To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Apple Inc. (trademarkdocket@apple.com)
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`U.S. TRADEMARK APPLICATION NO. 86857587 - SMART KEYBOARD - N/A
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`5/9/2019 5:55:18 PM
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`ECOM103@USPTO.GOV
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`*86857587*
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`CLICK HERE TO RESPOND TO THIS
`LETTER:
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`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   86857587
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`           
`
`MARK: SMART
`KEYBOARD
`
`CORRESPONDENT
`ADDRESS:
`  
`       THOMAS R LA
`PERLE
`
`  
`
`       APPLE INC
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`         ONE APPLE
`PARKWAY
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`           CUPERTINO, CA
`95014
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`    
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`   
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`APPLICANT: Apple Inc.
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`    
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`CORRESPONDENT’S
`REFERENCE/DOCKET
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`NO:       
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`  N/A
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`   
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`CORRESPONDENT E-
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`MAIL ADDRESS:       
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`trademarkdocket@apple.com
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`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 5/9/2019
`
`THIS IS A FINAL ACTION.
`
`INTRODUCTION
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`This Office action is in response to applicant’s communication filed on April 2, 2019.
`
`In a previous Office action(s) dated October 2, 2018, the trademark examining attorney refused registration of the applied-for mark based on the
`following:  Trademark Act Section 23(c) – Genericness of the mark.
`
`Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL said Section 23(c) refusal for the reasons set
`forth below.  See 37 C.F.R. §2.63(b); TMEP §714.04.
`
`GENERICNESS REFUSAL UNDER TRADEMARK ACT SECTION 23(c)
`
`Registration is refused and now made final on the Supplemental Register because the applied-for mark is generic and thus incapable of
`distinguishing applicant’s goods.   Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.
`
`  A
`
` generic term is a common name that the relevant public uses or understands primarily as referring to the category or genus of the goods in
`question.  In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); H. Marvin Ginn Corp. v. Int’l Ass’n of
`Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); see TMEP §1209.01(c).  Generic terms are by definition incapable
`of indicating a particular source of goods and cannot be registered as trademarks or service marks.  In re Cordua Rests., Inc., 823 F.3d 594, 599,
`118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141,
`1142 (Fed. Cir. 1987)); see TMEP §1209.01(c).  Registering generic terms “would grant the owner of [a] mark a monopoly, since a competitor
`could not describe his goods as what they are.”   In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d at 1569, 4 USPQ2d at 1142. 
`Determining whether a mark is generic requires a two-step inquiry:
`
`(1)       What is the genus of goods at issue?
`
`(2)      
`
`Does the relevant public understand the designation primarily to refer to that genus of goods?
`
`In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
`
`Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).  
`
`Regarding the first part of the inquiry, the genus of the goods may be defined by an applicant’s identification of goods.   See In re Cordua Rests.,
`Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991));
`
`see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).    
`
`In this case, the application identifies the goods as an “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,” which adequately defines the genus at issue.
`
`Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods.  Sheetz of Del., Inc.
`v. Doctor’s Assocs. Inc. , 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In
`this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to
`the channels of trade or classes of consumers, this includes sophisticated and non-sophisticated consumers for all manner of professional and
`
`non-professional use and general and/or recreational use.   
`
`In assessing the genericness of a phrase, the evidence of record must show that the composite mark, when viewed as a whole, would be perceived
`by the relevant purchasing public as generic when used in connection with the relevant goods.  See In re Dial-A-Mattress Operating Corp., 240
`F.3d 1341, 1345-46, 57 USPQ2d 1807, 1810-11 (Fed. Cir. 2001) (quoting In re Am. Fertility Soc’y , 188 F.3d 1341, 1348-49, 51 USPQ2d 1832,
`
`1837 (Fed. Cir. 1999)); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760 (TTAB 2013); TMEP §1209.01(c)(i).  
`
`  “Accessory for a handheld mobile digital
`In the present case, applicant’s wording is “SMART KEYBOARD” in International Class 9 for:
`device, namely, a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard.”
