N. F. Smith & Associates, LP

Trademark Trial and Appeal Board

Aug 17, 2018

No. 87127099 (T.T.A.B. Aug. 17, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 17, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re N.F. Smith & Associates, LP
_____

Serial No. 87127099
_____

C. Dale Quisenberry of Polasek Quisenberry & Errington LLP,
for N.F. Smith & Associates, LP.

David A. Brookshire, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Wolfson, Greenbaum and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
N.F. Smith & Associates, LP (“Applicant”) seeks registration on the Principal
Register of the mark INTELLIGENT DISTRIBUTION (in standard characters) for
“Business management; distributorship services in the field of electronic components,
computer components, computer hardware and computer equipment” in
International Class 35.1

1 Application Serial No. 87128099, filed on August 4, 2016, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
Applicant’s mark is merely descriptive of the identified services.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. The appeal is fully briefed. We affirm the
refusal to register. 2
I. Mere Descriptiveness – Applicable Law
A mark is 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 an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987). Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought and the context in which the mark is used,
not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ2d 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). In other words, we evaluate whether someone who knows what the goods or
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757

2 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations
reference the docket and electronic file databases for the involved application. All citations
to the TSDR database are to the downloadable .PDF version of the documents.
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(Fed. Cir. 2012). A mark need not immediately convey an idea of each and every
specific feature of the goods or services in order to be considered merely descriptive;
it is enough if it describes one significant attribute, function or property of the goods
or services. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358,
359 (TTAB 1982); In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark is also merely descriptive turns on whether the
combination of terms evokes a non-descriptive commercial impression. If each
component retains its merely descriptive significance in relation to the goods or
services, the combination results in a composite that is itself merely descriptive. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs).
On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363,
365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
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snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”). In this regard, “incongruity is one of the accepted guideposts in the
evolved set of legal principles for discriminating the suggestive from the descriptive
mark.” In re Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc., 199
USPQ 496, 498 (TTAB 1978) (the association of applicant's mark TENNIS IN THE
ROUND with the phrase “theater-in-the-round” creates an incongruity because
applicant’s services do not involve a tennis court in the middle of an auditorium).
Thus, we must consider the issue of descriptiveness by looking at Applicant’s
INTELLIGENT DISTRIBUTION mark in its entirety.
In support of his refusal that Applicant’s mark is merely descriptive of the
identified services, the Examining Attorney submitted the dictionary definitions of
each component of Applicant’s INTELLIGENT DISTRIBUTION mark. “Intelligent”
is defined as “guided or controlled by a computer.”3 “Distribution” is defined as “the
action or process of supplying goods to stores and other businesses that sell to
consumers.”4 As discussed infra, Applicant employs computer-aided distribution
processes by employing logistics and analytics in rendering its distributorship
services. As such and based on the definitions of record, each component of
Applicant’s mark merely describes a feature or characteristic of Applicant’s
distributorship services.

3 November 16, 2016 Office Action, TSDR, p. 5.
4 December 28, 2017 Denial of Request for Reconsideration, TSDR, p. 16.
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Additionally, the Examining Attorney submitted Internet evidence demonstrating
that the wording “intelligent distribution” is routinely used by third parties in the
distributorship and distribution fields to identify computer-aided distribution
processes that use computer hardware and software to automatically collect and
analyze data in order to streamline distribution and ensure maximized efficiency and
cost saving. The evidence also shows that “intelligent distribution” is used to describe
business consulting and similar services which are provided to distributors in order
to create or increase their capacity for computer-aided distribution services. As
examples:
• The website of TotalRetail features the biography of Rob Martinez
who is the CEO of Shipware LLC, a business consulting firm which
“transforms businesses through intelligent distribution solutions
and strategies”; “Rob has helped some of the world’s most
recognizable brands reduce parcel shipping costs an average of 25
percent through contract negotiations, rate benchmarking, modal
optimization, invoice audit and other savings vehicles.”;5

• The business consulting firm Jazva features a news blog post
discussing the emergence of intelligent distribution processes and
related goods and services, writing “[t]oday’s warehouse is no longer
just a storage building. Companies are turning warehouses into
intelligent distribution centers to better handle order
management and customer service.”;6

• The webpage for DGS Supply Chain, a distributorship company,
advertises “Intelligent Distribution & Transport” services. The
webpage describes the services as “bespoke solutions for all your
supply chain and logistics requirements.” “We apply intelligence,
sophisticated information and communications technologies to
optimize routes, warehousing and inventory management, cross

