Mailed: March 6, 2006
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Finisar Corporation
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Serial No. 76300876
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Andrew J. Gray IV of Morgan, Lewis & Bockius LLP for
Finisar Corporation.
Attiya Malik, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).1
_______
Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
Finisar Corporation has filed an application to
register SMARTSFP (in standard character form) on the
Principal Register for “optical transceivers” in
International Class 9.2
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1 During the course of prosecution, this application was
reassigned to the above-noted examining attorney.
2 Application Serial No. 76300876, filed August 15, 2001,
alleging a bona fide intent to use the mark in commerce.
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 76300876
2
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its goods.
When the refusal was made final, applicant appealed
and requested reconsideration of the final decision. On
November 2, 2004 the examining attorney denied the request
for reconsideration and the appeal was resumed.3 Briefs
have been filed, but applicant did not request an oral
hearing. We affirm the refusal to register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
3 The request for reconsideration included a request to amend
this application to seek registration on the Supplemental
Register. This request was denied by the examining attorney
inasmuch as applicant did not submit an amendment to allege use.
TMEP §1102.03 (4th ed. 2005). In its September 17, 2004 response
applicant indicated that it was unable to provide proof of use
and maintained its arguments against the Section 2(e)(1) refusal.
Serial No. 76300876
3
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 ingredient, quality, characteristic, function,
feature, purpose or use of the goods. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). 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 Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
We are persuaded by the evidence of record that the
separate terms SMART and SFP are merely descriptive of
applicant’s identified goods and that when combined do not
present a unique or incongruous meaning. In re Tower Tech,
Inc., 64 USPQ2d 1314 (TTAB 2002).
As stated by applicant, the letters SFP are “an
abbreviation for small form-factor pluggable as used in
connection with optical transceivers.” Br. p. 3. The
Serial No. 76300876
4
examining attorney submitted an excerpt from the
acronymfinder.com website which lists SFP as an
abbreviation for “small form-factor pluggable.” The
examining attorney also submitted the following excerpt
from a third-party website that provides further
information as to the significance of the abbreviation SFP
used in connection with optical transceivers:
Small form-factor pluggable (SFP) is a
specification for a new generation of optical
modular transceivers. The devices are designed
for use with small form factor (SFF) connectors,
and offer high speed and physical
compactness...SFP transceivers are expected to
perform at data speeds of up to five gigabits per
second...Because SFP modules can be easily
interchanged, electro-optical or fiber optic
networks can be upgraded and maintained more
conveniently than has been the case with
traditional soldered-in modules...Several
companies have formed a consortium supporting the
use of SFP transceivers to meet their common
objectives of broad bandwidth, small physical
size and mass, and ease of removal and
replacement.
www.searchnetworking.com.
In arguing against the refusal, applicant contends
that it has not conceded that SFP is merely descriptive of
optical transceivers.4 Applicant argues that the average
4 We note that in its response to the initial refusal under
Section 2(e)(1), applicant stated “While SFP is an initialism for
‘small form-factor pluggable,’ a term used in connection with
optical transceivers such as those identified in Applicant’s
application, the term SMART has no such recognized meaning in
connection with optical transceivers.” Applicant’s Response p. 2
(April 30, 2003). Applicant continues in the response to argue
that SMART is not descriptive of its goods or in the alternative
Serial No. 76300876
5
consumer does not recognize the SFP acronym and connecting
the SFP acronym to optical transceivers requires
imagination, thought, or perception. Br. p. 10. More
specifically, applicant argues that “[e]ven if the average
consumer recognizes the acronym SFP, the consumer would
have to pause to connect SFP with optical transceivers
because small form-factor pluggable is not the generic name
for optical transceivers; rather it refers to a
specification for optical transceivers.” Br. p. 10.
We determine the descriptiveness of a term in the
context of the goods in issue, not in the abstract. From
the description in searchnetworking.com, an SFP optical
transceiver is a specific type of transceiver distinguished
from traditional soldered-in modules, and is also referred
to only by its abbreviation SFP. With regard to
applicant’s argument that the average consumer would not
recognize the abbreviation, we must look at the average or
ordinary prospective customers of applicant’s identified
the combination of SMART and SFP combine to create a unique
commercial impression. Further, in a subsequent response,
applicant states “Applicant has not disputed that SFP is an
initialism used in connection with optical transceivers. At
issue, therefore, is whether SMART is merely descriptive of
optical transceivers.” Applicant’s Response p. 2 (September 15,
2004). It would appear that applicant has in fact conceded that
SFP is a known “initialism” used in connection with its goods and
is merely descriptive of a significant feature of its goods.
