C & D Technologies, Inc.

Trademark Trial and Appeal Board

Aug 6, 1999

No. 74196304 (T.T.A.B. Aug. 6, 1999)

Paper No. 44/46
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re C & D Technologies, Inc.
___________
Serial Nos. 74/196,304 and 74/802,601
___________
Charles N. Quinn of Dann, Dorfman, Herrell & Skillman for
applicant.
Chad T. O’Hara, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
____________
Before Simms, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
This case concerns two applications on the Principal
Register for the mark SMART BATTERY. One application is
for “lead-acid batteries for motive power applications,”1
and the other application is for “lead-acid batteries for

1 Serial No. 74/196,304, in International Class 9, filed August 19,
1991, based on an allegation of a bona fide intention to use the mark
in commerce. The owner of record of this application is C & D
Technologies, Inc.
Serial No. 74/196,304
and 74/802,601
2
electrically driven industrial material handling vehicles.”2
Each application includes a disclaimer of BATTERY apart
from the mark as a whole.
These two applications are the result of a division of
a single application for SMART BATTERY into two
applications for SMART BATTERY for different goods. During
the prosecution of the original application, applicant
requested that the goods identified as “lead-acid batteries
for electrically driven industrial material handling
vehicles” be divided out of the original application and
proceed as a separate application. The Examining Attorney
had refused registration in the original application on the
basis of mere descriptiveness in relation to all of the
recited goods and the Examining Attorney maintained this
refusal in each of the two separate applications. In
application Serial No. 74/196,304, pertaining to “lead-acid
batteries for motive power applications,” applicant has
submitted an amendment seeking registration on the
Supplemental Register.
There have been a number of procedural missteps, such
as the submission of unsigned declarations, papers crossing

