PointCast Inc.

Trademark Trial and Appeal Board

Aug 24, 1999

No. 75022018 (T.T.A.B. Aug. 24, 1999)

Paper No. 17
BAC
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB AUG. 24, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re PointCast Incorporated
________
Serial No. 75/022,018
_______
Andrew P. Bridges of Wilson Sonsini Goodrich & Rosati for
PointCast Incorporated
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney)
_______
Before Simms, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
PointCast Incorporated has filed an application to
register the mark SMARTSCREEN for “computer software, and
manuals sold as a unit, for dynamically composing a script-
based animation in which news headlines, stock information,
and other content are combined with graphics and
Ser. No. 75/022018
2
advertisements to form a presentation of useful
information”.1
The Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e), on the grounds that applicant’s mark is
merely descriptive of applicant’s goods, or alternatively,
that the mark is deceptively misdescriptive of applicant’s
goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse.
The Examining Attorney essentially contends that
“‘smart screen’ describes a computer screen which would be
able to process information or respond appropriately to
changing stimuli” (brief, p.4); and that “unlike ordinary
screen saver programs which display dumb (or
noninteractive) screens,” applicant’s computer software
screen saver program “creates smart screens which can
respond to user requests for further information” (brief,
p. 6), and therefore the mark describes a significant
aspect of the goods. Alternatively, the Examining Attorney

1 Application Serial No. 75/022,018, filed November 20, 1995.
The application is based on applicant’s bona fide intent to use
the mark in commerce.
Ser. No. 75/022018
3
argues that, because applicant contends its goods are not
“smart” in the sense generally ascribed to computer goods,
and because consumers would have a reasonable expectation
that that applicant’s goods would possess the generally
understood “smart” characteristics, the mark is deceptively
misdescriptive.
The evidence submitted by the Examining Attorney in
support of her refusals consists of five computer
dictionary definitions, and seven stories obtained from the
Nexis database (one story reprinted in full2 and six
excerpted stories3).
Applicant, on the other hand, maintains that the mark
SMARTSCREEN is suggestive, not descriptive or
misdescriptive of applicant’s goods; that the term SMART is

2 This story is identified as from “PR Newswire,” and labeled
“Distribution: To Business and Technology Editors.” It is
unclear if this story is from a wire service or if this story was
available in a printed publication. Wire service articles are of
limited probative value in assessing the reaction of the public
to the term applicant seeks to register because evidence from a
proprietary news service is not presumed to have circulated among
the general public. Even if this item actually appeared in a
printed publication in general circulation, our decision would
remain the same.
3 Two of the six excerpted stories were from foreign
publications, and therefore are of little probative value because
it cannot be assumed that foreign uses had any material impact on
the perceptions of the public in the United States. See In re
Manco Inc., 24 USPQ2d 1938 (TTAB 1992).
Another of the Nexis excerpts was a headline only with no
textual story at all. (“Headline: Smart Screens Help Out Dumb
Users,” Computer Technology Review, July 1992.) Obviously, with
no textual article it is impossible to draw any conclusions from
this submission.
Ser. No. 75/022018
4
subject to numerous interpretations as evidenced by
Webster’s Ninth New Collegiate Dictionary (1988) with
meanings as varied as “mentally alert, knowledgeable,
spirited, witty, stylish, saucy, sophisticated, operating
by automation, or having part of the processing done by a
microcomputer”; that within the computer field, the term
has come to have a more narrow meaning most like the last
meaning involving processing done by microcomputer; that
applicant’s goods are not screens for computer or video
monitors, and the term “screen” in applicant’s mark is a
suffix merely suggesting a feature of applicant’s
“updatable ‘screensaver’ software”; that the mark
SMARTSCREEN, considered in its entirety, does not convey an
immediate idea of the qualities of applicant’s goods4; and
that the present refusal is improper in view of the Patent
and Trademark Office’s allowance of other marks which
include the term SMART5.

