from: cohen, robert sent: 5/11/2020 5:31:29 pm to: ttab
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From: Cohen, Robert
Sent: 5/11/2020 5:31:29 PM
To: TTAB EFiling
CC:
Subject: U.S. Trademark Application Serial No. 86857587 - SMART KEYBOARD - N/A - EXAMINER BRIEF
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Attachment Information:
Count: 1
Files: 86857587.doc
United States Patent and Trademark Office (USPTO)
U.S. Application Serial No. 86857587
Mark: SMART KEYBOARD
Correspondence Address: JENNIFER INSLEY-PRUITT
DECHERT LLP
2929 ARCH STREET CIRA CENTRE
PHILADELPHIA, PA 19104-2808
Applicant: Apple Inc.
Reference/Docket No. N/A
Correspondence Email Address:
EXAMINING ATTORNEY’S APPEAL BRIEF
Applicant has appealed the examining attorney’s refusal to register “SMART KEYBOARD” on the
Supplemental Register, (“KEYBOARD” having been disclaimed), on the grounds of genericness per
sections 23 and 45 of the Trademark Act. 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq. The
examining attorney respectfully asks that the Board affirm the refusal.
I. FACTS
On December 22, 2015, applicant filed an application seeking to register “SMART KEYBOARD” on
the Principal Register for “Accessory for a handheld mobile digital electronic device that functions as a
protective and decorative cover, a keyboard, and a stand” in International Class 9.
On April 4, 2016, the examining attorney refused to register the mark under Section 2(e)(1) of
the Trademark Act on the grounds that the mark as a whole was merely descriptive of the characteristics
of the goods. Applicant was also required to amend and clarify the identification of goods.
On October 4, 2016, applicant responded by satisfying the requirement to amend and clarify the
identification of goods. Applicant also submitted arguments against the refusal.
On November 17, 2016, the examining attorney issued a final action for the Section 2(e)(1)
refusal arguing that “SMART KEYBOARD” was merely descriptive of the characteristics of the goods.
On May 16, 2017, applicant concurrently filed a notice of appeal with the Board and a Request
for Reconsideration. Applicant asserted for the first time that the mark had acquired distinctiveness
under Section 2(f) of the Trademark Act.
On June 28, 2017, the examining attorney rejected applicant’s Section 2(f) claim of acquired
distinctiveness. The examining attorney issued a new refusal under Sections 1, 2, and 45 of the
Trademark Act that “SMART KEYBOARD” was a generic term. The examining attorney also maintained in
the alternative that “SMART KEYBOARD” was merely descriptive of the characteristics of the goods under
Section 2(e)(1) of the Trademark Act. Applicant was also required to respond to a request for
information under 37 CFR §2.61(b).
On December 22, 2017, applicant filed a Response arguing that “SMART KEYBOARD” was not a
generic term. Applicant also responded to the examining attorney’s request for information.
On February 5, 2018, the examining attorney issued a final action on both the Sections 1, 2, and
45 genericness refusal and the alternative Section 2(e)(1) mere descriptiveness refusal, and rejecting
applicant’s claim of acquired distinctiveness under Section 2(f) of the Trademark Act.
On August 6, 2018, applicant filed a Request for Reconsideration amending the application to
the Supplemental Register, (with the aforementioned voluntary disclaimer of “KEYBOARD”), rendering
the alternative Section 2(e)(1) refusal moot. Applicant also submitted additional arguments and evidence
against the genericness refusal.
On October 2, 2018, a non-final Office action was issued refusing registration of “SMART
KEYBOARD” on the Supplemental Register under Sections 23(c) and 45 of the Trademark Act as being a
generic term.
On April 2, 2019, applicant filed a Response arguing the Section 23(c) genericness refusal.
On May 9, 2019, the examining attorney issued a final action under Sections 23(c) and 45 of the
Trademark Act arguing with additional evidence that “SMART KEYBOARD” is a generic term.
On November 12, 2019, applicant filed a Request for Reconsideration of the examining
attorney’s genericness refusal under Sections 23(c) and 45 of the Trademark Act.
On January 7, 2020, the examining attorney denied applicant’s Request for reconsideration of
the genericness refusal issued under Sections 23(c) and 45 of the Trademark Act. Applicant filed its
appeal brief on March 9, 2020 and on March 13, 2020, said brief was forwarded to the examining
attorney.
