Thursday, March 16, 2006

TTAB Citable No. 16: "SMARTSFP" Merely Descriptive of Optical Transceivers

The TTAB has cranked out yet another citable mere descriptiveness decision. In its 16th citable of 2006, the Board affirmed a Section 2(e)(1) refusal to register the mark SMARTSFP, finding it merely descriptive of "optical transceivers." In re Finisar Corp., Serial No. 76300876 (March 6, 2006).

Examining Attorney Attiya Malik relied on an excerpt from and on third-party website evidence to show that SFP is an abbreviation for "small form-factor pluggable," a specification "for a new generation of optical modular transceivers." As to the word "smart," dictionary definitions, website excerpts, and Applicant's product literature demonstrated that it means that the products are "highly automated."

Applicant Finisar Corporation contended that the "average consumer" would not recognize the abbreviation SFP, but the Board noted that it must look to the ordinary or average prospective customer for Applicant's goods: "The average consumer of an optical transceiver would certainly know and be familiar with the various features available, including soldered-in versus SFP."

Finisar also contended that the word "smart" is "too broad to be descriptive" and includes "many categories of goods." The Board, however, noted that it must consider the term within the context of Applicant's goods.

"Applicant's optical transceivers are highly automated devices that imitate human intelligence by self monitoring and reporting operational and diagnostic information as shown by applicant's product literature."

Although "smart" may be used in connection with a wide array of goods, "its use in these various contexts has a consistent specific meaning; it tells the consumer that the product is highly automated and capable of computing information."

The Board found no merit in Finisar's argument that the composite mark SMARTSFP creates a "suggestive unique commercial impression." Rather, the meaning of each term "will be readily apparent and this straightforward combination does not present any incongruity."

The Board therefore affirmed the refusal to register.

TTABlog comment: I continue to wonder why the USPTO and the TTAB place any reliance at all on the acronymfinder database. Its entries are created by the users themselves (like Wikipedia). The website provides the following warning:

Disclaimer. We've done our best to ensure the accuracy of the Acronym Finder database, however, we do not take responsibility for the accuracy of any of the information in the acronym database. Capitalization is NOT necessarily correct. Use information from this site at your own risk.

In Part 6 of my article entitled "Six Potential Pitfalls in Trademark Prosecution," I discussed this very issue. My view of the matter remains the same.

Text Copyright John L. Welch 2006.


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