2 Serial No. 74/802,601, in International Class 9, filed August 19,
1991, based on an allegation of a bona fide intention to use the mark
in commerce. The owner of record of this application is C & D
Technologies, Inc.
Serial No. 74/196,304
and 74/802,601
3
in the mail, and numerous extensions of time, that have
complicated this case but do not bear repeating. What is
pertinent to the issues before us on appeal is the fact
that, in each application, applicant has submitted an
amendment to allege use accompanied by specimens consisting
of an advertising brochure.
In each application, the Examining Attorney has issued
a final requirement for the submission of substitute
specimens showing use of the mark in connection with the
goods identified in the application. The Examining
Attorney contends that the specimens of record show use of
the mark in connection with a module that is attached to
batteries, but that these goods are different from, and not
encompassed by, the batteries identified in each
application. Applicant contends, essentially, that the
specimens are acceptable as displays associated with the
goods and that, in fact, the mark is used on the batteries
identified in each application.
Additionally, in each application, the Examining
Attorney has finally refused 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. In application Serial No. 74/196,304, which
contains applicant’s amendment to the Supplemental
Serial No. 74/196,304
and 74/802,601
4
Register, this refusal is in the alternative. In other
words, if we find the specimens to be unacceptable, the
amendment to allege use is incomplete. In this case,
applicant’s amendment to the Supplemental Register would be
unacceptable because the application would remain an
intent-to-use application, which is not eligible for the
Supplemental Register. Thus, the refusal on the ground of
mere descriptiveness, which would have been overcome by the
amendment to the Supplemental Register, would be applicable
to this application.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Specimens
The brochure submitted as specimens in these two
applications pictures the mark, SMART BATTERY, on a small
device attached to the top of a battery, rather than on the
battery itself. The brochure describes the goods as
follows:
C&D SmartBattery is like a thinking cap for
batteries. SmartBattery is a battery management
tool. The low-profile, fully encapsulated module
mounts flush onto the battery top.
Four good reasons to buy SmartBattery
- Battery fleet management yields longer batter
life, and that saves you money
Serial No. 74/196,304
and 74/802,601
5
- Lower operating costs by getting longer life out
of your batteries. … Based on information
provided by SmartBattery, you can take action,
eliminating situations where harmful over-
discharging or under-discharging are occurring.
- You have the information needed to obtain the
optimum number of batteries in your fleet. …
SmartBattery gives you a better handle on your
usage needs.
- Avoid premature replacements and “surprise”
failures because you will know the status of your
batteries and can plan when to replace them.
SmartBattery can be retrofit to your existing
battery and new batteries can be ordered with the
SmartBattery already installed.
Applicant’s amendment to allege use in each
application also contains the following statement: “The
mark is used on point of sale materials displayed in close
adjacent proximity to the lead-acid batteries [for the
application identified in the respective application] at
trade shows where orders for the lead-acid batteries [for
the application identified in the respective application]
are solicited and accepted.”
Sections 1(a)(1)(C) and 1(d)(1) of the Trademark Act,
15 U.S.C. 1051(a)(1)(C) and (d)(1), require the submission
in an application of specimens of the mark “as used.”
Trademark Rule 2.56, 37 CFR 2.56, requires the submission
of “specimens of the trademark as used on or in connection
with the goods in commerce.”
Serial No. 74/196,304
and 74/802,601
6
The court, in In re Bose Corp., 546 F.2d 893, 192 USPQ
213, 215 (CCPA 1976), stated that “[b]efore there can be
registration, there must be a trademark, and unless words
have been so used they cannot qualify.” (citation omitted.)
Noting that “the classic function of a trademark is to
point out distinctively the origin of the goods to which it
is attached,” the court stated further (citations and
footnote omitted):
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the
manner in which an applicant has employed the
asserted mark, as evidenced by the specimens of
record, must be carefully considered in
determining whether the asserted mark has been
used as a trademark with respect to the goods
named in the application.
Id. at 215-216.
Advertising material is generally not considered an
acceptable specimen evidencing trademark use on goods,
unless the advertising material features a picture of the
goods with the mark thereon. As the Board stated in In re
Mediashare Corp., 43 USPQ2d 1304, 1307 (1997):
Such material, generally speaking, is not
acceptable as specimens for goods. This is
because any material whose function is simply to
tell a prospective purchaser about the goods or
to promote the sale of the goods is unacceptable
to support trademark use.
Serial No. 74/196,304
and 74/802,601
7
In certain circumstances advertising material may
function, also, as a display associated with the goods, in
which case the material is, essentially, point-of-sale
material designed to catch the attention of prospective
purchasers and serve as an inducement to consummate a sale.
In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).
We agree with the Examining Attorney that the brochure
submitted as a specimen in each of the applications in this
case does not evidence use of the mark on the goods
identified in the application and, therefore, is an
unacceptable specimen of use. Both the picture and text of
the brochure pertain to the mark SMART BATTERY as used in
connection with a device that attaches to and monitors
batteries. Even assuming this brochure is used as a point
of purchase display, it is clearly a display in connection
with the device advertised therein, not in connection with
batteries. Applicant’s statement in the amendment to
allege use does not contradict this conclusion. In view of
the nature of this device, it is reasonable that, as stated
in the amendment to allege use, it is displayed in close
proximity to the described batteries at trade shows where
such batteries are sold or offered for sale. We find
applicant’s contrary arguments in this regard to be
unpersuasive.
Serial No. 74/196,304
and 74/802,601
8
Because we have found the specimens to be unacceptable
evidence of use of the mark in connection with the goods
identified in each of the applications herein, the
amendment to allege use in each application is incomplete
and, thus, unacceptable. In view thereof, applicant’s
request to amend application Serial No. 74/196,304 to the
Supplemental Register is, likewise, unacceptable. See,
Section 23 of the Trademark Act, 15 U.S.C. 1091, and
Trademark Rule 2.75, 37 CFR 2.75.
Mere Descriptiveness
We consider, next, the question of whether the mark,
SMART BATTERY, is merely descriptive in connection with the
goods identified in each of the applications herein. 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 Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979);
In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
Serial No. 74/196,304
and 74/802,601
9
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).
We must consider the issue of descriptiveness before
us in relation to the goods identified in these
applications, i.e., the specified batteries, regardless of
the actual goods on which applicant may now use the
asserted mark. However, in so doing we also consider the
evidence in the record regarding the nature of the goods.
In particular, we have applicant’s express statement that
the goods contain a microprocessor. The Examining Attorney
has submitted evidence that the term SMART is defined as
“having some computational ability of its own … [s]mart
devices usually contain their own microprocessors or
microcomputers.”3 Additionally, the Examining Attorney has
submitted excerpts of articles from the LEXIS/NEXIS
database demonstrating use of the term SMART to refer to
batteries with microprocessors in various applications.

3 Webster’s New World Dictionary of Computer Terms (3rd ed.).
Serial No. 74/196,304
and 74/802,601
10
Clearly, the term BATTERY is the generic name of the
identified goods. Based on the evidence of record, it is
equally clear that the term SMART, as an adjective for
BATTERY, merely describes the nature of the goods, namely
that the battery contains a microprocessor that allows
monitoring of various aspects of the operation of the
battery. We find this to be the case notwithstanding
applicant’s arguments to the contrary. Further, we find
the mark to be equally descriptive of the batteries
identified in each application before us.
Thus, in the present case, it is our view that, when
applied to applicant’s goods in each application, the term
immediately describes, without conjecture or speculation, a
significant feature or function of applicant’s goods,
namely, that the goods are batteries containing, or having
affixed thereto, microprocessors for monitoring the
features and functions of the batteries. 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 BATTERY as it pertains to the goods in each
application.
Serial No. 74/196,304
and 74/802,601
11
Decision: The refusal is affirmed in application
Serial No. 74/196,304 and application Serial No.
74/802,601, on the ground that the Examining Attorney
properly required substitute specimens because the
specimens of record do not show use of the mark in
connection with the identified goods. Additionally, the
refusal under Section 2(e)(1) of the Act is affirmed in
each application.
R. L. Simms
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board