IP Law Daily Apple’s ‘smart keyboard’ is too generic to be registered on the Supplemental Register
Tuesday, January 19, 2021

Apple’s ‘smart keyboard’ is too generic to be registered on the Supplemental Register

By John W. Scanlan, J.D.

Evidence from multiple sources showed that purchasers and prospective purchasers of Apple’s product identified the term SMART KEYBOARD as referring to technologically advanced keyboards for mobile devices, the genus of goods that includes Apple’s product.

Apple, Inc., could not register SMART KEYBOARD on the Supplemental Register for its iPad keyboard case because the term was generic for a class of goods to which it belonged rather than as a source identifier for Apple’s product, the Trademark Trial and Appeal Board has ruled in a non-precedential decision affirming an Examining Attorney’s denial of registration. Apple previously had been denied registration of its proposed mark on the Principal Register as well (In re Apple Inc., January 13, 2021, Lebow, M.).

Apple applied to register SMART KEYBOARD, in standard characters, on the Principal Register in International Class 9, 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." The Examining Attorney declined registration, stating that the proposed mark was merely descriptive of the goods. Apple appealed; it also filed an amended application stating that its mark had acquired distinctiveness. The Examining Attorney issued a new refusal, stating that SMART KEYBOARD is a generic term, and in the alternative that Apple had not shown acquired distinctiveness. Apple again amended its application to seek registration on the Supplemental Register. Its application was refused again, as was its request for reconsideration. Apple appealed.

Genus. The Board first determined that "technologically advanced keyboards for mobile digital devices" accurately described the genus of goods that included keyboards with smart features. The Examining Attorney relied upon articles and advertisements in finding that SMART KEYBOARD described various types of technologically advanced keyboards. Although Apple argued that its device was not a technologically advanced keyboard but a multifaceted accessory combining a tablet keyboard, cover, and stand, the Board said that Apple elevated form over substance. A keyboard does not cease to be a keyboard simply because it has additional features, the Board stated, and the core of the good was a keyboard. The Board believed that Apple had structured its goods identification to avoid a likely finding of genericness.

Relevant public understanding. The Board determined that the relevant public, which is ordinary members of the public purchasing Apple’s goods, understands the phrase SMART KEYBOARD to refer to a genus of technologically advanced keyboards generally rather than to Apple’s product specifically. The Examining Attorney had provided evidence including articles, reviews, patents, blog posts, and point of sale displays to show generic use of the term both before and after Apple introduced its product. He also provided evidence showing the use of the term "smart" in connection with other computer peripherals that were not seen by consumers as identifiers of the sources of the goods.

While Apple argued that many of the Examining Attorney’s websites were of little probative value as to the relevant public understanding because these sites received little web traffic, Apple did not explain or analyze the evidence from the Alexa web analytics service that it presented, and the Board found that Apple had "cherry picked" the websites it criticized as being obscure from others that were well-known online and print sources. Apple also argued that foreign-sourced websites could not be probative of U.S. consumer perception, but the Board observed that the seven foreign sources cited were in the English language and were accessible over the Internet from the United States and were part of a much larger record. Apple also asserted that evidence from 16 patents and patent applications that refer to a "smart keyboard" could not establish public perception because inventors and patent attorneys, not the public, read patents; the Board found this argument contrary to its past practice, noting that it is required to consider all evidence and that all 16, including Apple’s own patent, made generic use of the term.

The Board disagreed with Apple’s assertion that the Trademark Office had not shown that SMART KEYBOARD was generic prior to November 2015, when Apple asserted it first used the term in commerce, finding that this conclusion could be reached only by construing the applicable genus as Apple had urged. There also was significant evidence from retailers showing the use of the phrase "smart keyboard" by Apple competitors and the relevant public. Apple’s identification of other registered marks that used the word SMART did not show that it was not generic when combined with KEYBOARD and did not require the Board to find that Apple’s proposed mark was not generic. The fact that "smart dictionary" did not appear in major online dictionaries did not make it generic and that it did not appear in the USPTO’s Trademark ID Manual was not controlling regarding registrability. While millions of consumers may have been exposed to Apple marketing, successful marketing campaigns cannot make a generic term a registrable trademark, the Board said, with the Board noting that much of the media cited by Apple had referred to Apple’s product generically. There was unrebutted generic use of SMART KEYBOARD before and after Apple began using the term by at least 10 other companies, numerous reviews and articles, and multiple patents.

This case is Serial No. 86857587.

Attorneys: Glenn A. Gundersen (Jesse Lambert of Dechert LLP) for Apple Inc. Robert A. Cohen for the USPTO.

Companies: Apple Inc.

MainStory: TopStory Trademark USPTO GCNNews

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