Animatics Corp.

Trademark Trial and Appeal Board

Jan 11, 1999

No. 74529244 (T.T.A.B. Jan. 11, 1999)

Paper No. 15
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 11, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Animatics Corporation
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Serial No. 74/529,244
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Amy L. Gilson and Joseph D. Hernandez of Wise & Shepard LLP
for Applicant.
Richard A. Straser, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Seeherman, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Animatics Corporation has filed an application to
register the mark "SMARTMOTOR" for an "apparatus for
Ser No. 74/529,244
2
controlling robotic machines, namely, electric motors with
built-in controls."1
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive of the goods.
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
The sole question to be determined herein is whether
"SMARTMOTOR" is descriptive of a characteristic, intended
purpose, function, or use of applicant’s goods as contended
by the Trademark Examining Attorney2; or whether, as urged
by appellant, the mark "should be considered suggestive” of
the goods.
We must consider the question of descriptiveness under
Section 2(e)(1) with respect to the goods as stated in the
application, i.e., apparatus for controlling robotic

1 Serial No. 75/529,244, in International Class 7, filed May
25, 1994, based upon an allegation of a bona fide intention to
use the mark in commerce; amendment to allege use filed on April
5, 1995, claimed dates of first use of December 7, 1994.
2 The standard for refusal under Section 2(e)(1) is mere
descriptiveness. At various points, applicant cites to cases and
principles dealing with the capability of alleged generic matter.
The Examining Attorney does not have the same burden herein as
would be the case if the issue were genericness under Section 23
of the Lanham Act. Cf. In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
Ser No. 74/529,244
3
machines, namely, electric motors with built-in controls.
It is clear from the application and information placed in
the file during examination that the goods in question are
"electric motors," usually designated simply as "motors,"
in the field of robotics.
The Trademark Examining Attorney contends that
“SMARTMOTOR” is merely descriptive of electric motors with
built-in controls because it immediately and directly
conveys the information that the motors are controlled by a
microprocessor. In support of his position, the Trademark
Examining Attorney has made of record more than a hundred
NEXIS excerpts of news stories and patent documents showing
a variety of uses of the combination of the word “smart”
immediately before the word “motor”. A representative
sample is shown below:
“. . . Baldor Electric Co., Ft. Smith,
Ark., hopes to prove the doubters wrong
when it begins producing a family of
‘smart motors’ with integrated control
electronics. . .” (“Machine Design,”
July 13, 1995).3
“The sensor configuration chosen
depends ultimately upon the intended
application… [T]here appear to be five
categories of applications: low-cost
motors for basically constant speed
operation; traditional BLDC motors with

3 Applicant pointed out that it has objected to Baldor
Electric, a competitor, using the designation “Smart Motor.”
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4
resolver or encoder feedback;
integrated sensor motors; high
performance integrated sensor motors;
and smart motors.” (“Appliance,” April
1995).
“…However, we did incorporate smart
motor controls (SMC’s) for all the
drives. This allows us to ramp up and
ramp down the conveyor speeds when we
start and stop…” (“Beverage World,”
August 1994).
“…To reduce the need for repairs, the
plant also purchased updated variable
frequency drive technology and smart
motor controllers to maximize the
blower’s efficiency.” (“American City
& County,” May 1994).
“…But the need for integrated MCAD/EDA
[mechanical computer-aided
engineering/electronic design
automation] goes far beyond the
obvious. Take Allan-Bradley,
Milwaukee, WI, a leading maker of
industrial motor controls. “Up until a
few years ago, we were known for
mechanical motor controls,” says Barry
Umbs … Now the company offers smart
motor controls, programmable logic
controllers, … (“Computer Aided
Engineering,” April 1994).
“The 1560 Medium Voltage smart motor
controller combines an intelligent
microcomputer with state-of-the-art
power technology to stop or start 100-
to 6000-hp AC motors…” (“Packaging,”
January 1994).
“General Electric Company says its ECM
programmable motor represents a first
in consumer units –- the combination of
ultra-high efficiency with a
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programmable control capability that
delivers to the user a smart motor with
efficiencies and benefits ‘never before
attained’ with traditional induction
motor technology…” (“Appliance,” April
1993).
The Trademark Examining Attorney argues that if
applicant’s robotic motor comes integrated in some way with
a control system having a microprocessor, this entire
system would readily be recognized as a "smart motor."
That is, this combination of words succinctly informs
potential buyers, using the requisite degree of
particularity, of a function of applicant’s products.
Contrary to applicant’s contention, the Examining Attorney
has never taken the position that the goods are “merely
motors.” Rather, the Examining Attorney argues that the
entire matter is “merely descriptive” precisely because the
goods include more than motors.
The Trademark Examining Attorney’s position is
consistent with earlier treatment of the term "Smart" by
the Board. See In re Cryomedical Sciences Inc., 32 USPQ2d
1377 (TTAB 1994) [“SMARTPROBE” held merely descriptive for
disposable cryosurgical probes having microprocessors].
Based on the evidence of record, we find that
consumers of applicant's controls would readily understand
that SMART, as it is being used in SMARTMOTOR, refers to
the electronic or microprocessor component of the control
Ser No. 74/529,244
6
system, and therefore, that SMARTMOTOR would immediately be
perceived as describing electric motors with such built-in
controls. All of applicant’s competitors should be equally
free to use the designation “smart motor” to describe this
system.
Applicant contends that there are other marks on the
register that include the word “SMART.” As stated by a
panel of this Board several years ago:
“…[A]pplicant has submitted four third-
party registrations of marks, which
include, in part, SMART for goods,
which, according to applicant, may
include a microprocessor… 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
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7
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 re Cryomedical Sciences Inc., supra at 1379 (TTAB 1994).
Substantially all of the registrations listed by applicant
–- especially where the matter in the mark modified by the
word SMART is even arguably analogous to applicant’s
“MOTOR” -- preceded the issuance of this 1994 decision.
Decision: The refusal of registration is affirmed
inasmuch as the term “SMARTMOTOR” is held to be merely
descriptive of the identified goods under Section 2(e)(1)
of the Trademark Act.
E. J. Seeherman
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board