Nartron Corp.

Trademark Trial and Appeal Board

Aug 21, 2000

No. 75486276 (T.T.A.B. Aug. 21, 2000)

Paper No. 9
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/21/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nartron Corporation
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Serial No. 75/486,276
_______
Robert C. J. Tuttle of Brooks & Kushman P.C. for Nartron
Corporation.
Brandon Boss, Trademark Examining Attorney, Law Office 114
(Mary Frances Bruce, Managing Attorney).
_______
Before Cissel, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On May 15, 1998, Nartron Corporation filed an
application, based on Section 1(a) of the Trademark Act, 15
U.S.C. §1051(a), (applicant claimed a date of first use of
July 1996), to register the mark SMART VOV on the Principal
Register for “refrigerant metering valves for use in motor
vehicles.”
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e),
Ser. No. 75/486276
2
on the basis that, when used on or in connection with
applicant’s goods, the term SMART VOV is merely descriptive
of them.1
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs, but an oral hearing was not requested.
The Examining Attorney contends that applicant’s
identification of goods is broad enough to encompass a
variable orifice valve, commonly known as a “VOV”; that the
term “smart” informs consumers that the valves have a
computational ability; and that because consumers will
immediately perceive “smart” as describing an important
characteristic of the involved valves (i.e., refrigerant
metering valves having a computational ability), the mark
describes a significant aspect of the goods.
The evidence submitted by the Examining Attorney in
support of the refusal consists of dictionary definitions
of the word “smart”; an excerpt from a patent referring to
a “Variable Orifice Valve (VOV)”; excerpts from three other
patents showing that valves with variable orifices may be
controlled by microprocessors; and several third-party

1 The Examining Attorney initially refused registration on the
grounds of genericness and mere descriptiveness, or
alternatively, on deceptive misdescriptiveness. The Examining
Attorney’s brief on appeal is clear that the only issue before
the Board is that of mere descriptiveness. (Brief, p. 1)
Ser. No. 75/486276
3
registrations wherein the term “smart” was disclaimed when
included as part of marks on the Principal Register.
Applicant, on the other hand, argues that a
microprocessor is but one type of a logic device (e.g.,
programmable, hard-wired), and thus the idea that the term
“SMART” has an immediate connotation of a “microprocessor”
is not consistent with historical or current electrical
engineering or computer science; and that in further
support of applicant’s position that the word “SMART”
should not be equated with a microprocessor, applicant
submitted photocopies of its two registrations on the
Principal Register which include the word “SMART”2 for goods
arguably related to those involved in its current
application. In its brief on appeal, applicant, citing the
case of In re Hutchinson Technology, Inc., 852 F.2d 552, 7
USPQ2d 1490 (Fed. Cir. 1988), contends that the Examining
Attorney made two errors: (i) that the Examining Attorney
did not consider the mark in its entirety, but rather
dissected the mark analyzing the word elements separately;
and (ii) that a word element of a mark which may be broadly

2 Applicant submitted photocopies of applicant’s Reg. No.
1,190,527, issued February 23, 1982, for the mark SMART-POWER for
“electrical power circuits in combination with electrical logic
circuits and parts thereof,” Section 8 accepted, Section 15
acknowledged; and Reg. No. 1,681,891, issued April 7, 1992, for
the mark SMART TOUCH for “electronic proximity sensors and
switching devices,” Section 8 accepted, Section 15 acknowledged.
Ser. No. 75/486276
4
descriptive of the goods, is not fatal to the
registrability of the entire mark (i.e., the word “SMART”
is so broad in meaning that when the mark is viewed as a
whole it is not merely descriptive). From this, applicant
concludes that “the per se rule of the Board,” set forth in
the case of In re Cryomedical Sciences, Inc., 32 USPQ2d
1377 (TTAB 1994), regarding the registrability of marks
which include the word SMART where the goods contain
electronic devices or microprocessors is incorrect3; that
the mark SMART VOV, considered in its entirety, does not
convey an immediate idea of the qualities of applicant’s
goods; and that the present refusal is improper in view of
the Patent and Trademark Office’s (PTO) allowance of
another mark on the Principal Register which includes the
term SMART4.