II. ARGUMENT
“SMART KEYBOARD” IS A GENERIC TERM FOR A GENUS OF KEYBOARDS FEATURING INTEGRATED TECHNOLOGY AND SOFTWARE.
A term is generic if the relevant public understands the term as referring to the category or
genus of the goods in question. In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497
(Fed. Cir. 2014); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ
528, 530 (Fed. Cir. 1986); see TMEP §1209.01(c). “[A] term [also] is generic if the relevant public
understands the term to refer to part of the claimed genus of goods or services, even if the public does
not understand the term to refer to the broad genus as a whole.” Royal Crown Co., Inc. v. Coca-Cola Co.,
892 F.3d 1358, 1367-68, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc.,
823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“the term ‘pizzeria’ would be generic for
restaurant services, even though the public understands the term to refer to a particular sub-group or
type of restaurant rather than to all restaurants”)).
Generic terms do not meet the statutory definition of a trademark because they are incapable
of indicating a particular source of goods and thus cannot be registered. In re Cordua Rests., Inc., 823
F.3d at 599, 118 USPQ2d at 1634 (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Generic terms, by definition incapable of indicating
source, are the antithesis of trademarks, and can never attain trademark status.”)); TMEP §1209.01(c).
The test for determining whether an applied-for mark is generic is its primary significance to the
relevant public. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553-54 (Fed. Cir.
1991) (citing In re Montrachet S.A., 878 F.2d 375, 376, 11 USPQ2d 1393-94 (Fed. Cir. 1989)). Making this
determination involves a two-step inquiry:
(1) What is the genus of goods at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of
goods?
In re Cordua Rests., Inc., 823 F.3d at 599, 118 USPQ2d at 1634 (citing H. Marvin Ginn Corp. v. Int’l Ass’n
of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i).
i. Defining the Genus
Regarding the first part of the inquiry, the genus of the goods may be defined by an applicant’s
identification of goods. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic
Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1552) (emphasis added); see also In re
1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009). The
genus of goods may also be distilled from other evidence. See In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1422 (Fed. Cir. 2005); In re DNI Holdings, Ltd., 77 USPQ2d 1435, 1438 (TTAB 2005); See
also 1 Gilson on Trademarks §2.02 (May 2020) (Subsection 6[a]).
In this case, applicant’s identification of goods helps to clarify the overall genus but itself does
not completely define it. The evidence points to “SMART KEYBOARD”, and close derivative forms of this
phrase, as being used to label a category of technologically advanced keyboard devices. Such devices fit
the definition of “SMART”, being an electronic gadget that has the ability to share and connect with
other devices, including through the use of software powering a piece of hardware, (Office Action of
November 17, 2016 at 8 referencing Technopedia; Office action of April 4, 2016 at 7-8, 15 referencing
dictionary evidence). Examples of different “smart keyboard” generic use include:
• AlwaysInnovating, featuring USB adapters and Bluetooth connectivity, (Office Act. of June 28, 2017 at 19);
• Das, featuring cloud enabled output, (Id. at 20-21);
• Zhon Lin Wang Smart Keyboard featuring technology that detects user typing habits for security purposes, (Id. at 23-24);
• Oneboard AC000 smart keyboard featuring an integrated computer that can run Android or Windows operating systems and has video capacity, (Office Act. of February 5, 2018 at 88-90);
• Samsung’s smart wireless keyboard featuring wireless connectivity and Bluetooth, (id. at 101-104);
• Belkin, featuring Bluetooth connectivity and ability to wirelessly communicate with multiple tablet devices, (id. at 145);
• Satechi’s Bluetooth Smart Wireless Keyboard featuring Bluetooth connectivity and media function keys, (id. at 149);
• ONHI smart keyboard featuring tablet connectivity, (id. at 171);
• Logitech Harmony, smart keyboard featuring ability to stream media, (Id. at 165. See also The New York Times article of July 5, 2001, Pogue, David, Less Than A Laptop, (discussing various technologically advanced “smart keyboards” including the Harmony as well as the
PC6, Alphasmart 3000, QuickPad, and Calcuscribe, (Denial of Req. for Recon. of January 7, 2020 at 7-9, taken from LexisNexis®))).
