Kyocera Corporation

Trademark Trial and Appeal Board

Jun 4, 2015

No. 85741163 (T.T.A.B. Jun. 4, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kyocera Corporation
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Serial No. 85741163
_____

Sarah E. Nagae of Christensen O’Connor Johnson Kindness, PLLC,
for Kyocera Corporation.

David I, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Bucher, Wellington, and Lykos,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Kyocera Corporation (“Applicant”) seeks registration on the Principal Register of
the mark SMART SONIC RECEIVER for the following list of goods:
Telephones; cellular phones; satellite telephones; video telephones; telephones to
enable the users to hear the sounds by conducting vibrations generated by the
piezo-electric elements to the tissues of the human bodies; cellular phones to
enable the users to hear the sounds by conducting vibrations generated by the
piezo-electric elements to the tissues of the human bodies; satellite telephones to
enable the users to hear the sounds by conducting vibrations generated by the
piezo-electric elements to the tissues of the human bodies; video telephones to
enable the users to hear the sounds by conducting vibrations generated by the
piezo-electric elements to the tissues of the human bodies; piezo elements;
Serial No. 85741163
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computers; communications computers; electronic notebook computers;
electronic automatic translators; smart phones; smart phones to enable the users
to hear the sounds by conducting vibrations generated by the piezo-electric
elements to the tissues of the human bodies; personal digital assistants (PDA);
personal digital assistants (PDA) to enable the users to hear the sounds by
conducting vibrations generated by the piezo-electric elements to the tissues of
the human bodies; piezo-electric actuators for creating and transmitting audio
vibrations; audio speakers; audio speakers to enable the users to hear the
sounds by conducting vibrations generated by the piezo-electric elements to the
tissues of the human bodies; piezo-electric audio speakers; audio speakers for
conducting vibration of oscillatory waves to bones; audio speakers for converting
vibration of oscillatory waves to sounds, and transmitting the sounds to the
hearing organs; satellite telephones equipped with piezo-electric speakers; video
telephones equipped with piezo-electric speakers; computers equipped with
piezo-electric speakers; communications computers equipped with piezo-electric
speakers; electronic notebook computers equipped with piezo-electric speakers;
electronic automatic translators equipped with piezo-electric speakers;
telephones equipped with piezo-electric speakers; cellular phones equipped with
piezo-electric speakers; smart phones equipped with piezo-electric speakers;
personal digital assistants (PDA) equipped with piezo-electric speakers;
telephones equipped with piezo-electric actuators for creating and transmitting
audio vibrations; cellular phones equipped with piezo-electric actuators for
creating and transmitting audio vibrations; smart phones equipped with piezo-
electric actuators for creating and transmitting audio vibrations; personal digital
assistants (PDA) equipped with piezo-electric actuators for creating and
transmitting audio vibrations; satellite telephones equipped with piezo-electric
actuators for creating and transmitting audio vibrations; video telephones
equipped with piezo-electric actuators for creating and transmitting audio
vibrations; computers equipped with piezo-electric actuators for creating and
transmitting audio vibrations; communications computers equipped with piezo-
electric actuators for creating and transmitting audio vibrations; electronic
notebook computers equipped with piezo-electric actuators for creating and
transmitting audio vibrations; electronic automatic translators equipped with
piezo-electric actuators for creating and transmitting audio vibrations; satellite
telephones equipped with speakers for conducting vibration of oscillatory waves
to bones; video telephones equipped with speakers for conducting vibration of
oscillatory waves to bones; computers equipped with speakers for conducting
vibration of oscillatory waves to bones; communications computers equipped
with speakers for conducting vibration of oscillatory waves to bones; electronic
notebook computers equipped with speakers for conducting vibration of
oscillatory waves to bones; electronic automatic translators equipped with
speakers for conducting vibration of oscillatory waves to bones; telephones
equipped with speakers for conducting vibration of oscillatory waves to bones;
cellular phones equipped with speakers for conducting vibration of oscillatory
Serial No. 85741163
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waves to bones; smart phones equipped with speakers for conducting vibration of
oscillatory waves to bones; personal digital assistants (PDA) equipped with
speakers for conducting vibration of oscillatory waves to bones; satellite
telephones equipped with speakers for converting vibration of oscillatory waves
to sounds, and transmitting the sounds to the hearing organs; video telephones
equipped with speakers for converting vibration of oscillatory waves to sounds,
and transmitting the sounds to the hearing organs; computers equipped with
speakers for converting vibration of oscillatory waves to sounds, and
transmitting the sounds to the hearing organs; communications computers
equipped with speakers for converting vibration of oscillatory waves to sounds,
and transmitting the sounds to the hearing organs; electronic notebook
computers equipped with speakers for converting vibration of oscillatory waves
to sounds, and transmitting the sounds to the hearing organs; electronic
automatic translators equipped with speakers for converting vibration of
oscillatory waves to sounds, and transmitting the sounds to the hearing organs;
telephones equipped with speakers for converting vibration of oscillatory waves
to sounds, and transmitting the sounds to the hearing organs; cellular phones
equipped with speakers for converting vibration of oscillatory waves to sounds,
and transmitting the sounds to the hearing organs; smart phones equipped with
speakers for converting vibration of oscillatory waves to sounds, and
transmitting the sounds to the hearing organs; personal digital assistants (PDA)
equipped with speakers for converting vibration of oscillatory waves to sounds,
and transmitting the sounds to the hearing organs in International Class 9; and

Coin operated video games; arcade video game machines; arcade video game
machines equipped with speakers for conducting vibration of oscillatory waves to
bones; arcade video game machines equipped with speakers for converting
vibration of oscillatory waves to sounds, and transmitting the sounds to the
hearing organs; arcade video game machines equipped with piezo-electric
actuators for creating and transmitting audio; bath toys; children’s multiple
activity toys; home video game machines; home video game machines equipped
with speakers for conducting vibration of oscillatory waves to bones; home video
game machines equipped with speakers for converting vibration of oscillatory
waves to sounds, and transmitting the sounds to the hearing organs; home video
machines equipped with piezo-electric actuators for creating and transmitting
audio in International Class 28.1

The Trademark Examining Attorney issued a final refusal of registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that

1 Application Serial No. 85741163 was filed on September 28, 2012, based on ownership of a
foreign registration and a bona fide intent to use the mark in commerce, respectively under
Sections 44(e) and 1(b) of the Trademark Act.
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applicant’s proposed mark, when used on the identified goods, is merely descriptive
thereof.
Applicant filed a request for reconsideration and appealed the refusal. The
reconsideration request was denied by the Examining Attorney. Applicant and the
Examining Attorney then filed briefs.
Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re Abcor Development, 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). A mark 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; rather, it is sufficient that the mark describes one
significant attribute, function or property of the goods or services. In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338
(TTAB 1973).
Whether a mark is merely descriptive is not determined 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 the goods or services, and the
possible significance that the mark would have to the average purchaser of the
Serial No. 85741163
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goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). “The question is not whether someone presented with
only the mark could guess what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
In support of the refusal, the Examining Attorney relies on the following
dictionary definitions of the three composite terms of Applicant’s mark and argues
that each term retains a merely descriptive meaning in the context of the identified
goods:2
Smart “Of, relating to, or being a highly automated device, especially one that
imitates human intelligence: smart missiles”;

Sonic “Of or relating to audible sound: a sonic wave”; and

Receiver “A device, such as part of a radio, television set, or telephone, that
receives incoming radio signals and converts them to perceptible forms, such as
sound or light.”

The Examining Attorney argues that these terms, “taken together merely
describe a feature of the applicant’s goods. Specifically, [the goods] are or contain an
automated device such as part of a radio, television set, gaming system or telephone
or similar type receiver that uses electronics to capture and transmit audible
sound.” Brief at p. 6. He contends that the “individual components and composite

2 From Yahoo! Education website (www.education.yahoo.com/reference/dictionary),
printouts attached to Office Action issued February 4, 2013.
Serial No. 85741163
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result are descriptive of applicant’s goods and do not create a unique, incongruous,
or non-descriptive meaning in relation to the goods.” Id.
Although the Examining Attorney did not specifically identify both classes of
goods or otherwise limit the refusal to certain goods within either class, he
articulates the refusal as pertaining to both classes, namely, asserting that the
mark is merely descriptive of parts of a “telephone” (in Class 9) and “gaming
system” (Class 28). Moreover, Applicant did not file a request to divide the
application to parse out any identified goods to which it believes the descriptiveness
refusal is not applicable, e.g., “bath toys.” See TBMP § 1205.02 (Request to Divide)
and TMEP § 1110 (2014) (Request to Divide an Application). Absent a request to
divide the application, we treat the refusal to registration as being applicable to
both classes and all goods within each class. In re Positec Group Limited, 108
USPQ2d 1161, 1168 (TTAB 2013); see also, In re Analog Devices Inc., 6 USPQ2d
1808 (TTAB 1988) aff’d without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir.
1989) (If a mark is descriptive of any of the goods or services for which registration
is sought, it is proper to refuse registration as to the entire class).
In addition to the dictionary definitions of the composite terms in Applicant’s
mark, the Examining Attorney relies on the following description of one of
Applicant’s telephones taken from an online Sprint user guide that was submitted
by Applicant with its request for reconsideration:3

3 Request for Reconsideration, filed on April 21, 2014. TSDR p. 35 (printout from
www.eguides.sprint.com/support/eguides/kyoceratorque...).
Serial No. 85741163
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Smart Sonic receiver transmits sound through vibrations on your phone’s
display screen. Place your ear around the internal receiver and adjust the
position of the phone to find the best hearing point depending on the
surrounding environment.

We further note that Applicant submitted additional materials elaborating on
the use and technology of goods with SMART SOUND TECHNOLOGY. For
example, Applicant submitted the following advertisement:4

Applicant, on the other hand, asserts that it “coined the mark SMART SONIC”
and that while the individual words in the mark have “meanings on their own,” the
composite is not merely descriptive because “consumers would not understand the

4 Id. at p. 30 (printout from www.kyocera-wireless.com/smart-sonic-receiver).
Serial No. 85741163
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wording to describe any actual quality, feature or characteristic of Applicant’s
goods.” Brief, p. 3. In support, Applicant relies on Google Internet search results for
the terms “smart sonic receiver” and “smart sonic” (with quotation marks in place in
searches). Applicant asserts that the Google search evidence “strongly indicates
that the mark has no definition or commonly-understood meaning in the
marketplace other than as the name of Applicant’s technology.” Id. at p. 4. With
respect to the “smart sonic” search evidence, in particular, Applicant contends that
this also “strongly indicates that consumers do not encounter this wording used
with any particular definition, quality or feature in the marketplace.” Id. at p. 6
Applicant also faults the Examining Attorney for employing a “blanket rule” in
stating that “if the individual components of a mark retain their descriptive
meaning in relation to the goods, the combination results in a composite mark that
is itself descriptive and not registrable.” Id. at p. 8 (Applicant quoting language
from the Office Action issued on October 20, 2013). Applicant asserts that the
“Trademark Office has, in many instances, determined that compound marks
comprised of two individually descriptive terms are not merely descriptive of the
applicable goods or services” and that “[s]everal of these marks include the wording,
SMART, so are directly analogous to the current mark.” Id. at p. 9. In support,
Applicant submitted copies of third-party registrations containing the term “smart”
in the mark, without a disclaimer of the term and on the Principal Register. In
addition, Applicant submitted additional third-party registrations for marks
Serial No. 85741163
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containing the term “sonic,” without a disclaimer of that term and on the Principal
Register.
Finally, in its reply brief, Applicant contends that the term “sonic” is modifying
“receiver” in its mark and that the mark is thus “incongruous because a receiver
does not capture or convert audible sound.” Based on this purported “incongruity,”
Applicant contends that the mark is not merely descriptive and “eligible for
registration.” Reply brief at p. 3
Upon review of the record and consideration of the arguments, we find that
Applicant’s mark is merely descriptive.
The evidence shows that SMART SONIC RECEIVER, when viewed in the
context of certain goods described in both classes in the application, will be
understood by consumers as describing a feature or purpose of the goods. Each
component term of the proposed mark has an applicable meaning in relation to
Applicant’s goods and, when taken together, the mark readily conveys information
to a consumer of Applicant’s goods. That is, SMART SONIC RECEIVER conveys
information about Applicant’s identified goods, such as the “smart phones to enable
the users to hear the sounds by conducting vibrations generated by the piezo-
electric elements to the tissues of the human bodies” or the “home video game
machines equipped with speakers for converting vibration of oscillatory waves to
sounds, and transmitting the sounds to the hearing organs.”
With respect to the initial term “smart,” it modifies the latter terms “sonic” or
“receiver” and immediately informs a consumer that the goods are automated. This
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meaning is bolstered by the record showing that Applicant’s SMART SONIC
RECEIVER goods contain “innovative” technology using “twin paths to get sound to
the user, creating sounds waves in the air like a traditional speaker, while also
creating vibrations that are carried by body tissue directly to the eardrum and inner
ear.”5 This technology clearly involves automation or is used in highly-automated
devices. Applicant’s own identification also includes “smart phones,” which are “cell
phones that include additional software functions (as e-mail or an Internet
browser).”6 The term “sonic,” likewise, is an adjective that may be broadly used to
describe items, such as the identified goods, involving sound. Finally, the term
“receiver,” as defined and as demonstrated by the record, is a generic term for either
the identified goods, a part thereof, or closely associated thereto. Such generic use is
exemplified in the Sprint Kyocera Torque User Guide which instructs a user of the
mobile telephone that a “Smart Sonic receiver [that] transmits sound through
vibrations on your phone’s display screen. Place your ear around the internal
receiver and adjust the position of the phone to find the best hearing point
depending on the surround environment.” In other words, a consumer familiar with

5 From Kyocera website (www.americas.com/news...), submitted with Applicant’s Request
for Reconsideration.
6 “Smartphone” definition taken from Merriam-Webster.com. Merriam-Webster, n.d. [is the
n.d. supposed to be here? ]Web. 3 June 2015. . The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594
(TTAB 1982), aff’'d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 85741163
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these types of goods and viewing Applicant’s mark will readily understand the term
“receiver,” as being merely a reference to a component of the goods.
Applicant is correct that we must consider its mark in its entirety and we cannot
ignore any new or different overall meaning that may be attributed to the mark.
However, we disagree with Applicant’s contention that its mark, viewed and
understood in its entirety, is not merely descriptive as a whole. In particular, we
disagree that the Google search results show that others are not using or have no
need to use the wording “smart sonic receiver.” At best, this evidence reveals that
an Internet search for the exact phrase “smart sonic receiver,” will result in links
that primarily involve Applicant or its technology. Likewise, a search for the phrase
“smart sonic” retrieves Internet links that are mostly associated with Applicant or
its goods. These searches, as previously noted, were for the terms placed in
quotation marks in that specific order. Thus, the results are skewed to retrieving
links to those terms together in that order over those same terms being used
together in a different order, e.g., , a hypothetical article describing “a receiver that
uses converts sonic waves using smart technology.” Moreover, even if Applicant is
the first and only entity to use these terms together as a proposed source-identifier,
we have long held and it is well-settled that this fact alone would not entitle
Applicant to register the mark if the only significance of the mark is to merely
describe the goods. See In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018
(TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND
CONFERENCE held descriptive for conducting and arranging trade shows in the
Serial No. 85741163
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hunting, shooting, and outdoor sports products field). See also, In re Carlson, 91
USPQ2d 1198, 1202 (TTAB 2009) (URBANHOUZING as a whole is merely
descriptive); In re BetaBatt Inc., 89 USPQ2d 1152, 1156 (TTAB 2008) (DEC, a
recognized abbreviation for “direct energy conversion,” is merely descriptive for
batteries even though applicant is only user of term); In re Sun Microsystems, Inc.,
59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS is merely descriptive of
computer software for use in development and deployment of application programs
on the Internet).
The existence of third-party use and registration of marks containing the term
“smart” or “sonic,” without disclaimers or under Section 2(f) on the Principal
Register, does not convince us that these terms are not merely descriptive when
used in Applicant’s mark and in the context of the identified goods. While it is
possible that these terms may not be used in a merely descriptive manner if
understood in a different setting or with additional wording, we keep in mind that
our analysis is focused on how these terms are used in Applicant’s mark, viewed in
its entirety, and in the context of the Applicant’s identified goods. Thus, in this
regard, many of the third-party registrations containing the term SMART are
irrelevant because they do not involve goods with automation technology (see, e.g.,
Reg. 3705869 for “protective respiratory masks,” Reg. 3729226 for “electric hand-
held hair styling irons,” Reg. 2379151 for “furniture,” etc.). Likewise, the evidence
showing actual use of marks with the term SONIC for goods or services unrelated to
audible sounds lacks probative value on the question of whether this term is
Serial No. 85741163
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descriptive of Applicant’s goods that do involve audio transmission via a receiver.
We acknowledge that several of the third-party registrations do involve goods that
would seemingly involve automation technology; however, in this respect, we
reiterate the point made by the Examining Attorney that each case must be decided
on its own merits. 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”). Here, as explained and based on the record before
us, it has been shown that Applicant’s mark, including the terms “smart” and
“sonic,” is merely descriptive of goods identified in the involved application. The
Board has made similar determinations in other proceedings, based on the records
therein, for marks containing the term “smart.” See, e.g., In re Tower Tech Inc., 64
USPQ2d 1314, 1318 (TTAB 2002) (holding SMARTTOWER descriptive; considering
dictionary definitions of “smart” and ““tower”). See also, e.g., In re Finisar Corp., 78
USPQ2d 1618 (TTAB 2006) (finding SmartSFP merely descriptive for optical
transceivers), aff’d per curiam, 223 Fed. App. 984 (Fed. Cir. 2007); In re
Cryomedical Scis. Inc., 32 USPQ2d 1377 (TTAB 1994) (finding SMARTPROBE
merely descriptive for cryosurgical probes having electronic or microprocessor
components).
Finally, we see no incongruity in the combination of the terms “sonic” and
“receiver.” Rather, there is ample evidence in the materials submitted by Applicant
showing that “receiver” will be understood as identifying a part of the involved
Serial No. 85741163
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goods used for hearing sounds. For example, the above-recited passage from the
online user’s guide for one of Applicant’s mobile telephones instructs the consumer
to “Place your ear around the internal receiver and adjust the position of the phone
to find the best hearing point …”
In sum, the evidence of record clearly establishes that Applicant’s proposed
mark, comprised of the descriptive terms SMART SONIC RECEIVER, merely
describes a feature or purpose of the goods identified in the application. Specifically,
the mark, when it is viewed in its entirety and in the appropriate context, will be
readily understand as conveying the information that a feature and purpose of the
goods is that they include a receiver and use automated sound technology.
Decision: The descriptiveness refusal under Section 2(e)(1) is affirmed.