3 In the Cryomedical case, supra, the Board did not hold that
marks which include the word SMART are per se unregistrable.
Rather, the Board held SMARTPROBE merely descriptive of
disposable cryosurgical probes because the term SMART preceded
and thus modified, in the adjectival sense, the generic name for
the involved goods. “The factual situations in which mere
descriptiveness must be resolved are too varied to lend
themselves to resolution under any rigid formula.” In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859, at 1861 (Fed.
Cir. 1987).
4 Applicant attached to its brief a photocopy of one third-party
registration (Registration No. 2,048,808, issued April 1, 1997,
for the mark SMARTPOWER for internal combustion engines). This
evidence was submitted untimely pursuant to Trademark Rule
2.142(d). However, inasmuch as the Examining Attorney did not
object thereto and, in fact, treated the third-party registration
as if it were properly of record, the Board has considered it for
whatever probative value, if any, it may have.
Ser. No. 75/486276
5
The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the 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. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture
Associates, 226 USPQ 285 (TTAB 1985); and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). A mark does not
have to describe every quality, feature, function, etc. of
the goods or services in order to be found merely
descriptive; it is sufficient for the purpose if the mark
describes a single significant quality, feature, function,
etc. thereof.
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 term or phrase is being used on or in connection
with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995); and In re Pennzoil Products Co., 20
Ser. No. 75/486276
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USPQ2d 1753 (TTAB 1991). The question is not whether
someone presented with only the mark could guess what the
goods are. Rather, the question is whether someone who
knows what the goods are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
In this case, we agree with the Examining Attorney
that SMART VOV is merely descriptive of the involved goods.
One of the patent excerpts put into the record by the
Examining Attorney reads, in relevant part, as follows:
Variable Orifice Valve (VOV)
A variable orifice valve VOV includes an
axially shiftable valve element 57 (Fig.
7) surrounded by an annular groove 58
which receives pressure fluid from
conduit 43....
Further, we note that in applicant’s March 12, 1999
response to the first Office action, applicant, in
explaining why its response focused on the word “SMART,”
stated as follows: “The ‘VOV’ element of the mark will be
assumed, arguendo, to be an abbreviation for ‘variable
valve orifice’ [sic] (not that this point is conceded for
purposes of determining the registerability [sic] of the
mark).” While applicant may not have conceded that VOV
means “variable orifice valve,” applicant did not contest
Ser. No. 75/486276
7
this meaning of the letters VOV, or offer any evidence to
the contrary. Therefore, on this record and in the context
of applicant’s goods, we accept VOV as meaning “variable
orifice valve.”
Through the other patent excepts submitted by the
Examining Attorney, it has been shown that a variable
orifice valve may have a microprocessor. Applicant did not
state for the record whether or not its goods include a
microprocessor (or any other type of logic device)5;
however, applicant’s identification of goods, “refrigerant
metering valves for use in motor vehicles,” is clearly
broad enough to encompass all possible types of refrigerant
metering valves, including variable orifice valves (VOVs).
We note that applicant’s identification of goods does not
exclude valves with any type of logic device.
The Examining Attorney submitted the following
dictionary definitions of “smart”:
(1) “Having some computational
ability of its own. Smart devices
usually contain their own
microprocessors.” Webster’s New World
Dictionary of Computer Terms (1992)6;
and

5 The specimens of record are labels which include only the
following wording: the mark, applicant’s name and address, the
words “Pats. Pend.,” and either “Part No. 1502002” or “Part No.
1502004.”
6 The Examining Attorney’s request that we take judicial notice
of this definition submitted with his brief on appeal is granted.
See TBMP §712.01.
Ser. No. 75/486276
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(2) “5a. Of, relating to, or being
a highly automated device, especially
one that imitates human intelligence:
smart missiles. b. Computer science.
Having the capacity to perform
operations independently of the
computer. Used of a computer terminal.”
The American Heritage Dictionary (1992)
(emphasis in original)
In the case of In re Cryomedical Sciences Inc., 32
USPQ2d 1377, 1379 (TTAB 1994), the Board stated “we find
that consumers for applicant’s probes would readily
understand that SMART, as would be used in SMARTPROBE,
refers to an electronic or microprocessor component of the
probes.” It is our view that in today’s world with
computers involved in virtually all facets of commercial as
well as everyday life, when the term SMART VOV is used in
connection with “refrigerant metering valves for use in
motor vehicles,” it immediately describes, without
conjecture or speculation, a significant characteristic or
feature of those goods, namely, that the variable orifice
valve has some type of computational or logic ability used
in operating or controlling the valve. That is,
applicant’s use of the mark SMART VOV would be perceived by
consumers as relating to the logic capability of the
valves.
Ser. No. 75/486276
9
Applicant’s arguments regarding its two registrations
and one third-party registration all for marks including
the word SMART, are not persuasive. The existence of a few
third-party registrations certainly does not establish an
inconsistent PTO policy regarding registrability of any
particular term. Even if applicant had established an
inconsistency in PTO policy on this specific issue
involving the term SMART, while the PTO strives for
consistency, each case must be decided on its own facts and
record. Of course, we do not have before us any
information from applicant’s registration files or from the
one third-party registration file.
Moreover, as stated earlier, the Board has not
established a “per se rule” that the term SMART is not
registrable. Rather, registrability of a mark must be
determined on a case-by-case basis and in relation to the
involved goods or services. That is, each case must be
decided on its own facts. See In re Dos Padres, Inc., 49
USPQ2d 1860 (TTAB 1998).
The Hutchinson case, supra, cited by applicant, does
not require a different result herein. In that case the
Court majority’s discussion of the term “technology” was
within the context of whether the mark HUTCHINSON
TECHNOLOGY was primarily merely a surname, and, in fact,
Ser. No. 75/486276
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the Court remanded the case for a disclaimer of the term
“technology.” In the case now before the Board the refusal
to register is based on mere descriptiveness, not surname
significance.
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) of the Trademark Act is
affirmed.
R. F. Cissel
E. W. Hanak
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board