5 Id., TSDR p. 7.
6 Id., TSDR p. 8.
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docking and track consignments. We maximize total logistics
resource efficiency.”;7

• A job posting on the website The Muse for a digital supply chain
consultant position at McKinsey&Company advertises a business
consulting position in the field of “intelligent distribution
logistics”.;8

• ERRY Network Technology advertises software products for the
purpose of “intelligent distribution management” which “greatly
enhances the efficiency of supply chain.”;9

• Distribution and business logistics consulting firm Meyer & Meyer
provides a news update and interview with CEO Jan Weber
discussing the need for the fashion industry to “find intelligent,
systematic ways to guide products into the appropriate distribution
channels in line with demand”. Weber continues, describing Meyer
& Meyer’s intelligent distribution consulting and distributorship
services, stating, “As a logistics partner that supports fashion
companies from sheep to shop, one of our core competencies is
providing precisely the kind of systems that make intelligent
distribution possible.”;10

• The webpage for MagStar Total Retail offers “Intelligent
Distribution” warehouse and supply chain management services
which feature “intelligent, automated processes for reordering,
distribution and inventory tracking” and run multiple warehouses
through the same database to “improve efficiencies through
consolidation.”;11

• The webpage for CBS Systems, a provider of business management
and distributor operations software, offers “intelligent
distribution system” software for the purpose of streamlining
product distribution. The program automates the collection and
analysis of information such as user data, orders, payment
processing, and accounting.;12

7 Id., TSDR p. 9.
8 Id., TSDR p. 10.
9 Id., TSDR p. 12.
10 Id., TSDR p. 13.
11 December 28, 2017 Denial of Request for Reconsideration, TSDR pp. 11-12.
12 Id., TSDR p. 14.
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• A white paper from Snack Food & Wholesale Bakery titled
“Intelligent Distribution Systems”, defines the purpose of
intelligent distribution as, to “maximise production yield yet still
deliver exceptional product quality and value through effective
distribution equipment.”;13

• The book “Contemporary Logistics in China: Reformation and
Perpetuation” features a study of “intelligent distribution (sorting
and picking) centers”. An “intelligent distribution center” is
described as one using software to make “intelligent decisions based
on the goods delivery timeline and the stocking status of different
storage shelves.” Id. p. 10. The study discusses a number of retailers
already utilizing intelligent distribution platforms.;14

• A presentation at RFID Journal on Reducing Waste and Losses in
the Postharvest Supply Chain provided a presentation on the subject
of “intelligent distribution” management logistics in association
with Wal-Mart distribution centers to monitor the temperature and
quality of shipments of strawberries. “[S]cientists and engineers
have developed a framework to use perishable shipping temperature
history, as recorded by RFID data loggers, to predict the remaining
shelf life under different conditions, in order to enable intelligent
distribution using a “first expired, first out” (FEFO) logistic
approach.”;15

• The website SupplyChain247 advertises a warehouse management
and distribution software suite “that enables intelligent
distribution and automated fulfillment operations.”;16

• The website of the company Oliver Wyman that advertises
“Intelligent M&A Distribution” business consulting services for
the “distribution and wholesale” industries. The webpage states “we
believe distributors need to evolve their business and stay ahead of
competitors by making their business more ‘intelligent’: using data,
analytics, and processes to improve decision making throughout
their organizations. We are now in the era of the ‘Intelligent
Distributor’”. The webpage includes a paper outlining the

13 Id., TSDR p. 15.
14 Id., TSDR pp. 8-10.
15 Id., TSDR pp. 6-7.
16 Id., TSDR p. 5.
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capabilities businesses need to become intelligent distributors
including “utilizing a set of operating platforms that deploy the
concepts of the intelligent distributor to create upside in your core
business”;17 and

• Another Oliver Wyman webpage offers a paper on “The Intelligent
Distributor” which discusses “the evolution of the distribution
business and the emergence of wholly new models of service
provision and performance through technology”. “[T]he intelligent
distributor is reacting to all the forces shaping the digital world,
using digital to innovate operations and commercial behavior.”18