Applicant’s argues that the genus has been improperly defined and that the genus must be
represented by the wording in the identification of goods under Magic Wand. (Applicant’s Brief at 3-4).
Applicant’s argument is not persuasive. Magic Wand held that the first Marvin Ginn prong should focus
on the identification of goods. It does not require that this focus exclude all other evidence. The Federal
Circuit in Steelbuilding.com and also in In re Reed Elsevier Properties, Inc., 482 F.3d 1376, 82 USPQ2d
1378, 1379 (Fed. Cir. 2007), approved of defining the genus based not only on looking at, (i.e. focusing
on), the identification but also considering additional evidence. Under Steelbuilding.com and DNH
Holdings, the marketplace evidence of record, including the above examples, show ubiquitous use of
“smart keyboard” to define a category of keyboards featuring integrated technology.
Applicant’s identification of goods structurally places the keyboard element toward the end of
the description, but doing so does not otherwise alter the core nature of the goods. The Board in DNH
Holdings, rejected such a carve-out of the sort argued by applicant that the genus must be defined as a
tablet that also happens to feature a built-in keyboard. See DNH Holdings at 1437-38.
The keyboard and connective technology are the core features of the goods. Applicant’s own
website, along with reviews of applicant’s goods, focus on the keyboard as a reason consumers would
be interested in this product and confirm its primary importance. The evidence indicates that the goods
give users of the iPad the ability to input commands to the tablet via a familiar means, i.e. a traditional
physical keyboard, as opposed to touch screen keyboard. See, e.g.:
• http://www.apple.com/smart-keyboard, (Req. for Reconsideration of May 16, 2017 at 67, stating that “[f]or many, a keyboard remains a convenient way to put thoughts down
and get work done...” and “features innovative technologies that free you from switches, plugs, and even pairing. It’s a perfect blend of utility and portability”);
• Google search results discussing applicant’s products as being a MacBook keyboard built into a cover…and a device that allows users to input data wirelessly into an iPad tablet without using a touchscreen interface…, and also delivering a “great typing experience on a full size keyboard and front and back protection,” (Req. for Reconsideration of November 12, 2019 at 23).
Reviews of applicant’s goods, along with the content of applicant’s website confirm that the
primary purpose of the goods is to act as a keyboard. Similar to DNH Holdings, the Board should not
“turn a blind eye to the reality of what is being offered” nor should it restrict its “purview to the
recitation of [goods] in the application itself.” Id at 1437. To do so, would essentially ignore the
primary core feature of the goods in the identification. The evidence of record adequately
demonstrates that the “smart keyboard” genus is defined as a keyboard that features integrated
software and/or technology.
ii. The Relevant Public Understands That “Smart Keyboard” Primarily Refers To Keyboards Having Integrated Technology
As to the second part of the Marvin Ginn inquiry, the relevant public is the purchasing or
consuming public for the identified goods. The Loglan Inst. Inc. v. The Logical Language Grp., 962 F.2d
1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d at
640, 19 USPQ2d at 1553). In this case, the relevant public comprises ordinary consumers who purchase
applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of
consumers.
Applicant asserts that the examining attorney has not met the evidentiary burden to
demonstrate that consumers would understand “SMART KEYBOARD” to be the name of a genus of
goods. (Applicant’s Appeal Brief at 4). Applicant contends that if the term were truly generic, there
would be a greater quantity of evidence particularly from large chain retailers, and that the evidence
made of record by the examining attorney from a variety of sources is not competent. However, the
examining attorney’s evidence does in fact meet this burden.
