Alpha Equipment Services Inc.

Trademark Trial and Appeal Board

Feb 2, 2012

No. 77943347 (T.T.A.B. Feb. 2, 2012)

Mailed: February 2, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alpha Equipment Services Inc.
________

Serial No. 77943347
_______

James R. Eley of the Eley Law Firm for Alpha Equipment Services
Inc.

Helene Liwinski, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Bucher, Ritchie, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

Alpha Equipment Services Inc. (“applicant”) filed an
application to register the mark SMART VAC in standard character
form for “manufacture of industrial vacuum vehicles to order
and/or specification of others” in International Class 40.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(e)(1) of the Trademark Act,

1 Serial No. 77943347, filed February 24, 2010, alleging February 3,
2010, as the date of first use anywhere and in commerce, with a
disclaimer of VACCUUM.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77943347
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15 U.S.C. § 1052(e)(1), on the ground that the mark is merely
descriptive of applicant’s identified services.
Upon final refusal of registration, applicant filed a
timely appeal and request for reconsideration which was denied.
Both applicant and the examining attorney filed briefs. For the
reasons discussed herein, the Board affirms the refusal to
register.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a significant 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
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, significant ingredient, quality,
characteristic, function, feature, purpose or use of the goods
or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). It is enough if the term describes only one
significant function, attribute or property. In re Oppedahl &
Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir.
2004).
Serial No. 77943347
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Applicant does not dispute the descriptive significance of
the term “vac” as an abbreviation for “vaccum.” Rather, the
central issue on appeal is whether the term “smart” when used in
combination with “vac” is merely descriptive. The Board has
previously found the term “smart” to be merely descriptive of
automated devices. See e.g., In re Finisar Corp., 78 USPQ2d
1618 (TTAB 2006) (holding SMARTSFP descriptive of optical
transceivers); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18
(TTAB 2002) (holding SMARTTOWER merely descriptive of commercial
and industrial cooling towers and accessories therefor, sold as
a unit). By logical extension, the term “smart” when used in
connection with manufacturing services involving the production
of an item which includes automated devices may be descriptive
as well. We find that based on the evidence of record,
applicant’s mark immediately conveys to prospective purchasers a
significant feature of the identified goods, namely that
applicant manufactures for others industrial vaccum vehicles
which include “smart” (or mechanized) components.
The dictionary definitions submitted by the examining
attorney support this finding. The word “smart” is defined as:
“operating by automation ”
www.merriam-webster.com.

Serial No. 77943347
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This is confirmed by applicant’s own specimen of use
consisting of a [print out one word?] from applicant’s website
describing the services reprinted below:

Serial No. 77943347
5
As the excerpt from applicant’s website indicates,
applicant’s services involve the manufacture of industrial
vacuum trucks with various “smart” features, namely,
increasing “safety by adding as standard equipment an 8”
vacuum release valve and an extra shut off switch. Both
safety items can be crucial if an incident occurs that
requires a unit to be shut down immediately;” and

including a “revolutionary advance cyclone that produces
more air flow with less fuel consumption. Less fuel
consumption not only saves you money but is also good for
the environment by creating fewer emissions.”

Applicant contends that the term “smart” is not descriptive
because it refers to “the consumer’s ‘smart’ choice in electing
to purchase a simply engineered, cheaper to buy, more efficient
to operate, safer and greener vehicle directly from the
applicant.” Applicant’s Brief, p. 5. Applicant further
maintains that the fact that applicant’s products contain some
electronic or automated components does not rise to the level of
“smart.”
We acknowledge that applicant’s specimen uses the term
“smart” to also mean an intelligent consumer choice for
marketing purposes. However, merely because the word “smart” is
used in another context to advertise applicant’s services does
not obviate the descriptive significance of the term. Such an
argument would only be availing if applicant’s services did not
involve the manufacture of vacuum vehicles with smart or
automated components. However, as noted above, this is not the
Serial No. 77943347
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case. Applicant’s own website touts the added safety features
and “revolutionary” cyclone, all components which are automated
in nature.
In addition, we disagree with applicant that the
combination of the words “smart” and “vac” rises to the level of
evoking a new and unique commercial impression. In this
particular case, each word retains its descriptive significance
in relation to applicant’s services, resulting in a composite
mark that is itself descriptive. See e.g., In re Oppedahl,
71 USPQ2d at 1370 (PATENTS.COM merely descriptive of computer
software for managing a database of records that could include
patents and for tracking the status of the records by means of
the Internet).
The examining attorney has also made of record dictionary
definitions of the term “smart” in the context of computer
technology to mean “aimed, guided, and controlled precisely,
through the use of computer technology,” “programmed in advance
with certain features, as navigation information or sensing and
self-correcting functions” “smart machines, especially weapons,
use computer technology to make them effective.” See MacMillan
and Webster’s New World College Dictionary. Applicant, however,
maintains that the industrial vacuums it manufactures “do not
employ any software, microprocessors or additional automation
that is not present in any other industrial vacuum vehicle.”
Serial No. 77943347
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Applicant’s Brief, p. 3. Irrespective of applicant’s assertion,
applicant’s recitation of services is sufficiently broad to
encompass the manufacture of industrial vacuum vehicles
featuring “smart” computer technology. Almost two decades ago,
this Board held that “[i]t 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). The examining
attorney has made of record evidence obtained from third-party
websites that include reference to other types of industrial
vehicles employing “smart” technology. Thus based on the
recitation of services, the term “smart” is descriptive of the
overall capabilities of the vacuum vehicles featured in
applicant’s services, namely that the vehicles include through
the use of computer technology, certain features, such as
navigation information or sensing and self-correcting functions,
or any combination of other “smart” features.
Applicant further argues that other “smart” registrations
have issued on the Principal Register. However, vocabulary used
in the computer and electronics fields is particularly noted for
changing rapidly. In re Styleclick.com Inc., 57 USPQ2d 1445,
1448 (TTAB 2000) (noting “a year or two is an eternity in
‘Internet time,’ given the rapid advancement of the Internet
Serial No. 77943347
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into every facet of daily life”). A term that was once
arbitrary or suggestive may lose its distinguishing and origin-
denoting characteristics through use in a descriptive sense over
a period of time, and come to be regarded by the purchasing
public as nothing more than a descriptive designation. In re
Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re
Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976). Accordingly,
an applied-for mark that is merely descriptive does not become
registrable simply because other similar marks appear on the
register. In re Scholastic Testing Serv., Inc., 196 USPQ 517
(TTAB 1977).
Decision: The refusal to register under Section 2(e)(1) is
affirmed.