The Examining Attorney also maintains that Applicant’s own website advertising,
which Applicant submitted pursuant to the Examining Attorney’s request for
information under Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), clearly demonstrates
that Applicant’s mark is merely descriptive of its distributorship services.19 The
advertisement states that the applied-for mark is used specifically in association with
distribution management and business consulting services, stating, “Smith’s
Intelligent Distribution™ model adapts to ever changing demands by providing
seamless global electronics sourcing and logistics, regardless of distribution channel
or locale. Smith’s market expertise, custom supply chain services, and flexible
logistics capabilities make your supply chain leaner, faster, and more efficient”. The
relevant portion of Applicant’s website is reproduced below:20

17 June 7, 2017 Final Office Action, TSDR p. 5.
18 Id., TSDR p. 6.
19 Examining Attorney’s Appeal Brief, pp. 7-8; 9 TTABVUE 8-9.
20 May 16, 2017 Response to Office Action, TSDR p. 7.
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The Examining Attorney argues that Applicant’s advertisement uses the wording
“intelligent distribution” in its common commercially accepted descriptive context, to
describe computer-aided, analytics-driven distribution processes intended to
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streamline and increase savings in the distribution industry.21 The Examining
Attorney also points to Applicant’s response to the Examining Attorney’s initial office
action where Applicant confirmed that “Applicant uses computers to automate
various aspects of its services.”22
In traversing the refusal, Applicant argues that (1) the term “intelligent” has a
number of meanings and therefore the applied-for mark is suggestive and not
descriptive of its identified services; (2) the Examining Attorney improperly relied
only on the definition of “intelligent” to reach the conclusion that the applied-for mark
is merely descriptive; (3) the evidence submitted by the Examining Attorney does not
bear on Applicant’s identified services nor did the Examining Attorney sufficiently
explain how this evidence relates to Applicant’s services or Applicant’s corresponding
advertising evidence; (4) the phrase “intelligent distribution” does not appear in any
dictionary; (5) the description of its services has nothing to do with automated
decision making; and (6) it was improper for the Examining Attorney to cite to
Applicant’s responses to the Examining Attorney’s request for information under
Trademark Rule 2.61. Additionally, Applicant requests that the Board resolve any
doubt as to whether Applicant’s INTELLIGENT DISTRIBUTION mark is descriptive
in Applicant’s favor and allow the application to proceed to publication.23

