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 In re Apple Inc., Serial No. 86857587 (January 13, 2020) [not precedential] (Opinion by Mark Lebow).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?”
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.
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.
TTABlogger comment: A thorough opinion, but I suspect this will be appealed.
Text Copyright John L. Welch 2021.