4 Applicant’s application is based on intent to use, but the
record is clear that applicant has commenced use of the mark. In
fact, applicant submitted about 100 excerpted Nexis stories to
show that the public views SMARTCREEN as applicant’s trademark,
not as a descriptive term. Even without considering the stories
from newswires, foreign press and repeated stories, there are a
significant number of such stories. Based on these Nexis
stories, applicant offered an alternative amendment to seek
registration under Section 2(f). The Examining Attorney stated
this was “not appropriate” in an application filed under Section
1(b), and applicant did not pursue the issue. See TMEP §1212.09.
5 Applicant submitted a Trademarkscan database search report
assertedly showing 119 “marks for software registered on the
Ser. No. 75/022018
5
Applicant further contends that the mark does not
misdescribe the goods in view of the numerous meanings of
the term SMART, and its suggestion of utility in connection
with the involved goods; that the term SMARTSCREEN is
certainly not understood by today’s consumers as being
equipped with a microprocessor because applicant’s goods
are software, not hardware, products; that the Examining
Attorney did not meet the burden necessary to demonstrate
that applicant’s mark is unregisterable under Section
2(e)(1); and that doubt must be resolved in applicant’s
favor.
A term is considered merely descriptive, and therefore
unregisterable pursuant to Section 2(e)(1), if it
immediately conveys knowledge or information about the
qualities, characteristics, or feature of the goods on
which it is used or intended to be used. On the other hand
a term which is suggestive is registerable. A suggestive
term is one which suggests, rather than describes, such

