
judicial notice of the following dictionary definitions
of “smart”:
Synonym for intelligent; in relation to software
or hardware, capable of processing information,
typically beyond what is currently expected;6
and

Having some computational ability of its own[;]
smart devices usually contain their own
microprocessor.7

5 Thus, applicant’s argument that one cannot determine the goods from
the mere combination of the two terms SMART PLUG is not persuasive
because it does not employ the correct legal test.

6 Microsoft Press Computer Dictionary (2nd ed. 1994).

7 Computer Dictionary (3rd ed. 1992).
Serial No. 75/685,069
6

Based on the identification of goods, applicant’s plug
monitors various aspects of voltage and “reads” the data
gathered to a personal computer. Applicant’s software
converts the data read by the plug to a computer readable
and displayable form. These goods are “smart” as that
term is defined and as used in the excerpted articles.
The term SMART PLUG simply describes the nature of
applicant’s electrical plug; and SMART PLUG describes a
significant aspect of applicant’s software, namely, that
it converts data gathered by the plug to computer
readable and displayable form. 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].
In conclusion, it is our view that, when applied to
applicant’s goods, the term SMART PROBE immediately
describes, without conjecture or speculation, the nature,
and a significant feature or function, of applicant’s
goods. 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 services to readily perceive

Serial No. 75/685,069
7
the merely descriptive significance of the term SMART
PROBE as it pertains to applicant’s goods. We are not
convinced otherwise by applicant’s argument that the
combination of the two terms evokes a unique commercial
impression or incongruity.
Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.