K-2 Corp.

Trademark Trial and Appeal Board

Aug 6, 1998

No. 74508154 (T.T.A.B. Aug. 6, 1998)

Paper No. 18
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 6, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re K-2 Corporation
___________
Serial No. 74/508,154
___________
James R. Uhlir and Faye L. Mattson of Christensen, O’Connor,
Johnson, & Kindness for applicant.
Cheryl A. Butler, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
K-2 Corporation has filed a trademark application to
register the mark SMART SKI for “sporting goods, namely,
snow skis and ski poles.”1 The application includes a
disclaimer of SKI apart from the mark as a whole.
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15

1 Serial No. 74/508,154, in International Class 28, filed March 30,
1994, based on an allegation of a bona fide intention to use the mark in
commerce. On February 23, 1996, applicant filed its statement of use,
alleging first use and first use in commerce as of December 1, 1995, and
specimens of use.
Serial No. 74/508,154
2
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
We address, first, applicant’s contention that the
refusal to register is improper because it was made for the
first time in response to applicant’s statement of use and
accompanying specimens; that at this stage of examination,
in the absence of a clear error, the Examining Attorney
should not issue a refusal concerning matters which could or
should have been raised during examination prior to issuance
of the notice of allowance; and that “in this case, the
Office has not met its burden of showing clear error.”
The Trademark Manual of Examining Procedure (TMEP),
Section 1105.05(f)(ii), states that for the purpose of the
examination of the statement of use, the Examining Attorney
may issue a refusal under Section 2(e)(1) of the Act only
“if the refusal is dictated by changed circumstances from
the time of initial examination or the failure to issue such
a refusal would constitute clear error.” The Examining
Attorney’s position is that this case involves changed
circumstances. She contends that at the time of the initial
examination of the application, in 1994, there was no

Serial No. 74/508,154
3
indication that smart materials and technology were used in
consumer goods.
In the recent case of In re Sambado & Son Inc., 45
USPQ2d 1312 (TTAB 1998) [expressly overruling In re Parfums
Schiaparelli, Inc., 37 USPQ2d 1864 (TTAB 1995)], the
application had been refused registration on the ground of
mere descriptiveness during examination of the statement of
use. In response, applicant amended its application to the
Supplemental Register. A final refusal was ultimately
issued on the ground that the subject matter sought to be
registered is generic. Applicant in that case sought the
Board’s determination both of the substantive issue
concerning whether the applied-for mark is capable of
identifying and distinguishing applicant’s goods, and of the
procedural question of whether the failure to issue the mere
descriptiveness refusal during initial examination of
applicant’s application constitutes clear error. Regarding
the latter issue, the Board concluded the following.
The Examination Organization makes the
determination of ‘clear error,’ which
determination ultimately is properly reviewable on
petition to the Commissioner. (footnote omitted)
The Board’s determination on appeal is to be
limited to the correctness of the underlying
substantive refusal to register. The Board will
not second guess the Examining Organization’s
procedural determination, that is, the latter’s
application of the ‘clear error’ standard. As
noted, the application of the ‘clear error’
standard is, in this context, a procedural
question (one that answers the question, ‘Should a
new refusal be made and defended by the Examining
Attorney?’).
Serial No. 74/508,154
4
In this case, the Examining Attorney contends that the
new refusal under Section 2(e)(1) was properly made during
the examination of the statement of use in view of changed
circumstances, as provided in TMEP Section 1105.05(f)(ii),
rather than due to the presence of clear error. However,
this is a procedural determination by the Examining
Organization that is completely analogous to the situation
in In re Samboda & Son Inc., supra. As such, it is properly
reviewable on petition to the Commissioner rather than in
this appeal to the Board of the substantive refusal to
register. Thus, we have not considered this issue further
herein.
Turning to the issue properly before us of mere
descriptiveness, the Examining Attorney contends that
applicant’s “goods were developed using smart structures
technology, a specific field of study”; that “the
piezoelectric materials used in the skis are known as smart
materials”; and that “SMART is a term of art in regard to
such materials.” The Examining Attorney states that
applicant’s specimens “clearly indicate that the skis use
new technologies based on smart structures technologies,
including a built-in electric circuit, to convert unwanted
vibrations into useful electrical energy” and, thus, she
concludes that SMART SKIS describes skis produced using
smart materials and technology. In support of her argument,
Serial No. 74/508,154
5
the Examining Attorney has submitted numerous excerpts,
several of which are noted below, of articles retrieved from
the LEXIS/NEXIS information database.
. . . international scientists representing 21
countries, on various aspects of ferroelectrics
and their applications, covering major advances in
the areas of: piezoelectrics; dielectrics; thin
film ferroelectrics; actuators; smart materials;
. . . [Innovator’s Digest, April 16, 1996]
. . . a radical ski that it claims performs well
in all conditions - because it has a “brain.” It
uses piezoelectric “smart materials,” which can
detect vibration and convert it directly into an
electrical energy which, in turn smoothes out the
vibrations . . . [The Vancouver Sun, April 6,
1996, writing about applicant’s product]
It is basically the rotor mast and blades made of
smart materials, Barrett said March 28. Smart
materials, known as piezoelectric materials, are
composites that expand or contract when voltage is
applied to their surface. [Defense News, April 7,
1996]
In Mothra the stabilators still pivot, but all
that machinery has been replaced by a rear spar
made of a smart material: a piezoelectric ceramic
that expands or contracts when zapped with an
electric current. [The San Diego Union-Tribune,
September 6, 1995]
Douglas has done preliminary studies on all three
materials for the U.S. Army, and will choose two
for the smart rotor. “We’ll use either
piezoelectric or magnetostrictive actuators on one
set of flaps, and shape-memory alloy on the
other,” says King. [Machine Design, August 8,
1994]
The Examining Attorney has also submitted a copy of an
advertisement for applicant’s goods from the December 1995
issue of Ski magazine wherein applicant touts its goods as
incorporating smart technologies and materials.
Serial No. 74/508,154
6
Applicant concedes that “the terms ‘smart technologies’
or ‘smart materials’ . . . are used to denote piezoelectric
materials,” but contends that “the word ‘smart’ by itself is
not a term of art for piezoelectric materials, nor is it
commonly used as an equivalent for the term ‘smart
technologies’ or the term ‘smart materials’”; and that when
“the mark is considered in its entirety the result . . . ,
SMART SKI, is an incongruous term because a ski cannot think
and be smart.” Applicant included with its brief a complete
print-out of an article, an excerpt of which was previously
submitted by the Examining Attorney. It appears, in
pertinent part, as follows.
HEADLINE: SMART SENSORS
BODY:
This report (from the INSPEC Database)
concerns the design, development, evaluation, and
applications of smart sensors. It includes, for
example: the development of silicon,
piezoelectric, intelligent, and solid-state
sensors; applications in factory automation,
aerospace flight control, optical communication,
automotive electronics, biomedical measurement,
and vibration detection and control in general;
composite materials with inherent sensing
properties; and more.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used, or intended to be used.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re
Serial No. 74/508,154
7
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). It is
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods, only that
it describe a single, significant quality, feature, etc. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).
There is no question in this case that applicant’s
goods are produced using “smart” technology and materials.
We note that, in addition to text on the specimens
indicating that smart technology is used in producing
applicant’s skis, applicant’s specimens prominently display
the applied-for mark, SMART SKI, directly above the word
TECHNOLOGY and in the same style and size font. Contrary to
applicant’s contentions otherwise, it is equally evident
that, considered in connection with the identified goods,
the single word SMART modifies the word SKI (i.e. SMART
SKI), to directly convey to prospective purchasers that the
goods identified by the mark consist of smart materials.
There is support for this conclusion in the LEXIS/NEXIS
Serial No. 74/508,154
8
excerpts of record wherein the word “smart” is used without
the words “technology” or “materials” to indicate that the
identified product utilizes smart materials or technology
[e.g., “smart rotor,” “smart sensor,” “smart systems,” and
“smart structures”].
In conclusion, it is our view that, when applied to
applicant’s goods, the term SMART SKI immediately describes,
without conjecture or speculation, a significant feature or
function of applicant’s goods, namely, that applicant’s
goods are produced using smart technology and/or materials.
Nothing requires the exercise of imagination, cogitation,
mental processing or gathering of further information in
order for purchasers of and prospective customers for
applicant’s goods to readily perceive the merely descriptive
significance of the term SMART SKI as it pertains to
applicant’s identified goods.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board