Gilbarco, Inc.

Trademark Trial and Appeal Board

May 19, 1998

No. 74676293 (T.T.A.B. May. 19, 1998)

Paper No. 11
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 19, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gilbarco, Inc.
________
Serial No. 74/676,293
_______
Kenneth R. Schaefer of Norris, McLaughlin & Marcus for applicant.
Alan C. Atchison, Trademark Examining Attorney, Law Office 102
(Myra K. Kurzbard, Managing Attorney).
_______
Before Seeherman, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Gilbarco, Inc. has filed an application to register the
term "SMARTPAD" as a trademark for "electronic security devices
comprising computer memory and microcontroller elements and
encryption software for encrypting data entries for use in
connection with automated fuel dispensers."1

1 Ser. No. 74/676,293, filed on May 1, 1995, which alleges a bona fide
intention to use the term.
Ser. No. 74/676,293
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant’s goods, the term
"SMARTPAD" is merely descriptive of them.2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of the ingredients, qualities, characteristics,
features, functions, purposes or uses of the goods or services.
See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987) and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 217-18 (CCPA 1978). It is not necessary that a term
describe all of the properties or functions of the goods 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 idea about them. Moreover,
whether a term 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 those goods or services and the possible
significance that the term would have to the average purchaser of
the goods or services because of the manner of its use. See In

2 Although the Examining Attorney also made final a requirement that
applicant clarify the identification of its goods, such requirement
Ser. No. 74/676,293
3
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus,
"[w]hether consumers could guess what the product [or service] is
from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant states that the term "SMARTPAD" is suggestive
rather than merely descriptive of its goods, arguing that:
The LEXIS/NEXIS search made by the
Examiner, as well as the dictionary
references, clearly demonstrates [sic] that
there is no basis to conclude that a
purchaser of products in the automated fuel
dispenser market (the market recited in the
statement of goods) would reach an immediate
understanding or thought that the apparatus
marketed [as] SMARTPAD was an "electronic
security device ... comprising encryption
software for encrypting data entries ...
etc." as stated in the description of goods.
The only actual use of smartpad relied
upon by the Examining Attorney, as found in
the LEXIS/NEXIS search, is for a
significantly different type of device (a set
of "soft" function keys on a display device
which are operated by a mouse click).
The Examining Attorney, on the other hand, maintains
that, as shown by the evidence he has made of record, "purchasers
will immediately understand that the applicant’s goods contain
microcontroller electronic elements and a pad. As such, in
relation to the applicant’s goods, the [combination of the] terms
[’SMART’ and ’PAD’ into the designation] ’SMARTPAD’ will
immediately describe features of the goods and therefore the
proposed mark is merely descriptive".
In support of his position, the Examining Attorney has
furnished copies of definitions from (1) the Microsoft Press

was subsequently withdrawn.
Ser. No. 74/676,293
4
Computer Dictionary (2d ed. 1994), which at 363 defines the word
"smart" as signifying "[a] synonym for intelligent; in relation
to software or hardware, capable of processing information,
typically beyond what is currently expected";3 (2) Webster’s New
World Dictionary of Computer Terms (3d ed. 1988), which at 348
lists the word "smart" as meaning "[h]aving some computational
ability of its own. Smart devices usually contain their own
microprocessors or microcomputers"; (3) the IBM Dictionary of
Computing (10th ed. 1994), which at 491 indicates that the term
"pad" means, among other things, "damping pad, key pad"; and (4)
The Random House Unabridged Dictionary (2d ed. 1993), which at
1052 sets forth the designation "key pad" as connoting "1. a
separate section on some computer keyboards, grouping together
numeric keys and those for mathematical or other special
functions in an arrangement like that of a calculator. 2. a
panel similarly keyed and used in conjunction with a television
set, electronic banking machine, or other electronic device.
Also called numeric keypad."4 In addition, as a further aid to

3 We judicially notice that the latest available edition of such
reference work, namely, the Microsoft Press Computer Dictionary (3d
ed. 1997), lists the term "smart" at 439 as an adjective signifying
"[a] synonym for intelligent. See intelligence." Such dictionary
defines "intelligent" at 256 as an adjective meaning "[o]f, pertaining
to, or characteristic of a device partially or totally controlled by
one or more processors integral to the device" and sets forth
"intelligence" at 255-56 as a noun connoting, inter alia, "1. The
ability of hardware to process information. A device without
intelligence is said to be dumb; for example, a dumb terminal
connected to a computer can receive input and display output but
cannot process information independently."
4 Such dictionary, we judicially notice, also defines the term "smart"
at 1803 as signifying, in relevant part, "17. Informal. equipped
with, using, or containing electronic control devices, as computer
systems, microprocessors, or missiles: a smart phone; a smart copier.
Ser. No. 74/676,293
5
understanding the issue raised by the terminology and product
involved in this appeal, we judicially notice5 that the Computer
Dictionary (3rd ed. 1992) at 359 defines the word "smart" as
meaning "[h]aving some computational ability of its own. Smart
devices usually contain their own microprocessors. A synonym for
intelligent," while The Computer Glossary (7th ed. 1995) at 214
lists the term "keypad" as denominating "[a] small keyboard or
supplementary keyboard keys; for example, the keys on a
calculator or the number/cursor cluster on a computer keyboard"
and at 248 sets forth the term "microcontroller" by referring to
"[s]ee MCU," which at 241 defines such term as signifying "(1)
(MicroController Unit) A control unit on a single chip".
The Examining Attorney, as additional support for his
position, has submitted the two most pertinent stories retrieved
from his search of the "NEXIS" computerized data base.6 Such
stories, which appeared in separate publications by the same
publisher, indicate in pertinent part that (emphasis added):
A smartpad is a mini window that looks
like a keypad and includes ... the most

18. Computers. intelligent (def. 4)," the latter of which is in turn
defined at 991 as meaning "4. Computers. pertaining to the ability
to do data processing locally; smart: An intelligent terminal can
edit input before transmission to a host computer."
5 It is settled that the Board may properly take judicial notice of
dictionary definitions, including definitions in technical reference
works. See, e.g., In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419,
423 (CCPA 1962); Hancock v. American Steel & Wire Co. of New Jersey,
203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); and University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
6 Specifically, on July 29, 1996, the Examining Attorney searched the
"CURNWS," "CMPTRS" and "TECHNY" files of the "CMPCOM" library using
the search request "SMARTPAD OR SMART PAD".
Ser. No. 74/676,293
6
commonly used AS/400 functions, which can be
accessed with once [sic] of the mouse. The
best smartpads provide a good default set up
for the user, but also allow a lot of
customization by the u[sers to] add their own
frequently-used commands. -- LAN Computing,
February 1994 at S8 (article headlined in
part: "Navigating LAN connections: AS/400
connectivity calls for the proper software,
user interface and administrative features
...."); and
Features include automatic window and
font sizes, macro recorder that sends a
sequence of keystrokes to the host via the
mouse, and smartpad keys that can invoke
macros or AS/400 functions. -- MIDRANGE
Systems, September 14, 1993, at 50 (article
headlined in part: "Attachmate’s NetWare
5250 LAN Workstation for Windows terminal
emulation software ...."
In view of the above, and given the ubiquitous nature
of microcontroller-based, microprocessor-operated and computer-
controlled items in all facets of commercial as well as everyday
life, it is our view that, when applied to "electronic security
devices comprising computer memory and microcontroller elements
and encryption software for encrypting data entries for use in
connection with automated fuel dispensers," the term "SMARTPAD"
immediately describes, without conjecture or speculation, a
significant characteristic or feature of applicant’s goods,
namely, the intelligent keypad used for encrypting data in
connection with automated fuel dispensers. As previously noted,
it is simply not necessary that a term describe every
characteristic, feature, purpose, function, ingredient, quality
or other aspect of a product in order for it to be merely
descriptive. It is sufficient, instead, if the term, as here,
describes one significant attribute of the product, such as a
Ser. No. 74/676,293
7
characteristic or feature. See, e.g., In re Venture Lending
Associates, 226 USPQ 285, 286 (TTAB 1985); In re Aid
Laboratories, Inc., 223 USPQ 357, 358-59 (TTAB 1984); In re
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Plainly, to purchasers of automated fuel dispensers
and/or those concerned with electronic security devices for
encrypting data entries with respect to such dispensers, there is
nothing in the term "SMARTPAD" which is ambiguous, incongruous,
indefinite or too abstract. No degree of imagination,
cogitation, mental processing or gathering of further information
is necessary in order for those persons to perceive the merely
descriptive significance of such term as it relates to a key
feature of applicant’s product, namely, a smart pad, which
provides the user with the ability to have data pertaining to
automatic fuel dispensing encrypted as it is entered by means of
a keypad. Clearly, when joined together, the individual terms
comprising the term "SMARTPAD" have a meaning, as shown by the
dictionary definitions thereof, which is identical to that which
ordinary usage would ascribe to those terms in combination. See
In re Gould Paper Corp., 824 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.
Cir. 1987).
Although applicant asserts in its reply brief that
"there is not the slightest hint or suggestion in the name
’SMARTPAD’ that ... encryption software is included in the
goods," the dictionary definitions of the word "smart" plainly
are broad enough to encompass such information processing ability
Ser. No. 74/676,293
8
as encryption software of all types, including that for automatic
fuel dispensers. Moreover, as to applicant’s further contention
that "[t]here is no reference to a ’pad’ in the recited goods,"
the Examining Attorney accurately observes in his brief that
"applicant has not denied that its goods consist in part of a
keypad, numerical entry pad, panel or other data entry pad ...."
Indeed, applicant concedes in its reply brief that its "overall
system does include a user operated data entry device in the form
of an array of geometric areas with a number in each area," which
statement is simply a verbose admission that its product contains
a numeric keypad or "pad" for short. Thus, as pointed out by the
Examining Attorney, "applicant’s goods do in fact comprise a pad
and ... [s]uch goods fall within the broad definitions ascribed
to the word ’PAD’." Purchasers and users of applicant’s goods,
therefore, will immediately perceive the term "SMARTPAD," when
used in connection with such goods, as describing an intelligent
keypad, which constitutes an important characteristic or
significant feature of the goods. See, e.g., In re Cryomedical
Sciences Inc., 32 USPQ2d 1377, 1379 (TTAB 1994) ["SMARTPROBE"
held merely descriptive of "one time use, disposable cryosurgical
probes"].
Finally, we note that the fact that applicant will or
intends to be the first entity to use the term "SMARTPAD" in
connection with its particular goods is simply not dispositive
where, as here, such term unequivocally projects a merely
descriptive connotation. See In re MBAssociates, 180 USPQ 338,
339 (TTAB 1973). As is plain from the analogous stories
Ser. No. 74/676,293
9
retrieved by the Examining Attorney from the "NEXIS" database,
the designation "smartpad," when utilized in reference to a set
of function keys arrayed as a keypad on a computer display and
operated by mouse clicks thereon, merely describes but another
version or kind of intelligent keypad which differs from
applicant’s product only in the manner of its operational
function rather than in its basic data entry purpose. Both
products, as the Examining Attorney persuasively points out,
"feature ... ’smart’ functions introduced by means of or
contained within a ’pad’ or panel." Thus, the term "SMARTPAD,"
whether applied to an aspect of applicant’s product or to a
keypad of the type mentioned in the "NEXIS" articles, projects
the same merely descriptive significance in either instance.
Accordingly, because the term "SMARTPAD" conveys
forthwith an immediate idea of a significant characteristic or
feature of applicant’s products, namely, the intelligent keypad
of its electronic security devices for encrypting data entries
for use in connection with automated fuel dispensers, such term
is merely descriptive within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
E. J. Seeherman
E. W. Hanak
G. D. Hohein
Ser. No. 74/676,293
10
Administrative Trademark Judges,
Trademark Trial and Appeal Board