Alpha Equipment Services Inc.

Trademark Trial and Appeal BoardFeb 2, 2012

No. 77943347 (T.T.A.B. Feb. 2, 2012)

Mailed: February 2, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Alpha Equipment Services Inc. ________ Serial No. 77943347 _______ James R. Eley of the Eley Law Firm for Alpha Equipment Services Inc. Helene Liwinski, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Bucher, Ritchie, and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Alpha Equipment Services Inc. (“applicant”) filed an application to register the mark SMART VAC in standard character form for “manufacture of industrial vacuum vehicles to order and/or specification of others” in International Class 40.1 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(e)(1) of the Trademark Act, 1 Serial No. 77943347, filed February 24, 2010, alleging February 3, 2010, as the date of first use anywhere and in commerce, with a disclaimer of VACCUUM. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77943347 2 15 U.S.C. § 1052(e)(1), on the ground that the mark is merely descriptive of applicant’s identified services. Upon final refusal of registration, applicant filed a timely appeal and request for reconsideration which was denied. Both applicant and the examining attorney filed briefs. For the reasons discussed herein, the Board affirms the refusal to register. The test for determining whether a mark is merely descriptive is whether it 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 single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It is enough if the term describes only one significant function, attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004). Serial No. 77943347 3 Applicant does not dispute the descriptive significance of the term “vac” as an abbreviation for “vaccum.” Rather, the central issue on appeal is whether the term “smart” when used in combination with “vac” is merely descriptive. The Board has previously found the term “smart” to be merely descriptive of automated devices. See e.g., In re Finisar Corp., 78 USPQ2d 1618 (TTAB 2006) (holding SMARTSFP descriptive of optical transceivers); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of commercial and industrial cooling towers and accessories therefor, sold as a unit). By logical extension, the term “smart” when used in connection with manufacturing services involving the production of an item which includes automated devices may be descriptive as well. We find that based on the evidence of record, applicant’s mark immediately conveys to prospective purchasers a significant feature of the identified goods, namely that applicant manufactures for others industrial vaccum vehicles which include “smart” (or mechanized) components. The dictionary definitions submitted by the examining attorney support this finding. The word “smart” is defined as: “operating by automation ” www.merriam-webster.com. Serial No. 77943347 4 This is confirmed by applicant’s own specimen of use consisting of a [print out one word?] from applicant’s website describing the services reprinted below: Serial No. 77943347 5 As the excerpt from applicant’s website indicates, applicant’s services involve the manufacture of industrial vacuum trucks with various “smart” features, namely, increasing “safety by adding as standard equipment an 8” vacuum release valve and an extra shut off switch. Both safety items can be crucial if an incident occurs that requires a unit to be shut down immediately;” and including a “revolutionary advance cyclone that produces more air flow with less fuel consumption. Less fuel consumption not only saves you money but is also good for the environment by creating fewer emissions.” Applicant contends that the term “smart” is not descriptive because it refers to “the consumer’s ‘smart’ choice in electing to purchase a simply engineered, cheaper to buy, more efficient to operate, safer and greener vehicle directly from the applicant.” Applicant’s Brief, p. 5. Applicant further maintains that the fact that applicant’s products contain some electronic or automated components does not rise to the level of “smart.” We acknowledge that applicant’s specimen uses the term “smart” to also mean an intelligent consumer choice for marketing purposes. However, merely because the word “smart” is used in another context to advertise applicant’s services does not obviate the descriptive significance of the term. Such an argument would only be availing if applicant’s services did not involve the manufacture of vacuum vehicles with smart or automated components. However, as noted above, this is not the Serial No. 77943347 6 case. Applicant’s own website touts the added safety features and “revolutionary” cyclone, all components which are automated in nature. In addition, we disagree with applicant that the combination of the words “smart” and “vac” rises to the level of evoking a new and unique commercial impression. In this particular case, each word retains its descriptive significance in relation to applicant’s services, resulting in a composite mark that is itself descriptive. See e.g., In re Oppedahl, 71 USPQ2d at 1370 (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet). The examining attorney has also made of record dictionary definitions of the term “smart” in the context of computer technology to mean “aimed, guided, and controlled precisely, through the use of computer technology,” “programmed in advance with certain features, as navigation information or sensing and self-correcting functions” “smart machines, especially weapons, use computer technology to make them effective.” See MacMillan and Webster’s New World College Dictionary. Applicant, however, maintains that the industrial vacuums it manufactures “do not employ any software, microprocessors or additional automation that is not present in any other industrial vacuum vehicle.” Serial No. 77943347 7 Applicant’s Brief, p. 3. Irrespective of applicant’s assertion, applicant’s recitation of services is sufficiently broad to encompass the manufacture of industrial vacuum vehicles featuring “smart” computer technology. Almost two decades ago, this Board held that “[i]t is undeniable that computers have become pervasive in American daily life. The ‘computer’ meaning of the term ‘smart,’ as is the case with many ‘computer’ words, is making its way into the general language.” In re Cryomedical Sciences Inc., 32 USPQ2d 1377, 1378 (TTAB 1994). The examining attorney has made of record evidence obtained from third-party websites that include reference to other types of industrial vehicles employing “smart” technology. Thus based on the recitation of services, the term “smart” is descriptive of the overall capabilities of the vacuum vehicles featured in applicant’s services, namely that the vehicles include through the use of computer technology, certain features, such as navigation information or sensing and self-correcting functions, or any combination of other “smart” features. Applicant further argues that other “smart” registrations have issued on the Principal Register. However, vocabulary used in the computer and electronics fields is particularly noted for changing rapidly. In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000) (noting “a year or two is an eternity in ‘Internet time,’ given the rapid advancement of the Internet Serial No. 77943347 8 into every facet of daily life”). A term that was once arbitrary or suggestive may lose its distinguishing and origin- denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation. In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976). Accordingly, an applied-for mark that is merely descriptive does not become registrable simply because other similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ 517 (TTAB 1977). Decision: The refusal to register under Section 2(e)(1) is affirmed.