21 Examining Attorney’s Appeal Brief, p. 8; 9 TTABVUE 9.
22 May 16, 2017 Response to Office Action, TSDR p. 5.
23 Applicant’s Appeal Brief, pp. 2-9, 7 TTABVUE 6-13.
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We find Applicant’s arguments unpersuasive. Applicant’s argument that the term
“intelligent” has multiple meanings and therefore the applied-for mark is suggestive,
not descriptive, is unavailing. While the designation INTELLIGENT may have other
meanings in different contexts, that is irrelevant in our analysis since our
descriptiveness inquiry is not conducted in the abstract but focuses on the description
of services in Applicant’s application, see In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (descriptiveness of a mark is not considered
in the abstract; rather, it is considered in relation to the particular goods or services
for which registration is sought); Abcor Dev. Corp., 200 USPQ2d at 218, and how
consumers would perceive the mark in connection with those services. See, e.g.,
Remington-Prods. Inv. V. North Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444,
1448 (Fed. Cir. 1990) (assessing descriptiveness and genericness by looking at how a
consumer would perceive the mark “in connection with the products”). Here, in the
context of the identified distributorship services, the evidence of record clearly
demonstrates the wording “intelligent distribution” is a commonly used phrase which
describes the manner in which these businesses render their services.
Moreover, Applicant’s argument that the Examining Attorney improperly relied
only on the definition of “intelligent” in making his determination that Applicant’s
mark is merely descriptive of the identified services is unsubstantiated since it is
clear from the record that that the Examining Attorney did not limit his argument of
mere descriptiveness solely to the term “intelligent,” but made his determination
based on Applicant’s mark in its entirety.
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Similarly, Applicant’s arguments that the evidence submitted by the Examining
Attorney does not bear on Applicant’s identified services or that the Examining
Attorney did not sufficiently explain how this evidence relates to Applicant’s services
or Applicant’s corresponding advertising evidence are unfounded. The evidence
submitted by the Examining Attorney clearly demonstrates that the wording
“intelligent distribution” has a specific meaning in the distribution industry and
services and goods provided to that industry. The evidence shows distributors,
business consultants and others providing services to the distribution industry all
using the words “intelligent distribution” to describe characteristics and features of
their services. This evidence establishes that the term “intelligent distribution” refers
to distribution services that utilize computer hardware and software, as well as other
logistic and analytical measures, to collect and analyze data to find and implement
efficiencies in time and cost. Applicant has not challenged any specific piece of third-
party evidence in the record and Applicant’s own website advertising states that it
provides “seamless global electronics sourcing and logistics” to make its customers’
supply chains “leaner, faster and more efficient” which, as demonstrated by the
evidence of record, is consistent with the manner in which third parties in the
distribution industry provide their distribution services pursuant to an “intelligent
distribution” model.
Applicant’s argument that the phrase “intelligent distribution” does not appear in
any dictionaries is also unpersuasive. The fact that a word or term is not found in the
dictionary is not controlling on the question of registrability when the word or term
Serial No. 87127099
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has a well understood and recognized meaning, as the evidence of record
demonstrates. In re Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004)
(GASBUYER held merely descriptive, no dictionary definition of term); In re Tower
Tech Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTOWER merely descriptive, no
dictionary definition of term); see also TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) § 1209.03(b) (Oct. 2017). The evidence of record shows the
wording “intelligent distribution” being used descriptively by a number of third
parties in the same distributorship industry as Applicant.
Applicant’s argument that its services have nothing to do with automated decision
making is also not persuasive because the question of descriptiveness is determined
based on the description of the services in the application, see In re Cordua Rests.,
Inc., 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (quoting Octocom Sys.,
Inc. v. Hous. Computs. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990)), and not on extrinsic evidence or argument of actual use or nonuse. See, e.g.,
In re Vehicle Info. Network Inc., 32 USPQ2d 1542, 1544 (TTAB 1994) (“In any event,
the question of registrability must be determined, in proceedings before the Board,
on the basis of the goods or services as set forth in the application, rather than in
reference to the precise nature of the goods or services on or in connection with which
the mark is actually used or intended to be used.”) (internal citations omitted). Cf. In
re Datatime Corp. , 203 USPQ 878, 879 (TTAB 1979) (whether a mark is primarily
geographically descriptive pursuant to Section 2(e)(2) is determined by the
description of goods, not what the evidence discloses such goods to be). Applicant’s
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identification of services, namely, “Business management; distributorship services in
the field of electronic components, computer components, computer hardware and
computer equipment,” is broadly worded with no limitations and, therefore, could
encompass the use of automated decision processing in the rendering of such services.
Finally, Applicant’s argument that it was improper for the Examining Attorney to
rely upon Applicant’s response and evidence submitted pursuant to a Trademark
Rule 2.61(b) request is without merit. Applicant does not provide any authority, nor
are we aware of any, which would preclude an examining attorney from relying upon
an applicant’s response and evidence submitted pursuant to a Trademark Rule
2.61(b) request in prosecuting the applicant’s application. Trademark Rule 2.61(b)
clearly permits the examining attorney to “require the applicant to furnish such
information, exhibits, affidavits or declarations, and such additional specimens as
may be reasonably necessary to the proper examination of the application.” Once such
information is submitted, it automatically becomes part of the record and may be
relied upon by either the examining attorney or the applicant in prosecuting the
application.
II. Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed. Based on the evidence of record, we conclude that the
designation INTELLIGENT DISTRIBUTION is merely descriptive of Applicant’s
distributorship services since such services employ logistics and analytics to find and
implement efficiencies in time and cost in order to streamline the distribution
Serial No. 87127099
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process, which is commonly known as “intelligent distribution.” See In re Stereotaxis
Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005) (a mark need not be merely descriptive of
all recited services in an application. A descriptiveness refusal is proper “if the mark
is descriptive of any of the [services] for which registration is sought.”). We further
find that the combination of the descriptive terms “intelligent” and “distribution” do
not create a non-descriptive or incongruous meaning. Instead, we find that each
component retains its merely descriptive significance in relation to Applicant’s
identified distributorship services, the combination of which results in a composite
mark that is itself merely descriptive. Moreover, while Applicant correctly states the
general principle that any doubt as to descriptiveness must be resolved in its favor,
in this case, we have no doubt that INTELLIGENT DISTRIBUTION is merely
descriptive of a feature or characteristic of Applicant’s distributorship services under
Section 2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s INTELLIGENT DISTRIBUTION
mark under Section 2(e)(1) of the Trademark Act on the ground that the designation,
in its entirety, is merely descriptive of the identified distributorship services is
affirmed.