Savi Technology, Inc.

Trademark Trial and Appeal Board

May 12, 2014

No. 85560074 (T.T.A.B. May. 12, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Savi Technology, Inc.
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Serial No. 85560074
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Andrew C. Aitken of IP LAW LEADERS PLLC for Savi Technology, Inc.
Margery A. Tierney, Trademark Examining Attorney, Law Office 111 (Robert L.
Lorenzo, Managing Attorney).
_____

Before Wolfson, Greenbaum, and Hightower, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Savi Technology, Inc. (“applicant”) seeks registration on the Principal
Register of the mark SMTS (in standard characters) for the following goods in
International Class 9:1
computer hardware and computer software for use in
tracking, monitoring, and managing the condition, status,
location, security and integrity of tangible assets,
equipment, vehicles and cargo; computer hardware and
computer software for use with GPS, GPRS, RFID, and
satellite communication technologies for monitoring and

1 Application Serial No. 85560074 was filed on March 5, 2012, based on applicant’s bona
fide intent to use the mark in commerce.
Serial No. 85560074

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managing tangible assets, equipment, vehicles and cargo;
computer hardware and computer software for use in
collecting, analyzing, and displaying data on the identity,
location, and status of tangible assets, equipment,
vehicles, and cargo; computer hardware and computer
software for use in analyzing and displaying mapped
routes to monitor the identity, location, and status of
tangible assets, equipment, vehicles, and cargo; computer
hardware and computer software to detect, alert, and
respond to tampering and unauthorized access to tangible
assets, equipment, vehicles, and cargo; computer
hardware and computer software for use in providing
real-time alerts and updates on the location of tangible
assets, equipment, vehicles and cargo to improve transit
times, identify diversion of tangible assets from
established routes and locations, identify theft, and
recover stolen tangible assets; computer hardware and
computer software for real-time identification and
tracking of the location, movement and condition of high-
value tangible assets; computer hardware and computer
software for use by large organizations, manufacturers,
heavy industry and governments to manage tangible
assets in distributed supply chains and complex logistics.
The Trademark Examining Attorney has 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 a feature or quality of
applicant’s goods. In addition, the examining attorney required additional product
information about the goods pursuant to Trademark Rule 2.61(b). In response,
applicant submitted a promotional flyer and pages from its website that describe
and promote its goods.
After the examining attorney made the refusal final, applicant appealed to
this Board. Applicant and the examining attorney filed briefs. We reverse the
refusal to register.
Serial No. 85560074

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Applicable Law
Trademark Act § 2(e)(1) prohibits registration of a mark which is merely
descriptive of the applicant’s goods or services. A term 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
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); In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not necessary that a term
describe all of the properties or functions of the goods and/or services in order for it
to be considered to be merely descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or feature about them. Moreover, whether a term is
merely descriptive is determined not in the abstract, but in relation to the goods
and/or services for which registration is sought. See In re Bright-Crest, Ltd., 204
USPQ 591 (TTAB 1979). Thus, “[w]hether consumers could guess what the product
is from consideration of the mark alone is not the test.” In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985). In this case, the issue is whether the term
SMTS directly conveys to consumers information about the purpose or function of
computer software or hardware that tracks, monitors, and manages the condition,
status, location, security and integrity of tangible assets, equipment, vehicles and
cargo.
A mark consisting of an abbreviation, initialism, or acronym will be refused
registration if the words it represents are descriptive of the goods or services at
Serial No. 85560074

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issue and if the abbreviation, initialism, or acronym is generally understood as
“substantially synonymous” with the descriptive words it represents. In re Thomas
Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (holding NKJV substantially
synonymous with merely descriptive term “New King James Version” and thus
merely descriptive of bibles), citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d
504, 110 USPQ 293, 295 (CCPA 1956) (“[A]s a general rule, initials cannot be
considered descriptive unless they have become so generally understood as
representing descriptive words as to be accepted as substantially synonymous
therewith.”). Accordingly, for SMTS to be considered descriptive of applicant’s
computer software and hardware:
(1) the term SMTS must be found to be an abbreviation,
initialism, or acronym for specific wording;
(2) that specific wording must be merely descriptive of
applicant’s computer software/hardware; and
(3) a relevant consumer viewing the term SMTS in
connection with applicant’s goods will recognize it as the
equivalent of the merely descriptive wording it
represents.
In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220
USPQ 1075, 1076 (TTAB 1984)). See also, Baroness Small Estates, Inc. v. Am. Wine
Trade, Inc., 104 USPQ2d 1224, 1230-31 (TTAB 2012) (holding CMS not
substantially synonymous with the grape varietals “cabernet, merlot, syrah” and
therefore not merely descriptive for wine); TMEP § 1209.03(h) (April 2014).
The examining attorney has submitted evidence that the initials SMTS form
an initialism that is generally recognized in the computer industry as meaning
Serial No. 85560074

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“software management tracking system” or “software maintenance tracking
system.”2 This satisfies the first factor under Thomas Nelson in that the applied-for
mark is an initialism for specific wording. However, the meaning of that specific
wording is unclear. None of the acronym dictionaries introduced into the record
include any information regarding the meaning of the words “software maintenance
(or management) tracking system”; they simply equate SMTS with the phrase
without further clarification.
The Office bears the burden of showing that the applied-for mark is merely
descriptive by a preponderance of the evidence. See Anheuser-Busch Inc. v. Holt, 92
USPQ2d 1101, 1105 (TTAB 2009). In this case, the examining attorney submitted
pages from the website ZDNet that consists of a list of the names of computer
programs that manage and track assets (under the heading “Articles on assets asset
[sic] software management tracking”), together with truncated information as to
their functions.3 The term “SMTS” does not appear on this website. Rather, the
phrase “asset tracking management software” is used to describe a category of
computer software that tracks assets such as inventory, sales, vendors, and
projects. The examining attorney argues that applicant’s goods “include a

2 Acronym Finder answers the question “What does SMTS stand for” by returning 11 hits,
one of which is “Software Management Tracking System.” Office action June 15, 2012; at
http://www.acronymfinder.com. The Free Dictionary by Farlex also defines SMTS as
“Software Management Tracking System.” Final Office action April 11, 2013; at
http://acronyms.thefreedictionary.com. The Acronym Geek online dictionary defines “SMTS”
as being an initialism for “Software Maintenance and Tracking System.” Final Office action
April 11, 2013; at http://www.acronymgeek.com. Finally, the Acronym Attic website defines
SMTS as “Software Maintenance Tracking System.” Final Office action April 11, 2013; at
http://www.acronymattic.com.
3 Office action June 15, 2012; at http://www.zdnet.co.uk.
Serial No. 85560074

6

management and tracking function”4 and points to applicant’s promotional
literature wherein it states that one of the key features of applicant’s SMTS
software is to provide “real-time asset management for greater accuracy in location
and movement tracking” of cargo and vehicles.5 The remainder of the evidence,
however, does not support the position that the term SMTS is known as an acronym
for a vehicle and/or driver tracking system, but rather that SMTS is a niche term
utilized in a narrow computer specialty market to describe a computer program
used to manage or maintain computer software systems. As such, it does not
describe a function of applicant’s goods.
The majority of the evidence submitted by the examining attorney utilizes
the term SMTS in connection with employment in the computer field:
1. On the Indeed.com website, under the “salary search”
tab, there is a statement of comparable salary for an
“SMTS Software Development Engineer Salary in
Sunnyvale, CA”; and under “Jobs that may interest you,”
there is an announcement that Advanced Micro…-
Sunnyvale, CA may be looking for an “SMTS Software
Development Eng.”6
2. On the website New Orleans Jobs, there is a vacancy
announcement for a System Administrator. The summary
of responsibilities section includes a statement that the
successful candidate will be required to “identify user
problems and submit NALCOMIS Trouble Report
(TR)/Change Proposal (CP) via Software Maintenance
Tracking System (SMTS)….”.7
3. An online resume posted by someone seeking
employment as a software engineer includes the following

4 Examining attorney’s Brief, p.3 (unnumbered); 9 TTABVUE 4.
5 Id., p. 8; 9 TTABVUE 9.
6 Office action June 15, 2012; at http://webcache.googleusercontent.com.
7 Office action June 15, 2012; at Google’s cache of http://jobneworleans.com.
Serial No. 85560074

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job experience: “as programmer in the information system
department in the following projects: … SMTS (Software
Maintenance Tracking System).”8
4. On the website ResumeMyCareer.com, a copy of a
sample resume is attached to help job seekers create
professional resumes. The sample is for an “Executive
Assistant Admin” position. It lists, as a key highlight, the
job of “enhanc[ing] R-ADM application using the software
Maintenance Tracking System (SMTS)” and links this to
the function of reviewing, analyzing and prioritizing
“change proposals submitted by Fleet users
recommending changes to functions within the
Application.”9
5. From the USAJOBS website, there is a questionnaire
directed to candidates for the position of “Logistics
Management Specialist.” One question asks for a self-
assessment of the candidate’s ability to “lead the Fleet
Design Team to provide guidance for all submitted
Trouble Reports (TRs) within the Software Maintenance
Tracking System (SMTS) and Change Proposals for the
system tested.”10
Further evidence shows that the term SMTS has a defined meaning in the
computer field:
6. A single slide from what appears to be a SPAWAR
PowerPoint presentation entitled “SMTS Software
Maintenance Tracking System.”11 The slide is depicted
below:12

8 Office action June 15, 2012; at http://webcache.googleusercontent.com (Google’s cache of
http://maishareef.com/myresume.php as the page appeared on June 6, 2012).
9 Final Office action April 11, 2013; at http://www.resumemycareer.com.
10 Final Office action April 11, 2013; at https://applicationmanager.gov.
11 Although there is an arrow at the bottom right of the slide, suggesting there are
additional slides to this presentation, no further slides were provided.
12 Final Office action April 11, 2013; at http://www.briceplace.com.
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Serial No. 85560074

9

resolution of TRs/CPs, clarification of SMTS input, and
TR/CP trend analysis.14
9. A copy of a single PowerPoint slide as follows:15

The wording in the small slides to the left of the main slide (presumably the
2d-6th slide in the presentation) read as follows:16
• Trouble Report (TR): Used to modify SPAWAR
when the system does not function as designed.
Change Proposeal (CP): Used to request changes to
an existing system or procedure.
• Critical (C): The problem is so serious that the site
is unable to perform major system functions. There
is no viable work around. High (H): The problem is
severly impacting the site’s ability to process, but
there is a work around.

14 Final Office action April 11, 2013; at http://www.serco-na.com.
15 Office action June 15, 2012; at http://www.slideworld.com/slideshows.aspx.
16 We note that each slide has the same heading (in yellow lettering) as does the first slide:
Trouble Calls/Software Maintenance Tracking System (SMTS).
Serial No. 85560074

10

• Medium (M): The problem is impacting the site’s
ability to process, but no major functions are
affected, and there is a work around. Low (L): The
problem is minor, but should be corrected in order
to achieve optimum system integrity.
• All non-critical TR/CPs are sent by message to the
TYCOM and INFO the Fleet Service Desk at
SPAWAR.
• SPAWAR is the Central Design Agency for
NALCOMIS.
Based on the above record, we find that the initialism SMTS is applied to a
type of computerized tracking system designed to manage or maintain computer
software, specifically by means of “trouble reports” and “change proposals.” While
applicant’s software manages and tracks “tangible assets in a supply chain,” such as
“trucks, equipment and cargo,” its software is not an SMTS system as that term is
described in the record. Thus, the second Thomas Nelson factor is not satisfied.
As to the relevant consumer class, applicant’s purchasers are logistics
managers of shipments of cargo, not IT computer professionals. There is nothing in
the record to suggest that applicant’s customers would understand the highly
technical meaning of the wording “software maintenance (or management) tracking
system.” The examining attorney argues that it is immaterial whether applicant’s
goods manage or maintain software as opposed to vehicle delivery schedules. The
difficulty with this argument is that it ignores the niche market in which the
initialism carries any meaning; that SMTS may be a recognized kind of software to
consumers in the software field does not mean that consumers in the freight
shipping industry will understand the meaning of SMTS as other than what
Serial No. 85560074

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applicant’s brochures show it to mean, i.e., SAVI Mobile Tracking System. The
primary function of applicant’s goods is to track and manage the whereabouts
(condition, status, location, security and integrity) of equipment, vehicles, and cargo
(tangible assets). The goods are not designed to track or manage (or maintain)
computer software. Accordingly, relevant consumers are not likely to perceive the
acronym SMTS as meaning “software maintenance (or management) tracking
system.”
Thus, while the evidence of record shows that the term SMTS is a recognized
initialism for “software maintenance (or management) tracking system” in the
computer industry, it has not been shown that relevant purchasers of applicant’s
vehicle tracking software would similarly perceive the initialism SMTS in this
manner. Accordingly, the term is not merely descriptive for the goods at issue in
this proceeding. In this way, anyone who believes that the term is, in fact,
descriptive, may oppose and present evidence on this issue to the Board.

Decision: The refusal to register applicant’s mark SMTS under Trademark
Act § 2(e)(1) is reversed.