However, there is no need to rely on any possible concession as
Serial No. 76300876
6
goods. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987). The applications for applicant’s
optical transceivers are presented in the following excerpt
from applicant’s product literature attached to its March
27, 2002 response: “Finisar manufactures a broad line of
optical transceivers for gigabit-rate fiber optic
communication applications such as: Gigabit Ethernet;
Fibre Channel; SONET/SDH; CWDM Metro Access.” The average
consumer of an optical transceiver would certainly know and
be familiar with the various features available, including
soldered-in versus SFP. A consumer of these products would
have to be well-versed in the product features to assess
compatibility with the consumer’s fiber optic
communications applications. Nor would it take any
speculation or mental leap to understand that SFP refers
directly to applicant’s optical transceiver, informing the
consumer that this particular optical transceiver is an SFP
or small form-factor pluggable transceiver. Frankly, in
applicant’s own words SFP directly refers or describes a
“specification” (i.e., a significant feature) of
applicant’s goods.
the record fully supports a finding that SFP is merely
descriptive of applicant’s goods as discussed above.
Serial No. 76300876
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The record also supports a finding that the term SMART
when used in connection with applicant’s goods is merely
descriptive of them. The examining attorney argues that
the term “smart” conveys to prospective consumers that “the
transceivers contain a computer chip or micro-chip, are
electronically guided and/or are computer programmed.” Br.
p. 6. Applicant contends that the term SMART is too broad
to be descriptive and that the examining attorney “failed
to articulate any reasons or bases (much less provide
evidence) supporting the position that SMART is not general
or broad or that SMART does not include many categories of
goods.” Reply Br. p. 5. The following relevant
definitions of the word “smart” have been made of record:
In computer technology, a relative term,
indicating how sophisticated a program or machine
is and how many capabilities it has. A “smart
missile” is one that is guided electronically, as
opposed to a non-hi-tech missile; “smart modems”
have more capabilities and can be programmed to
make more decisions than earlier modems.
www.computeruser.com
5.a. Of, relating to, or being a highly automated
device, esp. one that imitates human
intelligence.
The American Heritage College Dictionary (3rd ed.
1992)
Function: adjective ... 7.a: being a guided
missile
b: operating
by automation c:
Intelligent.
Merriam-Webster Online Dictionary, www.m-w.com.
Serial No. 76300876
8
We also take judicial notice of the following
definition of “smart”:
Informal: equipped with, using, or containing
electronic control devices, as computer systems,
microprocessors, or missiles: a smart phone; or
smart copier.
The Random House Unabridged Dictionary (2d ed.
1993).5
We must look at these definitions within the context
of the goods for which registration is sought. In re
Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). As has been noted
by the Board over a decade ago, “It 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). Applicant’s optical
transceivers are highly automated devices that imitate
human intelligence by self monitoring and reporting
operational and diagnostic information as shown by
applicant’s product literature. For example, applicant’s
SMARTSFP transceivers “Provide real-time monitoring of:
transceiver temperature, Laser bias current, Transmitted
5 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983) (Board may take judicial notice of
dictionary definitions).
Serial No. 76300876
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optical power, received optical power, Transceiver supply
voltage.” In addition, applicant’s “enhanced digital
diagnostic monitoring interface...defines a sophisticated
system of alarm and warning flags, which alerts end-users
when particular operating parameters are outside of a
factory set normal range” and “The operating and
diagnostics information is monitored and reported by a
Digital Diagnostics Transceiver Controller (DDTC) inside
the transceiver, which is accessed through a 2-wire serial
interface. When the serial protocol is activated, the
serial clock signal (SCL, Mod Def 1) is generated by the
host. The positive edge clocks data into the SFP
transceiver into those segments of the E2PROM that are not
write-protected.” See exhibits attached to Applicant’s
Response to Office Action (March 27, 2002).
As stated by the examining attorney, “in light of the
dictionary definitions...SMART for optical transceivers
describes that the transceivers ‘have more capabilities and
can be programmed to make more decisions than earlier’
versions of transceivers [and] [e]ven the definition
offered by Applicant that SMART means a ‘highly automated
device that imitates intelligence’ supports the conclusion
that a SMART optical transceiver is a ‘highly automated
device’ that ‘imitates intelligence’ and is programmed to
Serial No. 76300876
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perform a variety of functions...” Brief p. 13. Applicant
relies on In re Hutchinson Technology Inc., 852 F.2d 552,
7 USPQ2d 1490 (Fed. Cir. 1988) and argues that the term
“smart” is similar to the term “technology” in the sense
that they are both broad terms that include many categories
of goods such that they cannot convey an immediate idea of
the ingredients, qualities or characteristics of the goods.