The examining attorney has placed a large amount of evidence in the record which includes
news articles, point of sale displays, blog posts, computer hardware publications, patents, and published
patent applications. The evidence shows generic us of “smart keyboard” as a label for technologically
advanced keyboards in the years prior to applicant’s launch of its product, and ongoing to this day. The
examining attorney incorporates by reference and directs the Board’s attention to the evidence
described in Section i infra showing use of “smart keyboard” and the referenced New York Times Article
listing multiple “smart keyboards” produced by different companies. Additional examples in the record
of “smart keyboard” generic usage are:
a. Patents and Published Patent Applications
• Lin et al., Smart Keyboard, U.S. Patent Application No.: US20150029404, (published Jan. 29, 2015), (Office Action of Nov. 17, 2016 at. 46-47);
• Zhou et al., Portable Electronic Device, U.S. Patent Application No.: US20130154941, (published June 17, 2010), (Office Action of Nov. 17, 2016 at 49);
• Kramer, Multi-purpose Keyboard, U.S. Patent No.: 7091955, (issued August 16, 2006)(describing a “smart-keyboard” as having embedded Macros in the form of memory)(Office Action of Nov. 17, 2016 at 54);
• Hong, Super-slim touch keyboard and super-slim cover device for smart keyboard having the same, U.S. Patent No.: 9423836, (Issued Aug. 23, 2016 but filed on Feb. 13, 2015)(Office action of Feb. 5, 2018 at p. 24 2:39-41, p. 29);
• Crucs, Direct connection single user-interface control of multiple computers and displays, U.S. Patent No.: 8135889, (Issued March 13, 2012), (“The system 100 includes a smart keyboard device 110 (i.e., a peripheral computer device) storing a configuration map 116 and a computer mouse 120 (i.e., a peripheral computer device) operatively connected to the keyboard device.”)(Office action of Feb. 5, 2018 at 51-67, see, e.g.: 8:19, 8:22, 8:29, 8:33, 8:35-6; 8:40, 8:50, 9:23, 9:30, 9:34, 9:50-51, 9:65, 10:02, 10:04, 10:16; 10:45, etc.);
• Stoll, Computing device contact mitigation, Published U.S. Patent Application No.: US20170277287, (issued Sept. 28, 2017 but filed Sept. 26, 2014), (“The computing device 100 may comprise, for example, a notebook, detachable notebook/tablet, a smart keyboard, or another computing device that includes a keyboard and touchpad.”)(Office action of Feb. 5, 2018 at p. 75 at [2:0016]);
• Moser, Multitasking portable computer, Published U.S. Patent Application, US20120274565, (published November 1, 2012)(Office Action of October 2, 2018 at 50-53);
• Tang, Smart keyboard for computer and compact devices, Published U.S. Patent Application, 20130222254, (published August 29, 2013) (Office Action of May 9, 2019 at p. 19-23).
Section 112 of the Patent Act requires that a patent specification “contain a written description of the
invention, and of the manner and process of making and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same.” See 35 USC §112(a). The specification must employ the
commonly understood names of the invention and/or its elements unless otherwise defined in the
specification as patent applicants may act as their own lexicographer. See Manual of Patent Examining
Procedure (MPEP) §2173.05(a).
Additionally, the use of a trademark in a patent application is generally discouraged but can be
allowed in a patent if:
• (A) its meaning is established by an accompanying definition in the specification which is sufficiently descriptive, enabling, precise and definite such that a claim including the mark or trade name complies with the requirements of 35 U.S.C. §112, or
• (B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature.
See MPEP §608.01(v). In other words, if the mark itself is a common name, resulting in its being definite
for purposes of Section 112, then it is permissible to be present in the patent specification and not
capitalized. Id.
The patent evidence shows that “smart keyboard” is understood to be a common name for a
broad range of technologically advanced keyboards. None of the inventors acted as their own
lexicographer to re-define “smart keyboard” within the patents themselves, further reinforcing that
“smart keyboard” was a generally understood term prior to the launch of applicant’s products when
these patents and patent applications were filed and/or granted.
Genericness is the ultimate in descriptiveness. Weiss Noodle Co. v. Golden Cracknel and
Specialty Co., 290 F.2d 845, 129 USPQ411 (CCPA 1961); Marvin Ginn, 782 F.2d at 989, 228 USPQ at 530.
Therefore, it stands to reason that patents and published patent applications are competent forms of
evidence for evaluating genericness. See also In re Omniome, Inc. Serial No.: 87661190, ____ USPQ2d
____, 2020 BL 3222 (TTAB 2019)(precedential). Applicant’s contends that patents, (including those filed
through the Patent Cooperation Treaty (PCT)), cannot be considered as evidence in genericness refusals.
(Applicant’s Req. for Reconsideration of November 12, 2019 at 10-11). Applicant’s position runs
contrary to past Board practice.
The examining attorney provided examples of Board decisions in genericness cases wherein
patent evidence was considered. (See In re BioArray Solutions, Ltd., Serial No.: 78908764 (TTAB
2008)(non-precedential)(Genericness refusal of “BEADCHIP” affirmed and supported by third party
patents and patent applications); In re Sharp, Serial No.: 78765022 (TTAB 2009)(non-precedential)(Aff’d.
