Fong

Trademark Trial and Appeal Board

Oct 16, 2006

No. 78504723 (T.T.A.B. Oct. 16, 2006)

Mailed: October 16, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fong
________

Serial No. 78504723
_______

Mark B. Garred of Stetina Brunda Garred & Brucker for Peter
Sui Lun Fong.

David Collier, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).1
_______

Before Seeherman, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Peter Sui Lun Fong, an individual and citizen of
China, has applied to register on the Principal Register
the mark SMART SENSOR in standard character form for the
following goods, as amended: “electric action toys, namely

1 During the course of prosecution, this application was
reassigned to the above-noted trademark examining attorney.
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser No. 78504723
2
interactive electric action toys,” in International Class
28.2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of a feature or
quality of applicant’s goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main appeal
briefs, and applicant filed a reply brief.
Applicant contends that his mark is at most suggestive
of his goods. Specifically, applicant argues that the
examining attorney selected definitions of “smart” and
“sensor,” both of which have numerous meanings, from a
variety of definitions in order to support the
descriptiveness refusal; that because the component terms
have multiple meanings, the composite mark does not
communicate, without further analysis, a clear
understanding of applicant’s goods; that the applied-for
mark has numerous connotations; and that the mark SMART
SENSOR thus is not merely descriptive of the goods.
Applicant further argues that the examining attorney’s

2 Application Serial No. 78504723 was filed October 22, 2004,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce on the goods.

Ser No. 78504723
3
proffered evidence fails to establish that the mark is
merely descriptive as applied to applicant’s goods; and
that any doubt as to the registrability of the mark must be
resolved in applicant’s favor. In support of his arguments
in favor of registration, applicant submits with his brief
a listing of third-party registrations.3
The examining attorney maintains that applicant’s mark
is a combination of two descriptive terms forming a
composite that merely describes a feature of the identified
goods; that due to the prevalence of computer technology in
daily life, consumers are accustomed to encountering
technology-based terms and understanding the meaning
thereof; and that upon encountering the mark SMART SENSOR
in relation to applicant’s goods, consumers immediately
would understand that the goods are interactive electric
action toys containing automated sensors. The examining
attorney further argues that the composite terms “smart”
and “sensor” may have other definitions in other contexts;
that, however, such definitions are not determinative of
the question of mere descriptiveness of SMART SENSOR as

3 Normally, evidence submitted with a main brief on the case
would be untimely and, therefore, given no consideration.
However, in this case the examining attorney did not object to
applicant’s evidence on that ground, but rather addressed the
list of registrations on its merits. Accordingly, we deem them
to have been stipulated into evidence.

Ser No. 78504723
4
applied to applicant’s goods; that in addition, the third-
party registrations listed by applicant in his brief are
not conclusive upon the instant question of mere
descriptiveness; that every case must be considered on its
own merits; and that the evidence submitted by the
examining attorney demonstrates that the mark SMART SENSOR
merely describes the goods recited in the involved
application. In support of the refusal, the examining
attorney has relied upon dictionary definitions of the
words “smart” and “sensor.” According to these
definitions, “sensor” may be defined, inter alia, as “a
device, such as a photoelectric cell, that receives and
responds to a signal or stimulus;” and “smart” may be
defined, inter alia, as “of, relating to, or being a highly
automated device, especially one that imitates human
intelligence: smart missiles” (emphasis in original).4
In addition, the examining attorney submitted copies
of registrations owned by applicant, as well as third-party
registrations for a variety of goods and services, in which
the terms “smart” or “sensor” are disclaimed apart from the
mark as shown. The examining attorney notes, in

4 The examining attorney cites to The American Heritage
Dictionary of the English Language, Third Edition (1992) for his
definitions. We note that copies of the proffered definitions
were submitted with the examining attorney’s first Office action.
Ser No. 78504723
5
particular, the following registrations owned by applicant
herein:
Registration No. 2722068, issued on June 3, 2003 on
the Principal Register for the mark JUST SMART in standard
character form for “interactive electronic action toys,”
and with a disclaimer of “SMART” apart from the mark as
shown; and

Registration No. 2946340, issued on May 3, 2005 on the
Principal Register for the mark SMART REPUBLIC in standard
character form for “interactive electronic action toys,”
and with a disclaimer of “SMART” apart from the mark as
shown.

The examining attorney also points to the following third-
party registration:
Registration No. 2674493, issued on January 14, 2003
on the Principal Register for the mark shown below

for “electronic systems, namely, sensors, computer
hardware, operating software and cables, visual displays,
audible alarms, and automatic vehicle steering, braking and
throttle controls that provide object detection, collision
warning, collision avoidance, and adaptive cruise control
for vehicles,” and with a disclaimer of “SMART SENSOR”
apart from the mark as shown.

