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Not So Smart Descriptiveness

Posted by James Juo | Aug 16, 2022 | 0 Comments

A trademark that describes the intended use or purpose of the goods with which it is used is merely descriptive, and may be refused registration under Section 2(e)(1). See, e.g., In re G. E. Smith, Inc., 138 USPQ 518, 519 (TTAB 1963) (finding that KOLD KURE was merely descriptive of foundry core and mold binder compositions because it was the phonetic equivalent of COLD CURE, which “merely describe[d] the intended use of the product–an ingredient used in the cold cure process of making cores or molds”); In re Clorox Co., 196 USPQ 140, 142 (TTAB 1977) (finding that ERASE was merely descriptive of laundry soil and stain remover because it “immediately describe[d] to the average purchaser of household detergents the purpose and function of applicant's product”).


Zuma Array Limited filed a trademark application to register the SMART BEZEL mark for electronic sensor modules in Class 9, which was refused under Section 2(e)(1) on the ground that it is “merely descriptive” of the goods identified in the application. In re Zuma Array Limited, 2020 USPQ2d 736 (TTAB Aug. 9, 2022). There was no dispute that the term “smart” was merely descriptive.

Zuma's webpage states that “swap[ping] out a standard bezel for a Smart Bezel™” enables homeowners to “access a wide range of built-in sensors to support environmental, presence and life safety applications.” The TTAB found that this shows the word BEZEL in the proposed mark “refers to the type of device on which the identified electronic sensor modules will be used.”

The commercial context of Applicant's use of its proposed mark on its website “demonstrates that a consumer would immediately understand the intended meaning of” SMART BEZEL for electronic sensor modules, N.C. Lottery, 123 USPQ2d at 1710, namely, that the modules are used to create a “smart bezel.”

Being the First or Only User of a Term Does Not Render It Distinctive

Other competitors apparently were not using the term “smart bezel.” But “‘[t]he fact that Applicant may be the first or only user of a term does not render the term distinctive' if, as here, it has been shown to be merely descriptive of the goods identified in the application.” In re Fallon, 2020 USPQ2d 11249, at *11 (TTAB 2020) (quoting In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016)); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (Lanham Act does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first” and thereby “depriv[ing] commercial speakers of the ordinary utility of descriptive words”) (citation omitted); Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (even a “novel way of describing” the goods or services, such as COLOR BATH for hair coloring product, can nonetheless be merely descriptive if “[t]he resultant expression is nothing but the normal use of the English language.”).

Affirming the refusal to register, the TTAB concluded that the applied-for SMART BEZEL mark is less an identifier of the source of goods, and more a description of a feature or characteristic of those goods.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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