Thursday, January 14, 2021

TTAB Deems Apple's SMART KEYBOARD Generic for .... Guess What?

In a 75-page opinion, the Board affirmed a refusal to register the proposed mark SMART KEYBOARD on the Supplemental Register for "Accessory for a handheld mobile digital device, namely, a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard" [KEYBOARD disclaimed], on the ground of genericness. The Board ruled that the record evidence supported "a finding that purchasers and prospective purchasers understand the term SMART KEYBOARD as referring to technologically advanced keyboards, the genus of goods that includes Applicant’s goods," which comprise "a subcategory of such genus." In re Apple Inc., Serial No. 86857587 (January 13, 2021) [not precedential] (Opinion by Mark Lebow).


Since Apple sought registration on the Supplemental Register, the question for the Board was whether SMART KEYBOARD is capable of distinguishing Applicant’s goods from those of others. “Generic terms do not so qualify.” The Board applies a two-part test to determine genericness: "(1) what is the genus (class or category) of the goods or services at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services?"

The Genus: Examining Attorney Robert A. Cohen correctly noted that, while “a proper genericness inquiry focuses on the description of [goods] set forth in the [application], Magic Wand, 19 USPQ2d at 1552, other relevant evidence of record may be considered in order to properly determine the genus at issue." The Board sided with the Examining Attorney in finding that “technologically advanced keyboards for mobile digital devices” is an accurate description of the genus. The fact that Apple's device included additional features does not make it not a keyboard. 

Applicant, here, appears to have purposely “structured” its identification of goods in a manner that deemphasizes the core function of its goods in order to avoid a likely finding of genericness. However, we need not turn a blind eye to the reality of what is offered by Applicant’s description of goods as shown by the evidence, including Applicant’s own evidence.

The Relevant Public's Understanding: The Board agreed with the Examining Attorney that the relevant public comprises ordinary consumers who purchase applicant’s goods. The evidence of record included dictionary definitions, third-party Internet webpages and publications in the nature of articles, reviews, and retail promotions, and a variety of patents and patent applications. The Board concluded that Apple's particular keyboard (and its feature of being foldable into a stand and cover) "is but one of many technologically advanced keyboards that may be described as a smart keyboard."
Applicant challenged the USPTO's evidence on various grounds and provided a substantial amount of evidence in support of its argument that “the public recognizes SMART KEYBOARD as its trademark for the identified goods.” However, the Board

Applicant’s response in this case to the Examining Attorney’s evidentiary showing is fairly impressive, as was the applicant’s in Merrill Lynch. However, unlike the record in Merrill Lynch, in this appeal, we have unrebutted and unexplained generic use of the term SMART KEYBOARD or other more specific wording (e.g, smart wireless keyboard), both before and subsequent to Applicant’s adoption of that term as its trademark, by no less than ten other companies (e.g., Always Innovating, Das, OneBoard, Samsung, Belkin, Satchi, ONHI, Logitech, Viboton, Nums, Zagg Rugged, and Raydem) to describe their products; numerous reviews of technologically advanced third-party keyboards described as “smart keyboards,” many of which include references or comparisons to Applicant’s product; scores of articles and publications discussing existing or anticipated technologically advanced keyboards as “smart keyboards”; and more than a dozen patents that use “smart keyboard” as a term of art to describe a variety of technologically advanced functioning keyboards. Thus, numerous keyboard users, other than Applicant’s customers encounter SMART KEYBOARD used in a generic manner.

And so the Board affirmed the refusal to register.
Read comments and post your comment here.

TTABlogger comment: A thorough opinion, but I suspect this will be appealed.

Text Copyright John L. Welch 2021.


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