BAE Systems Land & Armaments L.P.Download PDFTrademark Trial and Appeal BoardJan 3, 2011No. 77363645 (T.T.A.B. Jan. 3, 2011) Copy Citation Mailed: 1/3/11 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re BAE Systems Land & Armaments L.P. ________ Serial No. 77363645 _______ Kyle T. Peterson of Patterson Thuente Christensen Pedersen for BAE Systems Land & Armaments L.P. Naakwama Ankrah, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _______ Before Quinn, Walters and Zervas, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: BAE Systems Land & Armaments L.P. filed, on January 3, 2008, an intent-to-use application to register the mark SMART SAFETY SYSTEMS (“SAFETY SYSTEMS” disclaimed) for “sensors and detector units for use in controlling the actuation and operation of firearms, ammunition, projectiles, explosives, missiles, and weapons” in International Class 9. The trademark examining attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77363645 2 §1052(e)(1) on the ground that applicant’s mark, when applied to applicant’s goods, is merely descriptive thereof. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs.1 Applicant argues that its applied-for mark, when considered as a whole, is only suggestive of “a desired result of safe operation of a weapons system.” (Brief, p. 8). In this regard, applicant states that although “the ‘desired results’ may include avoidance of human error or mechanical malfunction that may result in harm to the 1 There is a bit of ambiguity regarding the disclaimer of the words “Safety Systems.” After issuance of a final refusal on the ground of mere descriptiveness under Section 2(e)(1), applicant filed a request for reconsideration. In response, in an Office action dated June 29, 2009, the examining attorney indicated that while the Section 2(e)(1) refusal was withdrawn, a disclaimer of “Safety Systems” was required. Applicant complied with the disclaimer requirement, and the examining attorney approved the application for publication. According to the examining attorney, however, the senior attorney required the examining attorney to maintain the final refusal under Section 2(e)(1). In the new final refusal dated September 10, 2009, the examining attorney stated that “[t]he disclaimer is withdrawn.” Applicant, in recounting the examination history in its appeal brief, noted that the examining attorney had “withdrawn” the disclaimer; applicant indicated again, however, that it is disclaiming the words “Safety Systems.” (Brief, p. 3, n.1). It is unclear from the examining attorney’s brief whether or not the examining attorney considers the disclaimer to be entered. Given that applicant has again offered a disclaimer of the words “Safety Systems,” we see no reason to dwell on the mere descriptiveness/genericness of these words, see infra. Rather, we consider the disclaimer to be entered and we will focus our attention, as have applicant and the examining attorney, on the mere descriptiveness of the word “Smart,” and then determine if the applied-for mark as a whole is merely descriptive. Ser. No. 77363645 3 operator, friendly fire, or unwanted collateral damage,” this suggestiveness does not equate to descriptiveness. (Brief, pp. 8-9). Applicant also points to the number of different meanings of the word “smart,” including “fashionable,” “elegant” and “amusingly clever.” Further, applicant highlights the existence of four third-party registrations of marks that include the word “SMART,” as well as a recent Board decision (unpublished) finding that a mark comprising in part the word “SMART” is not descriptive. Applicant relies on the tests of “degree of imagination” and “competitors’ needs” in its analysis, concluding that any doubt on the issue of mere descriptiveness must be resolved in its favor. The examining attorney maintains that applicant’s mark merely describes safety systems comprising sensors and detectors that are highly automated. The examining attorney further asserts that the meanings of the word “smart” in other contexts are immaterial to the descriptiveness analysis that must focus on meaning in the context of the goods. In support of the refusal the examining attorney submitted dictionary definitions of the terms comprising the involved mark, and excerpts of third- party websites. Ser. No. 77363645 4 A mark is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Contrary to the gist of some of applicant’s remarks, it is settled that “[t]he question is not whether someone presented with only the mark could Ser. No. 77363645 5 guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. See, e.g., In re Tower Tech Inc., supra (SMARTTOWER is merely descriptive of commercial and industrial cooling towers); and In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS is merely descriptive of computer programs for use in development and deployment of application programs). With respect to applicant’s goods, applicant states: In use, the “function” of the sensors and detector units is to control the firing and reloading operations of various types of tactical weaponry. The sensors and detectors can analyze data indicative of a number of parameters, such as, for example, relative position, temperature, velocity, distance, and firing rate. This “function” occurs regardless of Ser. No. 77363645 6 whether the weaponry is used in a safe manner.” (Brief, p. 8). The term “safety” means, in pertinent part, “a device designed to prevent accidents, as a lock on a firearm preventing accidental firing.” The term “system” means “a group of interacting, interrelated, or interdependent elements forming a complex whole.” The American Heritage Dictionary of the English Language (4th ed. 2000). The examining attorney introduced Internet evidence showing use of the terminology “safety system” in connection with firearms; a safety system protects against the accidental firing of a gun. As we indicated above, applicant disclaimed the words “Safety Systems,” and we find that the dictionary definitions and Internet evidence support the proposition that the words “safety systems” are, at the very least, merely descriptive (if not generic) in the context of applicant’s goods. The crux of the appeal centers on the term “smart” and its significance in relation to applicant’s goods. The term “smart” is defined, in relevant part, as “being a guided missile, a laser guided smart bomb; operated by automation, a smart machine tool.” (www.merriam- webster.com). Another dictionary defines the term as “of, relating to, or being a highly automated device, especially Ser. No. 77363645 7 one that imitates human intelligence: smart missiles.” The American Heritage Dictionary of the English Language (4th ed. 2000). Based on the meaning of the individual portions of applicant’s mark, “SMART” and “SAFETY SYSTEMS,” as well as the Internet evidence showing use of the terminology “smart system” in connection with firearms, we find that the combination SMART SAFETY SYSTEMS is merely descriptive of applicant’s “sensors and detector units for use in controlling the actuation and operation of firearms, ammunition, projectiles, explosives, missiles, and weapons.” That is to say, SMART SAFETY SYSTEMS merely describes sensors and detectors for use in highly automated safety systems for firearms, missiles, weapons, etc. The individual merely descriptive terms retain their descriptive character when combined to form the composite SMART SAFETY SYSTEMS. Stated differently, the mark merely describes safety systems comprising sensors and detectors that employ “smart” or highly automated technology for controlling the actuation and operation of weapons and ammunition. Applicant’s sensors and detectors “analyze data indicative of a number of parameters” and function, as conceded by applicant, to “[avoid] human error or mechanical malfunction that may result in harm to the Ser. No. 77363645 8 operator, friendly fire or unwanted collateral damage.” No imagination is required by a purchaser or user to discern that the applied-for mark, when used in connection with applicant’s goods, describes sensors and detectors that are components of a “smart” or highly automated safety system. See In re Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994) (SMARTPROBE is merely descriptive of disposable cryosurgical probes). In determining whether the mark involved herein is merely descriptive, we have given little weight to the evidence of third-party registrations submitted by applicant. The registrations show marks comprising, in part, the term “SMART.” As often stated, each case must stand on its own record and, in any event, the Board is not bound by the actions of prior examining attorneys. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the board or this court.”). Likewise, the unpublished Board decision on which applicant relies is not persuasive of a different result herein. We conclude that the mark SMART SAFETY SYSTEMS as a whole is merely descriptive of applicant’s goods. Ser. No. 77363645 9 Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation