Flex Ltd.

Trademark Trial and Appeal Board

Dec 9, 2019

86453853 (T.T.A.B. Dec. 9, 2019)

Hearing: October 17, 2019 Mailed: December 9, 2019
(Serial No. 86453853 only)

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Flex Ltd.
_____

Serial Nos. 86453853 and 86493735
_____

Pamela N. Hirschman, Sabrina C. Stavish and Jeanette E. Sinclare
of Sheridan Ross P.C. for Flex Ltd.

Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____
Before Adlin, Heasley and Pologeorgis, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Flex Ltd. filed two applications to register the mark INTELLIGENCE
OF THINGS in standard characters: Application Serial No. 86453853 for:
Supply chain management services; business management
services, namely, managing logistics, reverse logistics,
supply chain services, supply chain synchronization,
supply and demand forecasting, and product distribution
processes for others in International Class 35;1

and Application Serial No. 86493735 for:
Custom manufacture of electronics, power supplies,
lighting and computer goods for others; technical support

1 The “’853 Application,” filed November 13, 2014, under Section 1(b) of the Trademark Act,
based on an allegation of a bona fide intent to use the mark in commerce.
This Opinion is Not a
Precedent of the TTAB
Serial Nos. 86453853 and 86493735
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services, namely providing technical advice related to the
manufacture of electronics, power supplies, lighting and
computer goods in International Class 40; and

engineering services, consulting services in the field of new
product development in the fields of electronics, power
supplies, lighting and computers; new product design
services; research and development of new products in
International Class 42.2

The Examining Attorney refused both applications under Sections 1, 2, 3 and 45 of
the Trademark Act, on the ground that INTELLIGENCE OF THINGS fails to
function as a mark, because it does not indicate the source of Applicant’s services, or
identify and distinguish them from those of others. After the refusals became final,
Applicant appealed and filed requests for reconsideration which were denied.
Applicant and the Examining Attorney filed briefs in both applications and appeared
at an oral hearing in connection with the ’853 Application only. We affirm both
refusals to register.
I. Appeals Consolidated
These appeals involve common questions of law and fact and the records are quite
similar. Accordingly, we consolidate and decide both appeals in this single decision.
See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); Trademark Trial and Appeal
Board Manual of Procedure (“TBMP”) § 1214 (2019).3

2 The “’735 Application,” filed December 31, 2014 under Sections 1(b) and 44(d) of the
Trademark Act, and currently based only on an allegation of a bona fide intent to use the
mark in commerce under Section 1(b) of the Act.
3 Unless otherwise indicated, citations are to the record in the ’853 Application, specifically
to TTABVUE or the downloaded .pdf version of the Trademark Status and Document
Retrieval (TSDR) database.
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II. Evidence of Applicant’s, Third Parties’ and Media Use of
INTELLIGENCE OF THINGS
After notices of publication issued in both of the involved applications, Applicant
filed a Statement of Use in the ’853 Application only. After reviewing the specimen
filed with the Statement of Use, the Examining Attorney issued the failure to function
refusals in both applications, based in large part on evidence regarding how third
parties and the media use and define the term INTELLIGENCE OF THINGS.
A. Applicant’s Specimen
Applicant filed the specimen reproduced below with its Statement of Use in the
’853 Application:

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B. Third-Party Uses of INTELLIGENCE OF THINGS
The Examining Attorney introduced evidence showing how third parties use and
define INTELLIGENCE OF THINGS. In essence, the evidence of record reveals that
third parties use the phrase INTELLIGENCE OF THINGS to refer to the ongoing
development and next phase of the Internet of Things (“IoT”),4 specifically its
increasing use of artificial intelligence (“AI”). For example:
An article on Western Digital’s “datamakepossible.com”
site entitled “AI +IoT=The Intelligence of Things” states
that “there’s a technological evolution coming. A merging
of a sensor-laden world with an artificially intelligent one.
It’s called the Intelligence of Things, and it will change
our lives forever.” July 3, 2018 Office Action TSDR 12-14.

An article on the “symbio.com” website entitled
“Intelligence of Things Economy” states that in this
field, devices “are exchanging analyzed information”
within “purpose-built service ecosystems ….” September
10, 2018 Office Action TSDR 171-176.

A blog post on “lindabernardi.com” entitled “The
Immersion of Things” indicates there has been an
“evolution of inversion.” Specifically, there has been a
progression from things, to IoT, to Intelligence of
Things, to, ultimately, Immersion of Things, which is
“when devices become experiences.” The post states that
“[t]rue intelligence of things will happen when all things
know how to interoperate independently and intelligently,
when devices talk to each other and achieve optimum
function via intelligence.” Id. at 160-161.

An article by Samsung’s Mobile Communications Business
president on the “hdguru.com” website entitled “Samsung

4 According to both Applicant and the Wikipedia entry for “Internet of Things,” also known
as “IoT,” the term “refers to the interconnectivity of digital devices,” specifically their
connections to the Internet and each other. 13 TTABVUE 14 (Applicant’s Appeal Brief at 13);
August 27, 2018 Office Action response TSDR 10-40.
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Shows Developers ‘Intelligence of Things’ with Bixby
2.0” asserts that “Samsung has coined the ‘Intelligence of
Things’.” The article defines the term as “the integration
of intelligence into the IoT to ‘make life easier.’” Id. at 150-
155.

A post on the Insurance Blog accessible at “accenture.com”
entitled “‘Intelligence of Things’ Will Change Our World
and Insurance” asserts “[p]erhaps it’s time that we change
the definition of IoT from ‘The Internet of Things’ to ‘The
Intelligence of Things.’” According to the article, “what
[‘intelligence of things’] devices have in common is that
they aren’t just connected to the Internet or your phone; it
is that they are using artificial intelligence (AI) and
machine learning to provide additional services to the
customer, with many having the ability to improve over
time.” Id. at 145-149.

An article posted on the Massachusetts Institute of
Technology (“MIT”) News website (“news.mit.edu”) quotes
MIT’s Vice President for Open Learning, who stated that
“Internet of things could just as well be called
‘intelligence of things.’” Id. at 96-103.

An article on the “ups.com” website entitled “How IoT will
change our society” opens with the following: “Some call the
Internet of Things (IoT) the Intelligence of Things or the
Internet of Everything.” Id. at 89-95.

The “digikey.com” website includes a description of
products under the heading “Analog Devices IoT and the
Intelligence of Things.” Id. at 68-73.

A section of the “virtusa.com” website, under the heading
“The Intelligence of Things,” includes the subheading
“IoT meets AI,” and states “[i]ntelligent products and
services are moving from being standalone entities to being
elements within collaborative webs of intelligent things.”
Id. at 59-62.

The Intelligence of Things website
(“intelligenceofthings.com”) includes this introduction:
“‘Things’ (as opposed to people) have become intelligent.
They can communicate and can take actions based on
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information gleaned from sensors, smart devices,
databases, systems and information from the worldwide
web ….” Id. at 44-51.

The Webpage for a “BrightTALK Summit” online
conference/webinar entitled “The Intelligence of Things”
states “[d]iscover the next revolution in IoT as the industry
pushes for intelligent devices with stream processing, edge
computing, and A.I. innovations.” One of the sessions is
entitled “A.I. and IoT.” Id. at 21-25.

An article on the “atos.net” site entitled “Analytics and
Artificial Intelligence are fueling the growth for Internet of
Things” states “IoT is becoming ‘Intelligence of Things’
– making devices intelligent, not just focused on
connectivity but focused on making sense of IoT data to
create business value.” December 12, 2018 Denial of
Request for Reconsideration TSDR 65-67.

George Washington University’s Center for the Connected
Consumer’s website (“postsocial.gwu.edu”) includes a
section on the “GW Inaugural Conference on the
Intelligence of Things.” The conference description
states “[a]s smart devices (voice assistants, appliances,
cars, robots, drones, watches, you name it), continue their
rapid convergence with AI and deep learning models, a new
IoT is coming into being that experts are calling the
‘Intelligence of Things.” Id. at 38-43.

A blog posting entitled “The ‘Intelligence of Things’ on
the “telenet.be” website states: “The Internet of Things,
commonly referred to as IoT, seems to be playing on the
minds of perhaps every technocrat and business strategist
across industries. The ability to connect millions of devices
and sensors, and get meaningful and actionable insights
from the data generated by these, seeks to fundamentally
alter the way a business is run or operations conducted …
And when these smart devices and sensors connect to each
other and make decisions based on ambient conditions, we
see an ecosystem where IoT interfaces with Artificial
Intelligence (decision making capability in these devices
and sensors) to create something that is termed the
Intelligence of Things …. January 7, 2019 Office Action
in ’735 Application TSDR 111-113.
Serial Nos. 86453853 and 86493735
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The record includes additional, similar examples of third party use of
INTELLIGENCE OF THINGS. July 3, 2018 Office Action TSDR 26-30, 156-159, 166-
170.
C. Media Uses of INTELLIGENCE OF THINGS
The Examining Attorney submitted a number of news and business articles which
mention INTELLIGENCE OF THINGS, as well as short excerpts from additional
articles, showing only the portion that discusses INTELLIGENCE OF THINGS. With
respect to the mere excerpts, we have only relied upon and cited in this decision those
that include sufficient context for us to understand how the term INTELLIGENCE
OF THINGS is being used.
1. Complete Articles
The Examining Attorney introduced the following articles in their entirety:
An article in an India-focused magazine, “theweek.in,”5
entitled “Intelligence of Things” focuses on Watson, an
“artificial intelligence technology” developed by IBM, and
the 2016 World of Watson Conference. The article explains
that among other things, Watson’s ability to understand
natural language and unstructured data enables it to
perform tasks formerly performed only by humans,

5 While some evidence of record is from foreign sources, we have nevertheless considered it,
primarily because of the highly technical nature of Applicant’s services. See e.g. In re Bayer
AG, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007); In re Well Living Lab Inc., 122
USPQ2d 1777, 1781 n.10 (TTAB 2017); In re Int’l Bus. Machines Corp., 81 USPQ2d 1677,
1681 n.7 (TTAB 2006) (“it is reasonable to consider a relevant article” regarding computer
technology from a foreign English-language website); In re Cell Therapeutics Inc., 67 USPQ2d
1795, 1797-98 (TTAB 2003); In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (“it is
reasonable to assume that professionals in medicine, engineering, computers,
telecommunications and many other fields are likely to utilize all available resources,
regardless of country of origin or medium”).
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including driving, analyzing human emotions and winning
in “Jeopardy.” July 3, 2018 Office Action TSDR 15-25.

An article on “firstpost.com” entitled “Intelligence of
Things: Tens of Billions of Connected Devices Are
Expected By 2020, and They’ll All be Infused with AI”
states that “today’s AI and Internet of Things (IoT) are
converging to create “the intelligence of things.” The
article indicates that the “three pillars” of the intelligence
of things are artificial intelligence, machine learning and
data. Id. at 7-11.

A Forbes article entitled “Learning to Live With the
‘Intelligence of Things’” states that when the Internet of
Things and artificial intelligence converge, “they are
creating a new ‘intelligence of things’ that will impact
how businesses can best serve customers.” According to the
article, “[w]ith the Internet ‘in’ everything, look for a wide
variety of new use cases, such as … “[s]ensor data
correlated from vehicle locations, pallets of goods and
employees, boosting the efficiency of the logistics
chain.” Id. at 4-6.

The article “The Intelligence of Things: Streaming
analytics comes to Iot” on the “readwrite.com” site states
that while IoT devices “gather lots of data, they’re not very
intelligent or self-aware in their own right.” The author
opines that the devices require “the right intelligence and
security onboard” for them to “become aware,” which he
refers to as the “Intelligence of Things.” September 10,
2018 Office Action TSDR 162-165.

A post on the “siliconangle.tv” website promotes a
conference entitled “When IOT Met AI: The Intelligence
of Things.” Id. at 82-86.

An Infoworld article (“infoworld.com”) entitled “Toward the
artificial intelligence of things” includes this
subheading: “Meet the artificial intelligence of things
(AIoT), where artificial intelligence dovetails with the
internet of things (IoT).” Id. at 36-43.

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Amazon offers a book by Robert A. Frederick entitled “The
Intelligence of Things: A World of Connected Devices,
People and Experiences.” Id. at 33.

An article in Information Age (“information-age.com”)
entitled “Intelligent ecosystems and the intelligence of
things” has the following subheading: “With AI set to
impact almost every sector over the coming years, can
parallels be drawn with intelligent ecosystems in the
natural world? And how can this impact the IoT evolution?”
Id. at 26-32.

An article in IoT Now entitled “Tapping into the
Intelligence of Things” discusses the importance of
obtaining “intelligence” from IoT devices. December 12,
2018 Denial of Request for Reconsideration TSDR 82-86.

According to a “medium.com” article entitled “The
Intelligence of Things,” “[s]ome people suggest that IoT
should stand for the ‘Intelligence of Things’ rather than
the “Internet of Things” … Coupled with artificial
intelligence, machine learning, and analytics, enormous
volumes of IoT data can be analyzed in real time to improve
decision making and deliver better business outcomes –
whether that’s increasing manufacturing efficiency,
reducing asset downtime …January 7, 2019 Office
Action in ’735 Application TSDR 47-50.

(emphasis added).

2. Excerpts
The Examining Attorney submitted the following excerpts or abstracts, among
others:
A Broadcast & CableSat article on “total consumer tech
revenue” quotes Steve Koenig, CTA’s Vice President of
Market Research, as stating that the “new Internet of
Things is the ‘Intelligence of Things’.” September 10,
2018 Office Action TSDR 9.

An SQL Server Pro article about Samsung’s IoT-enabled
pop-up store states that “Internet of Things World
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demonstrates how the next generation of IoT will converge
to unlock the intelligence of things in the industrial,
enterprise and consumer realms.” Id. at 11.

A Straits Times (Singapore) article about “big data” quotes
SAS Chief Marketing Officer Randy Guard as stating that
“connectivity is not enough,” and that “with analytics and
(the Internet of Things), we should also call this the
Intelligence of Things.” Id. at 15.

A Mondaq Business Briefing article about “Internet of
Things trade secrets” states that the “Internet of Things
(IoT), sometimes known as the Intelligence of Things, is
a network of interconnected physical objects, each
embedded with sensors that collect and upload data to the
Internet for analysis or control.” Id. at 17.

Another Mondaq Business Briefing article about Internet
of Things patents states “[t]he ‘Internet-of-Things’ (IoT),
sometimes known as the ‘intelligence of things’ is a
network of interconnected physical objects, each embedded
with sensors that collect and upload data to the internet for
analysis or control.” Id. at 19.

An abstract of a paper available on the University of
Southampton website entitled “Intelligence of Things:
Opportunities and challenges” states “The Internet of
Things (IoT) is a promising technology that can connect
and communicate virtual and physical objects globally …
On the other hand, Artificial Intelligence (AI) is applied to
many fields of science … Integrating IoT with AI will create
a powerful technology that can solve many of (sic) IoT
problems that relate to the huge amount of data created by
different IoT devices ….” January 7, 2019 Office Action in
’735 Application TSDR 38-40.

(emphasis added).

III. Analysis
“The Trade-Mark Act is not an act to register words but to register trademarks.
Before there can be registrability, there must be a trademark (or a service mark) and,
unless words have been so used, they cannot qualify for registration.” In re Standard
Serial Nos. 86453853 and 86493735
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Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960). Thus, we start our analysis
with the Act’s definition of a service mark, which is “any word, name, symbol, or
device, or any combination thereof … [used] to identify and distinguish the services
of one person … from the services of others and to indicate the source of the services,
even if that source is unknown.” 15 U.S.C. § 1127. See also In re Bose Corp., 546 F.2d
893, 192 USPQ 213, 216 (CCPA 1976) (“the classic function of a trademark is to point
out distinctively the origin of the goods to which it is attached”).
Whether the phrase INTELLIGENCE OF THINGS falls within this definition and
functions as a mark depends on whether the relevant public, i.e. purchasers or
potential purchasers of Applicant’s services, would perceive the term as identifying
Applicant’s services and their source or origin. See e.g. In re TracFone Wireless, Inc.,
2019 USPQ2d 222983, *1-2 (TTAB 2019); In re Aerospace Optics, Inc., 78 USPQ2d
1861, 1862 (TTAB 2006) (“To be a mark, the term must be used in a manner
calculated to project to purchasers or potential purchasers a single source or origin
for the goods.”); In re Volvo Cars of North Am. Inc., 46 USPQ2d 1455, 1459 (TTAB
1998) (“A critical element in determining whether a term or phrase is a trademark is
the impression the term or phrase makes on the relevant public.”); In re Safariland
Hunting Corp., 24 USPQ2d 1380 (TTAB 1992). “To make this determination we look
to the specimens and other evidence of record showing how the designation is actually
used in the marketplace.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)
(citations omitted).
Serial Nos. 86453853 and 86493735
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Here, the specimen reveals not only that Applicant uses INTELLIGENCE OF
THINGS on a page of its website that mentions some of Applicant’s services, but also
that Applicant claims service mark rights in the term (evidenced by use of the
trademark symbol (“™”)). That does not necessarily mean that INTELLIGENCE OF
THINGS functions as a service mark, however. Indeed, “[n]ot every word, name,
phrase, symbol or design, or combination thereof which appears on a product
functions as a trademark,” and “[m]ere intent that a phrase function as a trademark
is not enough in and of itself to make it a trademark.” In re Pro-Line Corp., 28
USPQ2d 1141, 1142 (TTAB 1993). See also In re TracFone Wireless, 2019 USPQ2d
222983; In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1152 (TTAB 2019) (“The mere
fact that a phrase proposed for registration appears on the specimens of record does
not establish its use as a service mark.”).
In this case, notwithstanding Applicant’s use of the term and apparent intent that
it function as a service mark, the evidence from third-parties and the media reveals
that INTELLIGENCE OF THINGS does not perform the desired service mark
function and does not fall within the Act’s definition of a service mark, including
because it would be perceived not as a mark, but as a merely informational and widely
used phrase. Therefore, Applicant’s competitors and other third parties should be
able to freely use the widespread and increasingly important phrase
INTELLIGENCE OF THINGS.

Serial Nos. 86453853 and 86493735
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A. The Evidence Shows That the Term Will Not Be Perceived as a
Service Mark

The evidence reveals INTELLIGENCE OF THINGS does not fall within the
definition of a service mark. In fact, many third parties and media sources6 have a
common and consistent understanding of the phrase INTELLIGENCE OF THINGS,
which refers not to Applicant or its services, but instead to the merging of the Internet
of Things and artificial intelligence.
For example, as the “firstpost.com,” Forbes and SQL Server Pro articles put it,
INTELLIGENCE OF THINGS refers to IoT’s “convergence” with AI. July 3, 2018
Office Action TSDR 4-11; September 10, 2018 Office Action TSDR 11. Accenture’s
Insurance Blog even questions whether “it’s time that we change the definition of IoT
from ‘The Internet of Things’ to ‘The Intelligence of Things.’” July 3, 2018 Office
Action TSDR 145-149. The record contains a number of similar formulations, all
referring to IoT and its increasing utilization of AI:
• “From the Internet of Things to Intelligence of Things.”
Id. at 26-30 (HVAC blog).

• “Specifically, there has been a progression from things,
to IoT, to Intelligence of Things, to, ultimately,
Immersion of Things ….” Id. at 160-161
(“lindabernardi.com”).

• “Internet of things could just as well be called
‘intelligence of things.’” Id.at 96-103 (“news.mit.edu”).

6 The media’s use and own perception of the term is relevant to how the public perceives it.
See Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Corp., 111 USPQ2d 1419,
1428 (TTAB 2014) (publications “are frequently competent to show, on their face, matters of
relevance to trademark claims (such as public perceptions), regardless of whether the
statements are true or false.”)

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• “Some call the Internet of Things (IoT) the Intelligence
of Things or the Internet of Everything.” Id. at 89-95
(“ups.com”).

• “IoT is becoming ‘Intelligence of Things’ – making
devices intelligent, not just focused on connectivity but
focused on making sense of IoT data to create business
value.” December 12, 2018 Denial of Request for
Reconsideration TSDR 65-67 (“atos.net”).

• “Meet the artificial intelligence of things (AIoT), where
artificial intelligence dovetails with the internet of
things (IoT).” September 10, 2018 Office Action TSDR
36-43 (“infoworld.com”).

• “Some people suggest that IoT should stand for the
‘Intelligence of Things’ rather than ‘Internet of Things’
….” January 7, 2019 Office Action in ’735 Application
TSDR 47-50 (“medium.com”).

• The “new Internet of Things is the ‘Intelligence of
Things.’” September 10, 2018 Office Action TSDR 9.

• “[W]ith analytics and (the Internet of Things), we
should also call this the Intelligence of Things.” Id. at
15 (“Straits Times (Singapore)).

• The “Internet of Tings (IoT), sometimes known as the
Intelligence of Things, is a network of interconnected
physical objects ….” Id. at 19.

Thus, the evidence shows that the phrase: (1) does not identify a single source or
origin, or Applicant’s identified services; and (2) would not be “perceived” by relevant
consumers as identifying Applicant’s services or their source.
B. INTELLIGENCE OF THINGS is Merely Informational
That INTELLIGENCE OF THINGS merely conveys information rather than
identifying goods or services or their source is clear from how the term is used. For
Serial Nos. 86453853 and 86493735
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example, Western Digital’s “datamakepossible.com” site presents INTELLIGENCE
OF THINGS as an equation: “AI + IoT=The Intelligence of Things.” July 3, 2018
Office Action TSDR 12-14. Samsung’s Mobile Communications Business president
defines INTELLIGENCE OF THINGS in a remarkably similar manner: “the
integration of intelligence into the IoT to ‘make life easier.’” September 10, 2018 Office
Action TSDR 150-155. Accenture’s Insurance Blog phrases it similarly, asserting that
what IoT devices have in common “is that they aren’t just connected to the Internet
or your phone; it is that they are using artificial intelligence (AI) and machine
learning to provide additional services to the customer, with many having the ability
to improve over time.” Id. at 145-149. See also id. at 59-62 (“IoT meets AI”) and 82-86
(“When IOT Met AI”).
What all of these examples have in common is that they do not use
INTELLIGENCE OF THINGS to refer to Applicant’s services or Applicant itself. The
phrase merely conveys information about the services. See In re Standard Oil, 125
USPQ at 229 (finding that GUARANTEED STARTING amounts “to no more than a
sort of condensed announcement that the applicant will guarantee the work done in
order to insure the starting of the customer’s car”); In re DePorter, 129 USPQ2d 1298,
1299 (2019) (affirming failure to function refusal where “use of the wording
#MAGICNUMBER108 in these messages identifies the subject matter of these tweets
and posts as relating to and expressing support for the Chicago Cubs and their World
Series win”); In re Wal-Mart, 129 USPQ2d at 1152 (INVESTING IN AMERICAN
JOBS does not function as a mark because it is “merely an informational statement
Serial Nos. 86453853 and 86493735
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that Applicant is selling certain goods that are made or assembled in America in areas
of the store where the signage appears”); D.C. One Wholesaler, Inc. v. Chien, 120
USPQ2d 1710 (TTAB 2016) ( fails to function as a mark because it is “an
expression of enthusiasm, affection or affiliation with respect to the city of
Washington, D.C.”); In re Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND
NAMES FOR LESS for retail clothing stores fails to function as a mark because it is
merely an informational statement); In re Brock Residence Inns, Inc., 222 USPQ 920
(TTAB 1984) (affirming refusal to register FOR A DAY, A WEEK, A MONTH OR
MORE! because it “is simply an ordinary informational statement about the
availability of rooms for various lengths of time”); In re Schwauss, 217 USPQ 361
(TTAB 1983) (FRAGILE in stylized form does not function as a mark for labels and
bumper stickers, but is instead “presented as a message or informational statement,
rather than a source indicator”).
This case is analogous to In re Phoseon Technology, Inc., 103 USPQ2d 1822, 1827
(TTAB 2012), in which we found that SEMICONDUCTOR LIGHT MATRIX fails to
function as a mark for light curing systems because it “identifies a technology, not
the source of the UV curing system.” Here, as in Phoseon, Applicant’s proposed mark
merely identifies the technology (IoT with artificial intelligence) Applicant uses to
provide its identified services. See also In re Bose Corp., 192 USPQ at 213 (affirming
refusal to register SYNCOM for loudspeakers because it identified a speaker-testing
computer system rather than the speakers themselves).
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In short, because INTELLIGENCE OF THINGS is merely informational, it does
not function as a service mark.
C. INTELLIGENCE OF THINGS is Widely Used
We have listed many examples showing that INTELLIGENCE OF THINGS is
widely used, by, among others: (1) Applicant’s competitors such as UPS in the supply
chain and logistics management field and Samsung in the electronics manufacturing
and engineering fields; (2) other technology companies; and (3) the technology media.
Widely used informational phrases such as INTELLIGENCE OF THINGS often fail
to function as service marks. In re Wal-Mart, 129 USPQ2d at 1153 (“Common use of
a phrase by third parties merely for the purpose of imparting information makes it
less likely that the public will perceive it as identifying a single commercial source
and less likely that it will be recognized by purchasers as a trademark.”); D.C. One
Wholesaler, 120 USPQ2d at 1716 (“because the ubiquity of the phrase on
apparel and other souvenirs of many makers has given it a significance as an expres-
sion of enthusiasm, it does not create the commercial impression of a source indicator,
even when displayed on a hangtag or label”); In re Hulting, 107 USPQ2d 1175, 1177
(TTAB 2013) (“The more commonly a phrase is used, the less likely that the public
will use it to identify only one source and the less likely that it will be recognized by
purchasers as a trademark.”) (quoting In re Eagle Crest, 96 USPQ2d at 1229); In re
Volvo Cars, 46 USPQ2d at 1459 (“the primary significance of the phrase DRIVE
SAFELY, as used by applicant, and as likely to be perceived by purchasers and pro-
spective purchasers, is merely that of an everyday, commonplace safety admonition”).
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See also Reed v. Amoco Oil Co., 611 F.Supp. 9, 225 USPQ 876 (M.D. Tenn. 1984)
(“…courts are reluctant to allow one to obtain monopoly rights to the use of a common
word or phrase … The more common a phrase is, the more it appears in everyday
parlance, less is the likelihood that the phrase identifies the source of a certain prod-
uct, and less is the likelihood that it deserves trademark protection ….”). Here, as in
these “widespread use” cases, INTELLIGENCE OF THINGS is too commonly used
by too many third parties for it to identify any particular goods or services or the
sources thereof.7
Furthermore, granting either registration Applicant seeks “would achieve the
absurd result of hampering others in their use of the common” phrase
INTELLIGENCE OF THINGS for goods or services which feature or are rendered
through “intelligent” IoT devices. In re Schwauss, 217 USPQ at 362. See also In re
Volvo Cars, 46 USPQ2d at 1460 (“to grant exclusive rights to applicant in this
ordinary and commonly used safety admonition would interfere with the rights of
others in the automobile industry to freely use the familiar phrase” to promote safe
driving). In short, the phrase INTELLIGENCE OF THINGS is too commonly used in
Applicant’s fields, and for its identified services, for it to be perceived as a service
mark. Applicant should not be able to deny potential competitors (who according to
the record also use the phrase) the right to use it freely.

7 “In order to maintain the Examining Attorney’s refusal, we need not find that the evidence
shows third-party use of the alleged mark on goods ‘in commerce.’” In re DePorter, 129
USPQ2d at 1302.
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D. Applicant’s Proposed Failure to Function Test and Other
Arguments in Favor of Registration are Unavailing
Based on many of the cases cited by the Examining Attorney in support of the
refusals (a number of which are cited in this decision), Applicant proposes that the
Board adopt a new test for determining whether a proposed mark functions as such.
It argues that its proposed test synthesizes the caselaw on failure to function, and,
not surprisingly, that under its proposed test the refusals are inappropriate.
Applicant specifically contends that a phrase fails to function as a mark only when
it “(i) has a single, well understood meaning or message, (ii) is widely used by the
general public to convey the well understood meaning or message, and (iii) relates to
a topic of nationwide awareness or is the type of phrase that is ‘uttered on a daily
basis, almost automatically without thought.’” 13 TTABVUE 10 (Applicant’s Appeal
Brief at 9) (citing In re Volvo Cars, 46 USPQ2d at 1460)). We disagree that Applicant’s
proposed test is consistent with the relevant caselaw, and therefore decline to apply
it, for several reasons.
First, the question is not whether the term has a “single, well understood
meaning,” without regard to the identified services. Marks are always analyzed − and
in fact only exist − in connection with particular goods or services; unlike copyrights
and patents, trademarks and service marks do not provide their owner with a “right
in gross.” United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918) (“There
is no such thing as property in a trade-mark except as a right appurtenant to an
established business or trade in connection with which the mark is employed.”). Thus,
we must consider the proposed mark in connection with the goods or services
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identified in the involved applications. See; In re Peace Love World Live, LLC, 127
USPQ2d 1400, 1403-04 (TTAB 2018) (finding that ornamental phrase I LOVE YOU
on a bracelet “does not identify and distinguish the source of the bracelet, especially
where there is so much jewelry decorated with the term I LOVE YOU in the
marketplace.”); D.C. One Wholesaler, 120 UPQ2d at 1716 (considering “the relevant
field of goods, and especially in the field of such goods marketed as souvenirs,” and
finding that term in question fails to function as a mark in part because “the
marketplace is awash in products that display the term”); In re Eagle Crest, 96
USPQ2d at 1230 (focusing on the clothing identified in the application, and finding
that phrase ONCE A MARINE, ALWAYS A MARINE would not function as a mark
because “consumers would be accustomed to seeing this phrase displayed on clothing
items from many different sources”).8 Here, the evidence establishes that
INTELLIGENCE OF THINGS has a consistent and well-understood meaning in
connection with Applicant’s supply chain, logistics and electronics manufacturing
and engineering services, among others.

8 The focus remains on the identified goods or services in other contexts where the question
is whether the term functions as or is capable of functioning as a mark. Inwood Labs., Inc. v.
Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) (“a product feature is functional if it is essential
to the use or purpose of the article or if it affects the cost or quality of the article”) (emphasis
supplied); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1588 (TTAB
2014) (meteorological meanings of “cloud” irrelevant to whether CLOUDTV is generic for
computer goods and services, because “the determination of whether a proposed mark is
capable of achieving significance as a source identifier must be made in relation to the goods
and services for which registration is sought, not in the abstract”). Of course, the focus is also
on the identified goods and services even when the issue is not whether a mark is capable or
functions as a mark. Octocom Syst. Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (in context of likelihood of confusion, stating “[t]he
authority is legion that the question of registrability of an applicant’s mark must be decided
on the basis of the identification of goods set forth in the application …”).
Serial Nos. 86453853 and 86493735
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Second, and similarly, we are not concerned here with the “general public.”
Rather, we must consider Applicant’s proposed mark from the perspective of
purchasers, potential purchasers and users in Applicant’s industry, and specifically
those who may purchase Applicant’s services. In re Aerospace Optics, 78 USPQ2d at
1862 (focusing on “purchasers or potential purchasers”); In re Volvo Cars, 46 USPQ2d
at 1460 (focusing on “American drivers” and finding that DRIVE SAFELY fails to
function as a mark because it is a “commonplace safety admonition” and granting
exclusive rights in the term “would interfere with the rights of others in the
automobile industry to freely use the familiar phrase”).9
Here, the relevant public includes those in the fields of supply chain and logistics
management services, and electronics manufacturing and engineering services. The
record reveals that the Internet of Things and artificial intelligence are important in
these fields, and increasingly so, and that in these fields INTELLIGENCE OF
THINGS is a commonly used phrase that merely conveys information, specifically the
combination of IoT and AI.10

9 We also focus on the relevant industry in other contexts. See In re Todd Co., 290 F.2d 597,
129 USPQ 408, 410 (CCPA 1961) (finding a mark capable of distinguishing source based in
part on “the practice in this industry”); In re Frankish Enter. Ltd., 113 USPQ2d 1964, 1973
(TTAB 2015) (focusing on the “monster truck field”); Sheetz of Del., Inc. v. Doctor's Assocs.
Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) ("The relevant public for a genericness
determination is the purchasing or consuming public for the identified goods.") (citing Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991)); Stuart Spector
Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (focusing on
“whether the configurations are so common in the industry as to be generic”); In re File, 48
USPQ2d 1363, 1367 (TTAB 1998) (focusing on the “bowling industry” as a whole).
10 In any event, there is no evidence that INTELLIGENCE OF THINGS has any meaning
other than the “IoT + AI” meaning revealed by the record.
Serial Nos. 86453853 and 86493735
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Finally, and for the same reasons, the phrase need not be a “topic of nationwide
awareness” in the sense that the public at large is aware of it or uses it often. Our
concern, again, must lie with how the phrase is perceived by the relevant public,
which consists of purchasers, potential purchasers and users of Applicant’s identified
services. This is illustrated by In re Bose Corp., 192 USPQ at 213 (affirming refusal
to register SYNCOM), In re DePorter, 129 USPQ2d at 1298 (refusing to register
#MAGICNUMBER108 which was Chicago Cubs rather than nationally-focused) and
In re Phoseon Technology, 103 USPQ2d at 1822 (refusing to register
SEMICONDUCTOR LIGHT MATRIX). None of these terms or phrases constituted a
“topic of nationwide awareness,” yet they were refused registration because they
failed to function as marks.
Turning to Applicant’s remaining arguments, even if Applicant coined or was the
first to use the phrase INTELLIGENCE OF THINGS, that is not relevant to whether
it functions as a service mark. See In re DePorter, 129 USPQ2d at 1303; Cf. In re
Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1959 (TTAB 2018) (in context of
genericness refusal). And to the extent Applicant relies on third-party registrations
to argue that its proposed mark should also be registered, the argument is not well
taken. Indeed, “neither the Trademark Examining Attorney nor the Board is bound
to approve for registration an Applicant’s mark based solely upon the registration of
other assertedly similar marks for other goods or services having unique evidentiary
records.” In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); see also In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board
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must decide each case on its own merit …. 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.”).
IV. Conclusion
Because it is merely informational in the context of Applicant’s identified services,
widely used by the relevant public in the relevant markets, and would not be
perceived as an indicator of source, INTELLIGENCE OF THINGS fails to function
as a service mark under Sections 1, 2, 3 and 45 of the Trademark Act. 15 U.S.C.
§§ 1051-1053, 1127.
Decision: The refusals to register the phrase INTELLIGENCE OF THINGS
because it does not function as a service mark are affirmed in both of the involved
applications.