404 Fed. Appx. 501 (Fed. Cir. 2010))(affirming genericness refusal of “PHONECASTING” with the use of a
PCT patent application in support as evidence); In re General Kinematics Corp., Serial No.: 74366705
(TTAB 1999)(non-precedential)(affirming genericness refusal of “FINGER SCREENS” and rejecting
applicant’s arguments that patent evidence is not competent for genericness purposes. The examining
attorney referenced seven patents in the refusal). (Denial of Req. for Recon of January 7, 2020 with said
cases attached, at 84-98). The Board should also note the use of patent evidence in affirming a
genericness refusal in the recent decision in In re Fidelity Natl. Information Services, Inc., Serial No.:
87006159, (TTAB May 6, 2020)(non-precedential).
U.S. Patent evidence is therefore probative, including applicant’s own assigned patent,
(Sharavan, Variable response key and keyboard, U.S. Patent No.: US10234960, see Denial of Req. for
Reconsideration of January 7, 2020 at, e.g. 64-65 describing figures 1, 2, 8, and 9, and paragraph three
of the detailed invention description), wherein a U.S. law firm using a registered patent attorney
drafted the document using the term “smart keyboard” in the specification, something the Board found
pertinent in In re General Kinematics Corp. Id at 10-11. When taken together with the earlier
referenced dictionary definitions in the record for “SMART” and “KEYBOARD”, the wording in the patent
evidence is accorded its ordinary meaning, which is a keyboard featuring integrated software and/or
technology that has the ability to communicate with another device. Applicant’s comparison as to the
number of “smart keyboard” patents to the total number of keyboard patents listed in PAIR does not
erase or alter this ordinary meaning. Therefore, the patent evidence is probative.
b. Publication Evidence and Applicant’s Obscurity Argument
The examining attorney has also made of record a number of articles from a variety of
publications showing that “smart keyboard” would be understood by consumers to refer to a group of
technologically advanced keyboards. For example:
• Low, Aloysius, OneBoard to rule them all? This smart keyboard PC runs Windows or Android, published May 25, 2015 in CNet, (discussing AC000’s smart keyboard which carried a price range of $99-299 USD, (Office action of February 5, 2018 at 88-90);
• https://www.sciencedaily.com/releases/2015/01/150121103228.htm, Smart keyboard cleans and powers itself and can tell who you are, (Original publication of January 21, 2015 by the American Chemical Society), (Office action of February 5, 2018 at 91);
• Gaskell, Adi, Do We Really Need a ‘Smart Keyboard?’, (Published August 30, 2016 in DZone, (discussing the Internet of Things (IoT) and how this technology is being applied to devices, including keyboards, such as the Das keyboard. The top banner indicates that “[o]ver a million developers have joined DZone”)(Office Action of February 5, 2018 at 93-95);
• https://www.samsung.com/us/televisions-home-theater/television-home-theater-accessories/televisions/smart-wireless-keyboard-vg-kbd2500-za/, (“The Smart Wireless Keyboard is compatible with select Samsung mobile devices*. Connect to your smartphone or tablet with the wireless keyboard, and write text messages and emails more comfortably.”), (Office Action of February 5, 2018 at 101-104);
• Tam, Ruth, New ‘smart keyboard’ detects typist, (PBS News Hour of January 27, 2015), (Office action of February 5, 2018 at 109).
