Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CRYOMEDICAL SCIENCES, INC.
Serial No. 74/238,772
September 15, 1994
Senior Trademark Examining Attorney
Law Office 11
(Thomas G. Howell, Managing Attorney)
Before Rice, Simms and Quinn
Administrative Trademark Judges
Opinion by Quinn
Administrative Trademark Judge
The Trademark Examining Attorney has refused registration under Section 2(e)(1) of the Act, 15 U.S.C. 1052(e)(1), on the ground that applicant's mark, when applied to applicant's goods, is merely descriptive. When the refusal was made final, applicant appealed. Applicant and the Examining Attorney have filed briefs. We affirm the refusal.
In the present case, the Examining Attorney submitted dictionary definitions of the term "smart." Webster's New World Dictionary of Computer Terms (3d ed. 1988) defines "smart" as follows: "Having some computational ability of its own. Smart devices usually contain their own microprocessors or microcomputers." The Examining Attorney also submitted excerpts from the NEXIS data base showing descriptive uses of "smart" in connection with various products having microprocessors. The Examining Attorney, in relying on the above evidence, contends that the applied-for mark is merely descriptive of cryosurgical probes with computational abilities.
Applicant, in urging that the refusal to register be reversed, argues that while applicant anticipates that its probe may include a microprocessor, it is not a requirement that a microprocessor be used. Applicant goes on to state that "the disposable nature of the devices and the fact that cryogenic probes are, by nature, compact items clearly argues against the inclusion of a relatively expensive component such as a microprocessor." (appeal brief, p. 6). Applicant also argues that the "lack of uniformity" of the trademark register indicates that the present refusal is "arbitrary." In this connection, applicant has submitted four third-party registrations, asserting that "they are at least evidence that the [Office] considers that 'SMART' marks do foster an indication of origin rather than functioning merely as a description of the goods and that this is the case even where the goods may contain, and are of a type where it is quite likely that they do contain, a microprocessor." (appeal brief, p. 9) (emphasis in original).
A mark is considered to be merely descriptive within the meaning of Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods on which it is used. It is not necessary that a mark describe all of the characteristics of the goods in order for it to be considered merely descriptive thereof; it is sufficient if the mark describes a significant attribute or idea about them. See: In re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215, 217-18 (CCPA1978). There is no dispute here that "probe" is descriptive of cryosurgical probes; in point of fact, throughout the prosecution of its application applicant referred to its product as a "probe." Rather, the crux of the disagreement between applicant and the Examining Attorney centers on whether "smart" is descriptive as applied to applicant's identified probes.
*2 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. Not only is "smart" listed, as referenced above, in computer dictionaries, but we take judicial notice of the following definition of "smart" found in The Random House Unabridged Dictionary (2d ed. 1993):
Informal. equipped with, using, or containing electronic control devices, as computer systems, microprocessors, or missiles: a smart phone; a smart copier.
The NEXIS excerpts submitted by the Examining Attorney include the following uses:
This feature has focused on the new smart, microprocessor-based metal detectors. (Prepared Foods, March 1992)
New "smart" refrigerators will likely contain microprocessors that would constantly monitor temperatures and make energy-saving adjustments to compressors. (Gannett News Service, July 16, 1992)
Slightly more than half of the sales will go to silicon-based sensors-devices sculpted in three dimensions using semiconductor batch-processing techniques. About one-third of the market will be captured by "smart" sensors, which incorporate microprocessors ... (Electronic Business, February 10, 1992)
But the same microprocessors that have revolutionized "smart" bombs and household appliances can also do "more than crunch numbers" for doctors.... (The Hartford Courant, February 7, 1992)
A smart card has the same general dimensions as a credit card and often has the same embossed lettering on the front and the familiar magnetic strip on the back. However, embedded in the card are a memory chip, microprocessor and other circuitry. (Computerworld, February 3, 1992)
Machine-readable cards that can communicate with computers come in many varieties, of which the top of the line are so-called smart cards, which include microprocessors to manipulate information. (Government Executive, July 1991)
In perhaps the ultimate manifestation of the "smart" house, there was the Smart Seat, a mic roprocessor-controlled bidet attachment for the toilet.... (The New York Times, January 25, 1990).
Accordingly, 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. Applicant, in describing its goods during the ex parte prosecution of its application, stated as follows:
Although we appreciate that the exact nature of the disposable probes has yet to be determined, the identification of goods, as listed in the application, is broad enough to include all types of disposable cryosurgical probes, including those containing electronic devices or microprocessors. Thus, we must presume that applicant's probes will include probes with electronic parts or microprocessors. Consumers will immediately perceive SMARTPROBE, when applied to such probes, as describing an important characteristic of those probes, namely that they are equipped with electronic control devices or microprocessors. See: In re Canron, Inc., 219 USPQ 820 (TTAB1983).
*3 As noted above, applicant has submitted four third-party registrations of marks which include, in part, SMART for goods which, according to applicant, may include a microprocessor. The registrations are as follows: SMARTKNIFE for laser calibrated corneal knife; [FN2] SMARTGUARD for electrical and scientific apparatus and condoms and surgical gloves and medical apparatus; [FN3] SMARTKEY for electronic monitor for ophthalmic photocoagulator probe; [FN4] and SMARTCATH for esophageal balloon catheters used to measure physiologic parameters in the esophagus. [FN5] These registrations offer little help in making a determination of the merits of this appeal. While uniform treatment under the Act is a goal, our task in this appeal is to determine, based on the record before us, whether applicant's mark is merely descriptive. As often noted by the Board, each case must be determined on its own set of facts. We are not privy to the records in the files of the cited registrations and, moreover, the determination of registrability of particular marks by the Trademark Examining Groups cannot control the result in another case involving a different mark for different goods.
Having said the above, we recognize that an argument can be made that the Office has taken in the past a different position with respect to marks of the nature of applicant's. We again would point to the recent proliferation of computers in every facet of daily life. Not so long ago the "computer" meaning of "smart" may have been known by only those in the computer field, whereas now that meaning of "smart" is likely to be commonly recognized and understood by others as reflected by the dictionary and NEXIS evidence.
In view of the above, we conclude that SMARTPROBE, when used in connection with "one time use, disposable cryosurgical probes," would be merely descriptive under Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.
Administrative Trademark Judges Trademark Trial and Appeal Board
FN2. Registration No. 1,423,749.
FN3. Registration No. 1,509,041.
FN4. Registration No. 1,618,627
FN5. Registration No. 1,658,125.