The examining attorney further submitted the summary
of a search of the Google Internet search engine as well as
printed “screen shots” from Internet web pages retrieved
therefrom for the terms “‘smart sensor’ and toys”. We note
that “search results” pages provided by an Internet search
engine are of limited probative value in that use in a
search summary may indicate only that the two words in an
Ser No. 78504723
6
overall phrase appear separately in the website literature.
See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). In
this case, however, in at least the following excerpt, a
sufficient amount of unabridged text has been provided for
us to understand the context in which the words “smart
sensor” appear. Excerpts from these search results are
reproduced below (emphasis added):
I-Cybie evolves from a puppy to a mature dog…Just
like a real dog I-Cybie can be programmed to only
respond to his owner’s voice…I-Cybie is capable
of sensing movement and changes in ambient light.
His sensors are even sophisticated enough to
determine the direction of a noise, even TV
noise. Touch sensors help I-Cybie to determine
when he is being petted or stroked. After about
20 to 30 minutes of inactivity, I-Cybie drops
into sleep mode. When I-Cybie senses that it
needs to be recharged, it lowers its body down in
a yoga position with its legs splayed out so that
you know it [sic] running low on power. I-Cybie
also has smart sensor technology that enables I-
Cybie to find its charging station and plug
itself in to be recharged when it realizes it is
tired and needs more energy….
(www.amazon.com)

Applicant argues in reply that the examining attorney
characterizes his goods as containing automated or
electronic sensors; that, however, applicant’s
identification of goods does not reference such sensors;
and that the examining attorney thus “has taken certain
liberties in his characterization of the goods description
included in the subject application” (reply brief, p. 2).
Ser No. 78504723
7
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or feature of them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test." In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
We turn now to our determination of whether the mark
SMART SENSOR merely describes the goods identified thereby.
Ser No. 78504723
8
In addition to the dictionary definitions submitted by the
examining attorney, we also take judicial notice of the
following definition of “smart”:
Informal: equipped with, using, or containing
electronic control devices, as computer systems,
microprocessors, or missiles: a smart phone; or
smart copier.5

Based upon the above-noted dictionary definitions of
the terms “smart” and “sensor,” when these terms are
combined as SMART SENSOR we find that applicant’s mark
merely describes a characteristic of interactive electric
action toys, namely that the toy features highly automated
electronic controls that imitate human intelligence by
receiving and responding to a signal or stimulus, i.e., a
“smart sensor.” It is settled that “evidence [that a term
is merely descriptive] may be obtained from any competent
source, such as dictionaries, newspapers, or surveys." See
In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087,
(Fed. Cir. 2005); and In re Bed & Breakfast Registry, 791
F.2d 157, 229 USPQ 818 (Fed. Cir. 1986). We note
applicant’s argument that because the terms comprising his
mark have multiple meanings, the composite mark has
numerous connotations and thus is not merely descriptive of

5 The Random House Unabridged Dictionary (2d. ed. 1993). The
Board may take judicial notice of dictionary definitions. See
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Ser No. 78504723
9
his goods. However, we must consider the definitions of
“smart” and “sensor” within the context of the goods for
which registration is sought. See In re Chopper
Industries, 222 USPQ 258 (TTAB 1984); and In re Bright
Crest, Ltd., 204 USPQ 591 (TTAB 1979). As the Board has
previously noted, “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.” See In re Cryomedical Sciences Inc., 32 USPQ2d
1377, 1378 (TTAB 1994). In this case, when the mark SMART
SENSOR is used in connection with applicant’s electric,
interactive action toys, consumer would view the component
words as having the above-noted “computer” definitions of
“smart” and “sensor.” Thus, we are persuaded by the
evidence of record that when the terms SMART and SENSOR are
combined as SMART SENSOR, the mark is merely descriptive of
a feature of applicant’s identified goods; the combination
of terms does not present a unique or incongruous meaning.
See In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002).
We also note applicant’s argument that his
identification of goods does not refer to automated or

213 USPQ 594,596 (TTAB 1982); aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser No. 78504723
10
electronic sensors. However, the goods as identified are
broad enough to include electric, interactive action toys
featuring automated and electronic sensors. Certainly
there is no limiting language in the identification of
goods that would serve to exclude such goods.
The excerpt from the Google search summary, quoted
above, provides confirmation that the term “smart sensor”
is used to describe the technology used in interactive
electronic toys for automated electronic controls that
allow the toys to receive and respond to signals or
stimuli, thus showing that SMART SENSOR merely describes a
feature of such goods. As such, the examining attorney’s
evidence, at a minimum, corroborates what is already
established by the dictionary definitions. See In re
Finisar Corporation, 78 USPQ2d 1618 (TTAB 2006).
As noted above, the examining attorney made of record
registrations owned by applicant as well as third parties,
in which the terms SMART or SENSOR and, in one case
SMARTSENSOR, are disclaimed apart from the mark as shown.
Applicant, for his part, submitted a listing of third-party
registrations in which no disclaimers were submitted. None
of the third-party registrations is for goods or services
similar to those at issue herein, and they are of little
probative value in our determination of whether SMART
Ser No. 78504723
11
SENSOR merely describes the goods recited in the instant
application. However, both of applicant’s prior
registrations, for the marks JUST SMART and SMART REPUBLIC,
include a disclaimer of “SMART” and recite goods that are
nearly identical to the goods at issue herein, namely,
“interactive electronic action toys.” We are not privy to
the circumstances giving rise to applicant’s disclaimer of
“SMART” in these registrations. Nonetheless, we note that
these disclaimers tend to provide further corroboration
that the term “SMART” in the mark SMART SENSOR merely
describes applicant’s goods as identified in the involved
application.
We conclude that the mark SMART SENSOR merely
describes a feature or characteristic of applicant’s
“electric action toys, namely interactive electric action
toys.” Accordingly, we find that applicant's mark is
merely descriptive as contemplated by Section 2(e)(1) of
the Act.
Decision: The refusal to register is affirmed.