Principal Register that contain and do not disclaim the word
‘smart.’” Generally, mere listings of third-party registrations
are insufficient to make them of record. See In re Consolidated
Cigar Corp., 35 USPQ2d 1290 (TTAB 1995); and In re Duofold, 184
USPQ 638 (TTAB 1974). However, the Examining Attorney has not
objected to the evidence and thus, it will be treated as of
record for whatever probative value it may have. We note that
the listing includes no information as to matters such as the
registration dates, registrants, or the current status of the
registrations.
Ser. No. 75/022018
6
that imagination, thought or perception is required to
reach a conclusion on the nature of the goods. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
The test for determining whether a term is deceptively
misdescriptive as applied to the goods involves a two-part
determination of (1) whether the matter sought to be
registered misdescribes the goods, and (2) whether anyone
is likely to believe the misrepresentation. See In re
Quady Winery, Inc., 221 USPQ 1213 (TTAB 1984).
The initial computer dictionary definition of “smart”
submitted by the Examining Attorney in this case refers to
an independent computational ability and usually including
its own microprocessor. In the case of In re Cryomedical
Sciences Inc., 32 USPQ2d 1377, 1379 (TTAB 1994), the Board
stated “we find that consumers for applicant’s probes would
readily understand that SMART, as would be used in
SMARTPROBE, refers to an electronic or microprocessor
component of the probes.” Moreover, the second computer
dictionary definition of “smart,” referring to
“intelligent” leads to the computer dictionary definition
of “intelligence.” This definition is considered not only
with regard to that portion of the definition relating to
“reasoning and logic” which was utilized by the Examining
Attorney (stimulating human thought and responding to
Ser. No. 75/022018
7
changing stimuli), but it is also considered with regard to
the portion relating to computer software. “Intelligence”
as defined “in relation to software” is “the ability of a
program to monitor its environment and initiate appropriate
actions to achieve a desired state. For example, a program
waiting for data to be read from disk might do another task
in the meantime to achieve high performance.” Thus, the
record before us shows many definitions of “smart,”
virtually all of which are commonly understood by the
purchasing public.
The Examining Attorney’s sparse excerpted evidence
from Nexis follows:
(1) “...The Application Server provides the
business rules and logic to the Web
application. The HTML Generator
provides “smart” screen presentations
that dynamically change based on the
value of the data provided by the
application server. For further
development productivity, MagicWeb
comes with templates that help in
controlling page content and structure.
An Auditor features logs documents and
browser...,” M2 Communications,
December 11, 1996;
(2) “Headline: Christopher Hassett,
PointCast” “...What other changes have
been made? In version 1.1 you’ll see a
variety of new content. You’ll see a
new look and feel to all of the smart
screens. Moving through the summer,
you’ll see the MacIntosh opened up. In
September, we’ll have yet another
release, coincident with the Iserver
Ser. No. 75/022018
8
product that’s going out....,” Upside,
September 1996; and
(3) “...inclusive. C++ will often be the
language in which components are
written, a common macro language will
be the glue at the solutions level, and
the middle level will (or should)
include tools as diverse as neural
nets, database agents, genetic
algorithm libraries, and smart screen
painters....,” AI Expert, May 1993.
The full article submitted by the Examining Attorney
is dated February 13, 1996, and carries the headline “CMP
Becomes First Technology Information Provider On
Pointcast.” The portion relied upon by the Examining
Attorney is reproduced below:
“After the software has been initially
downloaded, PCN will offer a level of interactivity
unsurpassed in Internet technology. When a user’s
computer is not in use, PCN Smart Screens (TM) will
automatically appear, displaying headlines indicating
the latest news items on a variety of channels,
including a rolling stock ticker. For technology
news, the PCN Smart Screen will display CMP’s
Technology Channel, where users can get an abstract on
a news story. Full text of the articles will be
available on CMP’s TechWeb.”
Applicant points out that the full story article
refers to applicant’s product and uses a “TM” within the
story; that one of the excerpted stories is also about
applicant and its product, through an interview of the
chairman of the company, Christopher Hassett; and that the
other excerpted stories appear to discuss a feature of
Ser. No. 75/022018
9
software development tools, none of them involving or
discussing a product like applicant’s screen saver program.
The Examining Attorney’s argument that the term
describes computer screens is inapposite. Applicant’s
goods are not computer screens. Rather, applicant’s goods
are computer software programs which are screen saver
programs. In the Cryomedical case, supra, the Board held
SMARTPROBE merely descriptive of disposable cryosurgical
probes, but the term SMART preceded and thus modified, in
the adjectival sense, the generic name for the goods. In
the case now before us, applicant did not apply for the
mark SMARTSCREENSAVER for its goods or for the mark
SMARTSCREEN for screens for computer video monitors. Thus,
there is a different situation.
The goods in this case, being computer software
(essentially a screen saver program), do not contain a
microprocessor. There is not sufficient evidence of record
to establish a prima facie case that purchasers of computer
software would expect (erroneously) that software could or
would contain a microprocessor. See U.S. West Inc. v.
BellSouth Corp., 18 USPQ2d 1307 (TTAB 1990). See also, 2
McCarthy, McCarthy on Trademarks and Unfair Competition,
§§11:19 and 11:58 (4th ed. 1999).
Ser. No. 75/022018
10
The burden of proving that applicant’s mark is merely
descriptive or alternatively that it is deceptively
misdescriptive rests with the Examining Attorney. The
dictionary definitions of the terms “screen,” “screen
saver,” “smart” and “intelligence” do not show that the
term SMARTSCREEN has a readily recognized meaning with
regard to the involved goods. We find that it is simply
unclear whether the term SMARTSCREEN is merely descriptive
of applicant’s computer software.
When doubt exists as to whether a term is merely
descriptive or deceptively misdescriptive, it is the
practice of this Board to resolve doubts in favor of the
applicant and pass the application to publication. See In
re Gourmet Bakers Inc., 173 USPQ 565 (TTAB 1972). In this
way, anyone who believes that the term is, in fact,
descriptive or misdescriptive, may oppose and present
evidence on this issue to the Board.
Decision: The refusals to register the mark as merely
Ser. No. 75/022018
11
descriptive or alternatively, as deceptively
misdescriptive, both under Section 2(e)(1) of the Trademark
Act, are reversed.
R. L. Simms
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal