Matsushita Electric Corp. of America

Trademark Trial and Appeal Board

Sep 9, 1998

No. 74672187 (T.T.A.B. Sep. 9, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 9, 98
Paper No. 12
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Matsushita Electric Corporation of America
________
Serial No. 74/672,187
_______
Morton Amster of Amster, Rothstein & Ebenstein for
Matsushita Electric Corporation of America.
Margaret Le, Trademark Examining Attorney, Law Office 104
(Sidney Moscowitz, Managing Attorney).
_______
Before Cissel, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 10, 1995, applicant filed the above-referenced
application to register the mark “SMART CART” on the
Principal Register for a “multi-cassette library,” in Class
9. The basis for the application was applicant’s assertion
that it possessed a bona fide intention to use the mark on
these goods in commerce.
Ser. No. 74/672,187
2
The Examining Attorney required applicant to disclaim
the term “CART” apart from the mark as shown on the ground
that the word is merely descriptive of the goods because it
identifies a feature of them, and also required applicant
to amend the identification-of-goods clause to make it more
definite.
Applicant responded by disclaiming the word “CART” and
amending the application to specify the goods with which it
intends to use the mark as “robotic multiple cartridge
retrieval system for storage and access to audio, video and
data information.”
The Examining Attorney considered the proposed mark in
conjunction with the amended version of the goods, which
makes it clear that these devices are electronic cartridge
storage and retrieval machines, and on that basis, she
concluded that the word “SMART” would be considered to be
merely descriptive of the goods, just as “CART” is. In
fact, she found the combination of the two descriptive
words, “SMART CART,” to be merely descriptive of the goods
specified in the application. Accordingly, she withdrew
the disclaimer requirement and refused registration under
Section 2(e)(1) of the Act on the ground that “SMART CART”
is merely descriptive of a robotic multiple cartridge
Ser. No. 74/672,187
3
retrieval system for storage and access to audio, video and
data information.
Attached to the Office Action were copies of excerpts
retrieved from the Nexis database of published articles.
In pertinent part, they state as follows:
“BTS and Panasonic also have many other DVC
PRO packages slated for later introduction,
including a miniature field editing system, a four-
times playback fast transfer player, a smart cart
machine, and a host of other ancillary products.”
“…Panasonic will demonstrate the Tektronix ProfileTM
disk-based audio and video server working with
their own M.A.R.C. Systems (100 to 1000 cassette
capacity) and a new, smaller Smart-Cart System (50 to
70 cassettes).”
“…enough spots can be stored to cover a six to
12-hour broadcast period, which should provide enough
of a buffer to cover any required loading or
maintenance of the M.A.R.C. or Smart Cart system and
robotics.”
“Matsushita also plans to market…a smart-cart
automation system starting in 1996.”
[Panasonic Broadcast & Television Systems
equipment] “will be on display at the show,
including…[t]he Smart-Cart automated record/playback
system, a mini-cassette library for small to medium-
size facilities.”
“The system will be a hybrid of Tektronix’s
Profile disk-based AV storage system and Panasonic’s
ARC and Smart-Cart systems.”
Applicant responded to the refusal to register by
changing the description of goods again. This time the
application was amended to read as follows: “robotic
Ser. No. 74/672,187
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multiple cartridge retrieval system comprising record/play
transports for either audio/video or data for storage and
access to audio, video and data information.” Applicant
argued that its mark is not merely descriptive of these
goods, but rather is at most suggestive of them. Applicant
contended that the articles made of record by the Examining
Attorney use “Smart Cart” to refer to applicant’s product,
rather than in a merely descriptive sense, and that generic
wording such as “system,” “machine,” or “automated
record/playback system” is used after the trademark in
these story excerpts.
Included with the response were copies from
promotional brochures for applicant’s product. “Smart-
Cart” is pictured displayed in a trademark fashion on the
front of applicant’s machine, and the text of the brochure
uses it as a trademark would be used, e.g., “The new
Panasonic Smart-Cart mini cassette library shares the same
advanced technology and sophisticated control system of the
acclaimed M.A.R.C. system.”
The Examining Attorney was not persuaded by
applicant’s argument and evidence, and she made the refusal
to register under Section 2(e)(1) final in her third Office
Action on January 8, 1997.
Ser. No. 74/672,187
5
Additional excerpts from published articles were also
submitted at that time. Some show that the word “cart” is
used to refer to an audio or video tape cassette or
cartridge. Others show the use of “cart machine” and
“cart system,” which is defined as “the traditional
videotape robotics carousel…which manages a library of
cartridges and is programmed to play back commercials,
promotional spots and other short-form pre-produced
programming.”
The Examining Attorney argued that the term “CART” is
recognized as referring to an audio or video cartridge, and
that “SMART” is used to describe a product which is
“electronic and automated.” These facts lead her to the
conclusion that the combination of the two words, “SMART
CART,” is merely descriptive of applicant’s electronic
system which automates the cartridge playing and switching
functions.
Applicant timely filed a notice of appeal, and both
applicant and the Examining Attorney filed briefs.
Applicant filed a reply brief. In its main brief,
applicant makes the arguments it had made to the Examining
Attorney, but also lists eight trademarks incorporating the
Ser. No. 74/672,187
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term “SMART” with other matter.1 Applicant alleges that
these marks have been registered by the U.S. Patent and
Trademark Office in only the last two years, and applicant
contends that these registrations demonstrate that the fact
that a mark contains the word “smart” does not bar its
registration.
Applicant did not request an oral hearing before the
Board. Accordingly, we have resolved this appeal based on
the written record and arguments of the applicant and the
Examining Attorney.
Careful consideration of the record in this appeal,
the written arguments of the applicant and the Examining
Attorney, and the relevant legal principles leads us to
conclude that the refusal to register is not justified in
this case.
Neither applicant nor the Examining Attorney disputes
the basic legal principles upon which we must base our
determination of whether a term is merely descriptive of
the goods with which it is used. A term is merely
descriptive, and hence unregistrable in the absence of a
showing of distinctiveness under Section 2(f) of the Act,

1 Ordinarily, this evidence would not be considered because it
was untimely submitted after the record had closed, but the
Examining Attorney treated it as if it were of record and argued
its significance, so we have considered it as if it had been
Ser. No. 74/672,187
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if it immediately and forthwith conveys information
concerning a significant ingredient, quality, feature or
characteristic of the goods with which it is used. If,
however, imagination, thought or perception is required to
reach a conclusion as to the nature of the product, the
term is suggestive, and therefore registrable without
establishing that it has acquired secondary meaning through
use and promotion as a trademark. In re Gyulay, 820 F.2d
1216, 3 USPQ 1009 (Fed. Cir. 1987).
In the instant case, we find that the word “SMART” is
merely descriptive of the goods identified in the
application. In the parlance of today’s computer-literate
business world, “smart” is used to convey the fact that a
particular device has a microprocessor or has some other
means of computational ability. The Examining Attorney
made of record a dictionary definition of the word as
“equipped with, using, or containing electronic control
devices.” This word simply tells us that the machine has
at least some artificial intelligence or that it is
electronically controlled by a digital device. In this
case, the promotional brochure makes it clear that the
features of applicant’s robotic cartridge retrieval systems

timely introduced during the prosecution of the application prior
to appeal.
Ser. No. 74/672,187
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include a “central sequence controller [which] commands the
VTRs, robotics, audio/visual routing switcher and also
inferfaces with the console PC.” This certainly appears to
be the work of at least one microprocessor or other
electronic control device. The word “SMART” is clearly
descriptive of this characteristic of these goods.
“CART” is also merely descriptive of the goods
specified in the application. This record shows that the
word is a recognized synonym for “cartridge.” Cartridges
are the cassettes that applicant’s robotic retrieval system
stores and retrieves. Carts are therefore the things which
applicant’s devices manipulate. Under these circumstances,
the term identifies a characteristic or feature of the
product. That makes “CART” merely descriptive of the goods
within the meaning of Section 2(e)(1) of the Act, which is
the reason why the Examining Attorney required it to be
disclaimed, and, presumably, why applicant disclaimed it.
It does not necessarily follow that the combination of
these two descriptive terms, “SMART” and “CART,” is itself
merely descriptive of applicant’s product, however. The
question of mere descriptiveness is not to be resolved by
separate analysis of each component of the mark. The whole
mark, “SMART CART,” must be considered in its entirety to
determine whether registration is proper. See: The
Ser. No. 74/672,187
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Firestone Tire & Rubber Company v. The Goodyear Tire &
Rubber Company, 186 USPQ 557 (TTAB 1975); and In re J. P.
Stevens & Co., Inc., 160 USPQ 692 (TTAB 1969).
When the mark sought to be registered in the case at
hand is evaluated in light of these principles, we find
that “SMART CART” has not been proven to be merely
descriptive of a robotic multiple cartridge retrieval
system comprising record/play transports for either
audio/video or data for storage and access to audio, video
and data information. Whereas the individual words in the
mark, “SMART” and “CART,” each have descriptive
significance in connection with these products, when the
words are combined, the significance of the term “SMART
CART” is only suggestive. This is because, as used in the
mark, “SMART” is an adjective modifying the noun “CART.”
“SMART CART” is somewhat incongruous, in that the carts
which applicant’s device store and retrieve are not
themselves “smart,” i.e., equipped with electronic control
devices. Applicant’s product may be “smart” in the
technical sense of the word, but the carts it handles are
not. It requires some thought process, imagination,
reasoning or perception in order to conclude from
consideration of “SMART CART” in connection with these
Ser. No. 74/672,187
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goods that the goods utilize electronic control devices and
that they store and retrieve carts.
The Examining Attorney argues that our decision in In
re Cryomedical Sciences, Inc., 32 USPQ2d 1377 (TTAB 1994),
mandates affirmance of the refusal under Section 2(e)(1),
but that case is readily distinguished from this one.
There we held “SMART PROBE” to be merely descriptive of
surgical probes. “SMART” preceded, and thus modified, in
the adjectival sense, the generic name for the goods.
Here, the goods are not carts, but rather the cart storage
and retrieval systems set forth in the application.
Each of the excerpts made of record with the second
Office Action does show “Smart-Cart” or a variation thereof
used in reference to applicant’s product, just as applicant
argued. That the journalist(s) who wrote these articles
did not make it clear that “SMART CART” is applicant’s
trademark, however, and even used the component words in
what could be considered to be a descriptive context, does
not outweigh the fact that, as the rest of the record
shows, the combination of “SMART” and “CART” does not
immediately and forthwith convey information about
applicant’s goods. The misuse of the mark in an arguably
descriptive sense that the excerpted articles show does not
Ser. No. 74/672,187
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persuade us that the significance of the term to a person
in the market for these devices is descriptive.
Because the term sought to be registered is not merely
descriptive of the goods, the refusal to register under
Section 2(e)(1) of the Act is reversed.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges
Trademark Trial & Appeal Board
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