Brunswick Corporation

Trademark Trial and Appeal Board

Feb 27, 2008

No. 78841309 (T.T.A.B. Feb. 27, 2008)

Mailed:
27 February 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brunswick Corporation
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Serial No. 78841309
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Peter T. Holsen of Andrus, Sceales, Starke & Sawall, LLP
for Brunswick Corporation.

John M. Gartner, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Hohein, Drost, and Cataldo, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 20, 2006, Brunswick Corporation (applicant)
applied to register the mark SMART TOW in standard
character form on the Principal Register for goods
identified as “Watercraft speed control systems, namely,
computer controllers with operating software for the launch
and cruise of a watercraft” in Class 9. The application
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 78841309
2
(Serial No. 78841309) is based on applicant’s allegation of
a bona fide intention to use the mark in commerce.
The examining attorney refused registration on the
ground that the mark is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
because the mark SMART TOW “immediately describes the fact
that the goods allow for towing using controllers equipped
with microprocessors.” Brief at unnumbered p. 3.
Applicant argues that the mark “only suggests a ‘desired
result’ obtained by the use of the applicant’s goods.”
Brief at 3.
After the examining attorney made the refusal final,
applicant appealed.1
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004). See also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987). To be merely
descriptive, a term need only describe a single significant
quality or property of the goods. Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294

1 On November 6, 2007, applicant withdrew its request for an oral
hearing.
Ser. No. 78841309
3
(CCPA 1959). See also In re Litehouse Inc., 82 USPQ2d
1471, 1472 (TTAB 2007) (“A term 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; it is enough that the term describes
one significant attribute, function or property of the
goods or services”). Mere descriptiveness of a mark is not
considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978).
In this case, the examining attorney relies on, inter
alia, relevant dictionary definitions of the terms Smart
(“fitted with a built-in microprocessor”) and Tow (“pull
something”). Office Action dated August 22, 2006
attachments. Other evidence of record includes applicant’s
press release (also dated August 22, 2006) that describes
the goods as follows:
[A] precise and easy-to-use control system boat
drivers can program to achieve smooth and consistent
launch and cruise control for water sport activities…
The Launch Control System consists of five pre-set
launch profiles designed to meet different water
sports needs, from tubing to wakeboarding to slalom
skiing. Drivers simply select a launch profile for
out-of-the-hole intensity, enter an rpm set point
based on the rider's desired pull speed and move the
throttle to wide-open. SmartTow does the rest.

Ser. No. 78841309
4
See also www.fishingandboats.com (“Mercury launches a New
electronic tow system”).
In another article, applicant's spokesman says its
product "simulates a driver with 20 years towing experience
with the push of a button. It allows someone with little
experience to tow like an expert." www.ibinews.com.
Applicant points to several “Smart” registrations that
issued on the Principal Register to support its argument
that its mark “is also registrable on the Principal
Register.” Brief at 17. See also Response dated December
15, 2007 at 6-7 (SMARTSWIPE for calling cards, SMART AC for
AC/DC inverters, SMARTFEED for electrical controller for
use in water treatment systems, SMART TAPE for measuring
tapes, SMARTWHEEL for force measurement device for
analyzing manual wheelchair propulsion, SMART CLIPS for
terminator for insulated electrical wire, and SMART CABLES
for cables).2
In order to determine whether applicant’s mark is
merely descriptive, we must, of course, view the mark in
relation to the goods on which applicant intends to use the
mark. In this case, the goods are “watercraft speed