We are not persuaded by this analysis. While it may be
true that the term “smart” may be used on an array of
goods, e.g., telephones, missiles, copiers, its use in
these various contexts has a consistent specific meaning;
it tells the consumer that the product is highly automated
and capable of computing information. As shown above,
applicant’s optical receivers are capable of computing
diagnostic information and forwarding that information to
“alert” end-users with regard to the product’s operating
parameters.
We note that applicant has made of record printouts of
several use-based third-party registrations on the
Principal Register for marks that include the term SMART,
which are registered without disclaimers. Applicant argues
that these registrations show an Office practice of
allowing SMART marks to register. The examining attorney,
in turn, submitted several use-based third-party
Serial No. 76300876
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registrations where the term SMART was disclaimed,
registered under Section 2(f) based on a showing of
acquired distinctiveness, or on the Supplemental Register
for a variety of computer, electronic and automated
devices. However, as expressly stated by the court in In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001), “The Board must decide each case on its
own merits, … Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the
PTO’s allowance of such prior registrations does not bind
the Board or this court. (Internal citation omitted.)6 Cf.
In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005) (even
proof that various examining attorneys have registered a
particular type of mark in the past does not establish that
there is an Office practice holding such marks are
generally registrable.) While uniform treatment is a goal,
our task is to determine based on the record before us,
6 Applicant also submitted listings of third-party registrations
with the term SMART in support of its contention that the PTO
practice is to allow registration of this term. These listings
have little to no probative value. Applicant argues that “Of the
1148 registered marks consisting of or containing SMART in
International Class 9, only 128 contain a disclaimer of SMART,”
(Applicant’s Response p. 4 (April 30, 2003)) and concludes from
this that its mark “cannot be considered to be merely descriptive
when the Patent and Trademark Office has issued so many
registrations for similar marks – without disclaimers,” id. p. 5.
However, applicant’s two listings do not account for those
registrations that issued under Section 2(f) of the Trademark Act
Serial No. 76300876
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whether applicant’s mark is merely descriptive. In re
Cryomedical, supra.
The examining attorney also submitted search results
for “smart transceivers” retrieved from the Google search
engine and printouts of third-party websites that include
references to “transceivers.” The Google search results
include the following uses of the word “smart”:
The term “smart transceiver” refers to an RF
transceiver with integrated microcontroller (see
Sec. 3).
www.springerlink.com
Distributed Network Intelligence using the
sophisticated Micro-cell software embedded in
each ‘smart’ transceiver, messages are
communicated by the best…
www.ademcosecurity.com.
The signal is transmitted directly to the central
receiver if the subscriber is within radio range,
or is relayed through one or more smart
transceivers.
www.aes-intellinet.com
These “smart” transceivers are used to build
high-speed data links over single-mode fiber
optics.
Investor.finisar .com
All three models are complete smart transceivers
including an embedded communications controller
and firmware to simplify the task of
incorporating RF data...
www.bbwexchange.com
JDSU Expands Module Suite – July 09, 2001
Includes new optical amplifiers and transponders
based upon a showing of acquired distinctiveness or on the
Supplemental Register.
Serial No. 76300876
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NFOEC Newswire Feed: Finisar Shipping ‘Smart’
Transceivers – July 09.
www.lightreading.com
With an array of displays, the machine is
designed to allow configuration and testing of
smart transceivers from a Windows PC.
www.privateline.com
...Chip controls Fast Ethernet; “smart”
transceivers give interoperability a chance;
Rail-to-rail op amp has slew of 350
V/cmicrosecond.
www.eet.com
The system’s smart transceivers dynamically adapt
themselves to changes in the network, continually
optimizing the system.
www.keltroncorp.com
Integration of RF MEMS devices for smart
transceivers; Integration of MOEMS devices for
intelligent optical signal processors;
www.uta.edu
Smart Transceivers Raise the Bar For Device
Networking Echelon Corp.
www.eepn.com
Echelon’s New Smart Transceivers Raise Benchmark
For High Performance, Affordable Device
Networking Solutions.
www.hometoys.com
The third-party websites include the following uses of
the word “smart”:
Denver Alarm provides commercial alarm monitoring
services for both fire alarm systems and security
systems...link fire alarm and burglar alarm
communicators to a central monitoring station.
And criminals know. Using the sophisticated
Micro-cell software embedded in each “smart”
transceiver.
www.spy-Review.com
Serial No. 76300876
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AES-IntelliNet long range wireless systems use
patented “smart” routing technology, where every
transceiver is also a repeater. These smart
transceivers align automatically to create a
rugged, adaptive communications net, delivering
alarm signals quickly over a web of redundant
paths. AES networks are operator owned.
www.aes-intellinet.com
Applicant attacks the search results and website
printouts noting that they refer to different types of
transceivers used in different fields (e.g. fire and
burglar alarms or wireless transceivers) or that they use
the term “smart” as a product name and not to describe the
product (e.g., Echelon Corporation’s Smart Transceivers).
