Picking a Good Trademark – Be Intelligent, But Not Necessarily “Smart”
In a precedential decision issued by the Trademark Trial and Appeal Board (TTAB), the TTAB affirmed the examining attorney’s refusal to register SMART SERIES because the mark was merely descriptive. In re Cannon Safe, Inc., Serial No. 85651960 (TTAB Sept. 24, 2015). This raises two questions: how is SMART SERIES descriptive? And, what is wrong with being descriptive?
What is Wrong with Being Descriptive?
Let’s take the last question first. What is wrong with being descriptive? A trademark is a source identifier. It can be any word, phrase, symbol, design, sound, smell, color, product configuration, group of letters or numbers or combinations of these used by a company to identify its products and to distinguish them from those of others.
There are three types of marks that are considered inherently distinctive and thus, can be protected as trademarks immediately. They are (1) fanciful or coined terms (like KODAK for film and cameras), (2) arbitrary marks, which are actual words but not related in any way to the products at issue (for example, APPLE for computers), and (3) suggestive marks, which suggest some attribute of the goods or services but do not actually describe the goods or services. The more fanciful or arbitrary the mark, the stronger it is.
Words that are merely descriptive cannot immediately function as trademarks. But descriptive words might be able to achieve trademark status if they develop what is called “acquired distinctiveness,” meaning that over time, they become a source identifier for specific goods or services – through years of exclusive use and advertising. An example of a descriptive mark is RICH ‘n CHIPS for chocolate chip cookies. So, fanciful or arbitrary = good; descriptive or worse, generic = bad.
How is SMART SERIES Descriptive?
With that background, let’s tackle the second question: how is SMART SERIES descriptive? And descriptive of what? The TTAB started with the premise that a term is descriptive if it describes a significant attribute or feature of the goods or services. In addition, the term is not considered in the abstract, but is considered specifically in relation to the particular goods or services for which the registration is sought.
Here, the applicant sought to register SMART SERIES for a line of metal safes for firearms. The TTAB next examined each word. It concluded that “smart” is descriptive because it describes devices that employ automated technology – that is, microcomputers or microprocessors (think smartphone). It then considered the word “series,” which means a number of things or events in the same class.
It also noted that the applicant’s website offered a number of products in different series: the Armory Series, the Cannon Series, the Commander Series and so on. Thus, the TTAB concluded that the SMART SERIES was merely descriptive of metal gun safes that include a microprocessor and consumers would know that the products at issue were safes that had a smart component – that is, a microcomputer or processor.
Descriptive terms can mature into trademarks over many years, but it is better to pick a fanciful or arbitrary term for immediate registrability.