The examining attorney has also made of record newspaper articles obtained from the
LexisNexis® database wherein the authors use the term “smart keyboard” in a general sense to describe
advanced keyboards that feature integrated technology. For example:
• Ladendorf, Kirk and Lankes, Tom, Tanisys Signings Hint At Sales Rise, (published October 4, 1994 in the Austin American-Statemen), (Office action of May 9, 2019 at 10-11);
• Ellman, Greg, Gadgets any father (or anyone, really) would love, (published May 15 2014 in the Bradenton Herald), (Denial of Req. for Reconsideration of January 7, 2020 at 10-11);
• Howard, Lance, Ball State U. Report Results Inform Advertisers of Behavior During Commercials, (Published October 3, 2006 in the Daily News/University Wire, (describing the Alphasmart Dana that can detect touch and allows for users to observe changes in behavior of test subjects)), (Denial of Req. for Reconsideration of January 7, 2020 at 9);
• Transcript from NBC 13 WVTM in Birmingham, AL from October 6, 2014, discussing the features of the Satechi “Bluetooth Wireless Smart Keyboard” which retailed for approximately $55.00 USD. Id;
• The aforementioned article by David Pogue in the New York Times which was published on July 5, 2001 and discussing different “smart keyboards” then in the market, (id at 7-9);
• Ellman, Greg, Must-Have Gadgets for College, (published September 11, 2015 in the Dayton Daily News, (discussing the Satechi “smart keyboard” which is compatable with Mac and PC computers), (Office Action of June 28, 2017 at 9-10); and,
• Greene, Tim, Windows 8 Update: Microsoft Sets Oct. 26 Release Date, (published July 19, 2012 in Network World, (labeling as “smart keyboards” a group of keyboard devices that can be used with a Microsoft Tablet), (id. at 13).
The examining attorney has also submitted evidence of computer peripheral devices paired
with the term “SMART” to demonstrate that such goods are understood by consumers to refer to a
technologically advanced genus of the basic peripheral, See, e.g.:
• https://www.trendhunter.com/trends/smart-computer-mouse (smart mouse), (Office action of February 5, 2018 at 110-111);
• https://www.computeralliance.com.au/thermaltake-ttesports-theron-plus-smart-mouse-pn-mo-trp-wdlobk (smart mouse), (id. at 112-113);
• http://smartandhealth.com/index.php/homepage-2/95-talent/786-cogniwin-a-new-way-of-working (smart mouse), (id.. at 114-118); and,
• http://gadgetsandwearables.com/2017/08/03/smart-rings/ (discussing smart rings but also listing a wide array of categories of “smart” computer compatible gadgets, such as smartwatches, smart scales, smart glucometers), (Id. at 119 – 131).
The evidence in this case shows that “SMART KEYBOARD,” and close derivations thereof, refers
to keyboards featuring technology that allows for electronic control and connection with another
device, such as a microprocessor, software, wireless technology, conductive materials, etc.. The
evidence also shows that the term “SMART” is used in direct connection with a variety of computer
peripherals, including computer mice, and wearables that feature novel and non-traditional connectivity
with their parent device and are not seen by consumers, as source identifiers.
Use of a term as an adjective or adjectival phrase does not prevent that term from being
generic if it refers to the relevant genus or category of goods. See In re Serial Podcast, LLC, 126 USPQ2d
1061, 1068 (TTAB 2018) (quoting TMEP §1209.01(c)(ii) and cases cited therein). Thus, an adjective or
adjectival phrase may be generic if it denotes a narrower subcategory of the identified goods. See, e.g.,
In re Northland Aluminum Prods. Inc., 777 F.2d 1556, 1560, 227 USPQ 961, 964 (Fed. Cir. 1985) (holding
BUNDT generic for ring cake mixes); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1959 (TTAB
2018) (holding MECHANICALLY FLOOR-MALTED generic for malt used for brewing and distilling and for
processing agricultural grain); TMEP §1209.01(c)(ii). In applicant’s wording, “SMART” acts as just such a
generic adjective in combination with “KEYBOARD” for the sub-category of keyboards featuring
integrated technology.
Consumers would identify the genus of goods via the mark as keyboards featuring connective
technology, irrespective of whether the physical keyboard is embedded in a device cover. The evidence
made of record by the examining attorney shows that the term “smart keyboard” has been used in a
general manner to describe keyboards featuring different types of technology and/or integrated
software. Much of this evidence pre-dates the 2015 release of applicant’s products and continues to
this day.
Applicant takes issue with the evidence arguing that much of it is obscure as it does not come
from a large national publication, such as The New York Times, and therefore has a smaller footprint by
comparison. The argument is not persuasive as it would exclude local and regional publications which
serve the same bodies of consumers, be it college students, general consumers, engineers, doctors, or
other general or sophisticated consumers that purchase applicant’s goods. Websites, newspaper
articles and publications are generally a competent source for determining how the public perceives the
mark in connection with applicant’s goods. See In re N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d
1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir.