While some of these examples may not present an unambiguous
descriptive use, some examples clearly show use of the term
to describe a highly automated transceiver. See e.g.,
www.bbwexchange.com. Applicant is correct in noting that
many of the examples do not involve optical transceivers
which minimizes their probative value, but what we may draw
from these examples is that use of the term “smart,” in
regard to transceivers generally, indicates that the
transceivers are highly automated. This is not surprising
given the use of “smart” to indicate a highly automated
device in a variety of fields. See In re Tower Tech, Inc.,
supra (SMARTTOWER merely descriptive of “commercial and
industrial cooling towers and accessories therefor, sold as
Serial No. 76300876
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a unit”); In re Cryomedical Sciences Inc., supra
(SMARTPROBE merely descriptive of disposable cryosurgical
probes). See also The Random House Unabridged Dictionary
(2d ed. 1993) (smart phone, smart copier) made of record by
judicial notice. We note that even applicant’s use of the
term “smart,” used as an adjective to describe its product,
as shown in the excerpt from investor.finisar.com,
highlights the descriptive nature of this term. Applicant
argues that its use in connection with its goods cannot be
used as evidence of mere descriptiveness. This is simply
not the case. If an applicant uses its proposed mark to
describe its goods, an examining attorney is not precluded
from using such evidence to support a refusal. See In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987).
While we have discussed the Internet evidence, we must
note that search results alone are of limited probative
value, in that use in a search summary may indicate only
that the two words in an overall phrase appear separately
in the website literature. In re Fitch IBCA Inc., 64
USPQ2d 1058 (TTAB 2002); TBMP § 1208.03. However, as shown
above, many of the examples clearly show the term “smart”
being used to modify transceivers to indicate automated
capabilities, and, as such, at a minimum, confirm what is
Serial No. 76300876
16
already established by the other evidence of record. The
determination that the term “smart” is merely descriptive
of applicant’s optical transceivers is supported by the
dictionary definitions of “smart” and applicant’s product
literature.
Viewing SMARTSFP as a whole, we find no merit in
applicant’s argument that the “composite mark SMARTSFP
creates a suggestive unique commercial impression.” Br. p.
10. The compression of these two descriptive terms is not
incongruous nor does it present a unique impression.
Applicant argues that “the combination of the allegedly
merely descriptive terms SMART and SFP creates the
suggestive composite mark SMARTSFP because the wide-breadth
and general nature of the term SMART, coupled with a
consumer’s unfamiliarity with SFP, requires mental pause
and thought.” Br. p. 13. As noted above, a consumer of
applicant’s products will be familiar with the abbreviation
SFP. Moreover, the term SMART is not broad and general as
used in connection with applicant’s goods but rather, in a
concise manner, informs the consumer that applicant’s
product has automated capabilities. The facts in this
record are distinguished from In re Hutchinson Technology,
Serial No. 76300876
17
supra7 where the Court found that the applicant’s
“concession that ‘technology’ is used on many goods similar
to those listed in Hutchinson’s application” (In re
Hutchinson Technology, supra, 7 USPQ2d at 1492) was not
sufficient to find the word “technology” merely descriptive
of the applicant’s goods, and that at most applicant’s
concession could indicate that it is a “weak mark for these
goods,” and that the Board “never considered what the
purchasing public would think when confronted with the mark
as a whole.” Id. The record before us contains dictionary
definitions and applicant’s product literature that
conclusively establish the mere descriptiveness of SMART
and SFP.8 Moreover, despite the fact that the terms are
presented as one word in the mark SMARTSFP, in the context
of these goods purchased by knowledgeable consumers, the
meaning of each term will be readily apparent and this
straightforward combination does not present any
incongruity. See In re Gould Paper Corp., supra.
7 Applicant, in its argument, also includes reference to a non-
citable decision. Applicant is advised that it may not cite to
decisions that have not been marked as citable precedent. In re
A La Vielle Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001).
8 We further note, that the issue before the Court in In re
Hutchinson was a surname refusal not a descriptiveness refusal,
and the Court remanded the case for entry of the disclaimer of
the word “technology.”
Serial No. 76300876
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Thus, we are persuaded that when applied to
applicant’s goods, the term SMARTSFP immediately describes,
without conjecture or speculation, a significant feature or
function of applicant’s goods, namely optical transceivers
that contain automated capabilities and are small form
factor pluggable. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for prospective consumers of
applicant’s goods to perceive readily the merely
descriptive significance of the term SMARTSFP as it
pertains to applicant’s goods.
Finally we do not have any doubt that this mark is
merely descriptive in connection with the identified goods.
In re Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992).
Decision: The refusal to register is affirmed.