2 We will consider the information that applicant has made of
record inasmuch as the examining attorney has not objected to
this evidence and discussed the registrations in his brief. TBMP
§ 1207.03 (2d ed. rev. 2004); Litehouse, 82 USPQ2d at 1475 n.2.
Ser. No. 78841309
5
control systems, namely, computer controllers with
operating software for the launch and cruise of a
watercraft.” Inasmuch as applicant’s goods feature a
“computer controller,” the term “Smart,” which can mean
“fitted with a microprocessor” certainly has some
descriptive significance for these goods. See, e.g., In re
Finisar Corp., 78 USPQ2d 1618, 1623 (TTAB 2006) (SMARTSFP
merely descriptive of optical transceivers that contain
automated capabilities and are small form-factor
pluggable); In re Cryomedical Sciences Inc., 32 USPQ2d
1377, 1378 (TTAB 1994) (“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”). Furthermore, the evidence of record indicates
that applicant’s goods are used with a watercraft that
“tows” an individual in various water sports. Therefore,
the individual terms have some descriptive significance.
However, whether terms are individually descriptive
does not mean that the combined term is merely descriptive.
In re Marriott Corp., 517 F.2d 1364, 186 USPQ 218, 222
(CCPA 1975) (“Nor do we view the slogan WE SMILE MORE as
descriptive of hotel, restaurant, or convention services.
That the individual words are common and ordinary is
Ser. No. 78841309
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undeniable. That each is descriptive of something is
clear. But marks must be considered in their entireties”).
See also In re Automatic Radio Mfg. Co., Inc., 404 F.2d
1391, 160 USPQ 233, 235 (CCPA 1969) (“We quite agree that
‘automatic volume control’ is wholly descriptive of that
feature of a radio receiver, but that does not make
AUTOMATIC merely descriptive of the radio receiver. Nor
does it make ‘AUTOMATIC RADIO’ the name of the receiver”).
Here, applicant argues that “SMART TOW is merely
suggestive of the desired result of the use of the goods.”
Brief at 4. Our case law recognizes that if a term is
suggestive of the result of using the product, it is not
merely descriptive of the product. See In re Nalco
Chemical Co., 228 USPQ 972, 973 (TTAB 1986) (The “term
‘VERI-CLEAN,’ as applied to applicant's chemical anti-
fouling additives for use in refineries, is suggestive of
the desired end result of the use of applicant's additives,
but does not serve to describe the goods themselves”); In
re The Noble Co., 225 USPQ 749, 750 (TTAB 1985) (The “board
is of the opinion that the mark {NOBURST for antifreeze]
suggests a desired result of using the product rather than
immediately informing the purchasing public of a
characteristic, feature, function or attribute thereof”);
In re Universal Water Systems, Inc., 209 USPQ 165, 166
Ser. No. 78841309
7
(TTAB 1980) (PURITY for water filtering units “is
suggestive of the desired result of the use of those goods,
and as such is not merely descriptive of them”); and In re
C. J. Webb, Inc., 182 USPQ 63, 64 (TTAB 1974) (“‘[B]rake
clean’ is suggestive of a desired result of a brake cleaner
and therefore the asserted phonetic equivalent ‘Br’akleen’
must be considered to be suggestive rather than merely
descriptive when applied to applicant's goods”).
In this case, when we look at the combined term SMART
TOW in relation to applicant’s watercraft speed control
systems, we are not persuaded that the limited evidence in
this case demonstrates that the combined term is merely
descriptive. The ultimate question here is whether the
term SMART TOW will immediately inform prospective
purchasers of a feature, characteristic, or quality of the
goods, which in this case are watercraft speed control
systems. While the examining attorney argues that the mark
“immediately describes a function of the goods, that is
that they provide a ‘smart’ or microprocessor-assisted tow”
(Brief at 6), it is not clear to us that prospective
purchasers will immediately understand that applicant’s
SMART TOW describes a quality, function or feature of
applicant’s watercraft speed controllers. In re The Rank
Organization Limited, 222 USPQ 324, 326 (TTAB 1984) (The
Ser. No. 78841309
8
“fact that the term ‘LASER’ is capable of being analyzed
does not render the term merely descriptive”). Applicant’s
goods are not tows fitted with a microprocessor. While
customers are likely eventually to understand the
relationship of the mark to applicant’s goods, we find that
the mark falls on the highly suggestive side of the
suggestive/descriptive line. Rather than immediately
understanding the assertedly descriptive meaning or
significance of the term, prospective purchasers are likely
to study the product more closely to understand what the
relationship of the mark to the product is. A “mark is
suggestive if imagination, thought, or perception is
required to reach a conclusion on the nature of the goods
or services.” In re Quik-Print Copy Shop, Inc., 616 F.2d
523, 205 USPQ 505, 507 (CCPA 1980). Here, the term is
likely to be viewed as suggesting that as a result of using
the product the purchaser will receive the benefits of a
computer to achieve a more professional towing experience.
Obviously, we base our decision on the record we have
before us in this case.3 In mere descriptiveness cases, we

3 While applicant, as noted previously, has submitted evidence of
certain third-party registrations for marks that contain the term
“smart,” we do not find this evidence very persuasive. 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 Nett Designs' application, the PTO's allowance of such
prior registrations does not bind the Board or this court”).
Ser. No. 78841309
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are required to resolve any doubts in favor of the
applicant for registration. In re Morton-Norwich Products,
Inc., 209 USPQ 791, 791 (TTAB 1981) (The Board’s practice
is “to resolve doubts in applicant’s favor and publish the
mark for opposition”). See also In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002) (“While our determination is not
free from doubt, we resolve that doubt in favor of
applicant and reverse the refusal to register”). Here, we
do have doubts about whether prospective purchasers will
view the term SMART TOW for watercraft speed controllers as
merely descriptive and, therefore, we resolve them in
applicant’s favor. Remacle, 66 USPQ2d at 1223 n.1 ((BIO-CD
is not merely descriptive in connection with, inter alia,
“modified compact discs on which biological molecules such
as nucleic acids, antigens, antibodies and biological
receptors are fixed”).
Decision: The refusal to register applicant’s mark
SMART TOW under Section 2(e)(1) of the Trademark Act is
reversed.