1986)); TMEP §1209.01(b). This also includes evidence taken from LexisNexis®. See In re The Boulevard
Entm’t, Inc., 334 F.3d 1336, 1342-43, 67 USPQ2d 1475, 1479 (Fed. Cir. 2003); In re Giger, 78 USPQ2d
1405, 1407 (TTAB 2006); TBMP §1208.01; TMEP §710.01(a)-(b). The publication articles made of record
by the examining attorney have U.S. readership, are accessible to U.S. consumers and are therefore
probative.
The examining attorney has also made of record multiple other generic uses of “smart
keyboard” by marketplace competitors, including some for sale off Amazon.com and other electronic
goods retail sites. Applicant argues that this evidence must be discounted as it is not from a large chain
retailer. This is unpersuasive for the same reasons in that as long as the evidence shows non-source
identifying use, the evidence is relevant to assessing consumer perception. There is no per se rule that
only evidence from a large nationwide retailer can be acceptable evidence in a genericness case.
The foreign sourced evidence in the record, which is comprised of seven sources out of a much
larger record of evidence, carries probative weight. All of the evidence is in the English language and is
accessible over the internet from the United States and use the “smart keyboard” term in a generic,
non-source identifying manner.
English language material obtained from foreign websites or foreign news publications has
been accepted as competent evidence in trademark examination when it is likely that U.S. consumers
have been exposed to the website or news publication. See In re Bayer AG, 488 F.3d 960, 969, 82
USPQ2d 1828, 1835 (Fed. Cir. 2007) (finding foreign website or foreign news publication evidence
carries some probative value as to prospective consumer perception in the United States because of the
“growing availability and use of the internet as a resource for news, medical research results, and
general medical information”); In re IBM Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006) (finding foreign
website evidence probative for computer hardware because professionals in highly technical fields such
as medicine, engineering, computers, and telecommunications are likely to utilize all available resources,
regardless of country of origin or medium); TBMP §§1208.01, 1208.03; TMEP §710.01(b).
The subject matter of the articles, “smart keyboards” are part of the larger computer hardware
universe and something that many large computer companies sell globally, including applicant. Several
of the articles discuss a “smart keyboard” product with pricing in U.S. Dollars, have staff writers within
the United States, tout that their readership is in the United States, or keyboards that interact with
software operating systems that are used globally, such as Android.
This is not a comparable situation to In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261 (TTAB
2011), cited by applicant, which involved a wine versus beer comparison for a Section 2(d) refusal. It
was not clear in that case whether the goods represented in the questionable piece of evidence was
even available in the United States. Kysela is distinguishable as applicant’s listed goods are sold globally,
(including in the United States), as is typical with computer products. The Board should accord this
grouping of evidence probative weight.
c. Other “SMART”- Formative Marks
Applicant also argues that “SMART” is not a per se descriptive or generic term. (Applicant’s
Brief at 16). The examining attorney does not disagree with this point but has never argued such a
position. Rather, the term “SMART” in the context of the goods in the application are generic.
Applicant has provided a number of statistics and examples derived from the USPTO’s
identification manual, the USPTO’s TESS database, and a search from Corsearch in an attempt to show
that “SMART” is not generic based on the presence of other third-party “SMART” formative marks. The
argument is not persuasive as this evidence establishes nothing about “SMART KEYBOARD”. Rather this
evidence addresses other types of goods, and in the case of applicant’s database evidence, provides no
context as to what the underlying goods are for those marks.
Mere submission of a list of registrations or a copy of a private company search report does not
make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400,
1405 n.17 (TTAB 2018); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP
§710.03. Applicant’s argument runs contrary to the holding in Nett Designs that each application must
be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions
involving different records.
Applicant has also made a number of other “SMART” formative marks of record which cover a
variety of Class 9 goods. Applicant contends correctly that none of the marks set forth in its Brief were
found to be generic. (Applicant’s Brief at 17). The argument that these third-party registrations show
by analogy that “smart keyboard” is not generic and therefore registrable runs afoul of the rule that
third-party registrations which exist for marks allegedly similar to applicant’s mark are not conclusive on
the issue. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a).
The examining attorney’s evidence of record points to “smart keyboard” being generic in the context of
the goods. For these reasons, applicant’s third-party “SMART”-formative registration evidence is not
persuasive.
d. Applicant’s Market Saturation Argument
Applicant argues that “smart keyboard” is not generic since its advertising efforts and market
saturation has made consumers connect “SMART KEYBOARD” as a source identifier with applicant. The
argument is not persuasive as it is axiomatic that generic terms cannot be transformed into non-generic
ones saturating the marketplace with advertising. See In re Log Cabin Homes, 52 USPQ2d 1206 (TTAB
1999); In re Tibbals Flooring Co., 135 USPQ 374 (TTAB 1962); In re IBM Corp, 81 USPQ2d at 1684
(quoting Continental Air Lines, Inc. v. United Airlines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999); See also 2
McCarthy on Trademarks and Unfair Competition §12:11 (5th Ed. 2018).
Even if applicant is, or was, the “first user” of “SMART KEYBOARD”, (which the evidence shows
they are not based upon the evidence that predates the launch of its goods), this in and of itself does
remove the wording from the realm of genericness. The fact that an applicant may be the first or only
user of a generic designation is not dispositive on the issue of genericness. See In re Empire Tech. Dev.
LLC, 123 USPQ2d 1544, 1549 (TTAB 2017) (quoting In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083
(TTAB 2010)); TMEP §1209.03(c).
e. Applicant’s Companion Goods Argument
Applicant has asserted that the success of its iPad tablet is evidence that “SMART KEYBOARD”
is not generic, even though “SMART KEYBOARD” is not the name of the iPad tablet. Applicant states
that it has sold 130 million iPads since the introduction of the “SMART KEYBOARD” product and
discusses the popularity of the iPad. (Applicant’s Brief at 17-19). This evidence is immaterial for
genericness purposes, and is speculative in nature as it focuses on consumer perception of a different
mark for different goods than those subject to this application. Applicant has never explained how its
“IPAD” mark on its tablets impacts the way consumers view and understand “SMART KEYBOARD”. The
argument is not persuasive.
f. Applicant’s Family of “SMART” Marks Argument
Applicant’s references to its own “SMART” family of marks, (Applicant’s Brief at 18) also is not
probative for genericness purposes. Aside from the fact that the Board is not bound by examining
attorney decisions in other cases and that each case must be evaluated based on its own merits, the
family of marks doctrine is not applicable as the doctrine requires that a mark be distinctive, In re LC
Trademarks, Inc., 121 USPQ2d at 1204 (quoting Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103,
1109 (TTAB 2016))(emphasis added); see TMEP 1212.06(e)(v). Such is not the case here. By applicant’s
own admission by amending to the Supplemental Register, “SMART KEYBOARD” is not inherently
distinctive. Such inherent distinctiveness is a requirement under the doctrine. The argument is not
persuasive.
g. Applicant’s Dictionary Argument
Applicant argues that if “SMART KEYBOARD” were truly generic, it would be found in technical
or general dictionaries in the same manner that “smartphone” and “smartwatch” are. (Applicant’s Brief
at 19). This argument is also not persuasive since the fact that a word or term is not found in the
dictionary is not controlling on the question of registrability. In re Hikari Sales USA, Inc., 2019 USPQ2d
111514, at *8 (TTAB 2019) (citing In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1603 (TTAB 2014);
In re Dairimetics, Ltd., 169 USPQ 572, 573 (TTAB 1971)); TMEP §1209.03(b); see In re Gould Paper Corp.,
834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987).
Conclusion
The evidence of record demonstrates that the first Marvin Ginn, prong identifies the genus of
goods as being computer keyboards having integrated technological features. Under the second Marvin
Ginn prong, the examining attorney’s evidence shows generic use of “smart keyboard” such that
consumers would recognize it as the name for such types of keyboards. Based on the foregoing, the
trademark examining attorney has established by clear and convincing evidence that the applied-for
mark is generic; thus the USPTO’s evidentiary burden has been met. In re Hotels.com LP, 573 F.3d 1300,
1302, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009); TMEP §1209.01(c)(i). Applicant’s arguments and
evidence do not rebut the examining attorney’s prima facie showing. The examining attorney
respectfully asks that the Board affirm the refusal of “SMART KEYBOARD” on the Supplemental Register
with the disclaimer of “KEYBOARD”, under Sections 23(c) and 45 of the Trademark Act.
Respectfully submitted,
/Robert Andrew Cohen/
Trademark Examining Attorney
Law Office 103
Ph: (571) 270-1389
Stacy Wahlberg
Managing Attorney
Law Office 103
Ph: (571)-272-9441