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`The examining attorney incorporates by reference the entirety of the evidence made of record in this matter and attaches additional evidence
`herein shows that the term “smart keyboard” is commonly used to refer to a broad array of keyboard peripherals featuring embedded inter-
`device communication technology.  See, e.g.:
`
`·       Moser, Hybrid Computer, U.S. Patent No.: 9,152,184, (issued October 6, 2015, https://patents.google.com/patent/US9152184");
`
`·       Tang et al, Smart Keyboard for Computer and Compact Devices, U.S. Patent Application No.: US2013022254A1, (published
`August 29, 2013, https://patents.google.com/patent/US20130222254A1);
`
`·      
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`·      
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`https://www.nordicsemi.com/Applications/Computer-Peripherals, (discussing wireless computer peripherals, including keyboards,
`and noting that “smart pens” are the newest types of peripheral devices and are used on tablets);
`
`https://www.banggood.com/OneBoard-Pro-Smart-Mechanical-Keyboard-Built-in-Android-4_4-Computer-
`p-966938.html?akmClientCountry=America&cur_warehouse=CN;
`
`·       http://www.gadgetify.com/oneboard-pro-smart-keyboard/;
`
`·       https://www.amazon.com/dp/B073JG5266/?tag=wccftech0a9-20;
`
`·      
`
`·      
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`https://bibblebytes.com/4-best-smart-keyboards-12-9-inch-ipad-pro/, (reviewing different “Smart Keyboards” by Apple and
`others for use with the iPad Pro);
`
`https://joyofapple.com/blog/best-ipad-smart-keyboard-cases/, (reviewing different “smart keyboards” and using the term to
`describe a group of keyboard tablet peripherals);
`
`·       https://www.ikream.com/2019/04/7-best-smart-keyboard-for-12-9-inch-ipad-pro-30320;
`
`·      
`
`·      
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`https://tabletunderbudget.com/bluetooth-keyboards-for-tablets/, (describing the Nulaxy “smart keyboard” for Android, iOS, and
`Windows devices); and,
`
`https://www.amazon.com/New-Trent-Airbender-Detachable-
`Bluetooth/dp/B012BTCZ9G/ref=cm_cr_arp_d_product_top?ie=UTF8, (Describing the New Trent detachable smart keyboard for
`use with applicant’s iPad).
`
`The examining attorney also attaches below, a 1994 news article taken from the LEXISNEXIS® database discussing the news subject’s, Tanisys
`
`Technology, development of specialized Windows command software to be integrated into a “smart keyboard.”    
`
`The cumulative evidence in this case shows that “SMART KEYBOARD,” or close derivations thereof, is commonly used by relevant
`consumers to refer to keyboards featuring technology that allows for electronic control and connection with another device, such as a
`microprocessor, software, wireless technology, conductive materials, etc.  The cumulative evidence also shows that the term “SMART” is used
`in direct connection with a variety of computer peripherals, including computer mice, speakers and headsets that feature novel and non-traditional
`connectivity with their parent device, and are used as a common name for such basic computer peripherals.
`
`The general consumer, both unsophisticated and sophisticated alike, in the circumstances surrounding this application, are conditioned to not
`view the adjective “SMART” as a source indicator, but as just part of the common name for a whole category of computer peripherals, that
`become ever-more complex as connective technology evolves and that these goods incorporate such technology.  Use of a term as an adjective or
`adjectival phrase does not prevent that term from being generic if it refers to the relevant genus or category of goods.  See In re Serial Podcast,
`LLC, 126 USPQ2d 1061, 1068 (TTAB 2018) (quoting TMEP §1209.01(c)(ii) and cases cited therein).  Thus, an adjective or adjectival phrase
`may be generic if it denotes a narrower subcategory of the identified goods.  See, e.g., In re Northland Aluminum Prods. Inc., 777 F.2d 1556,
`1560, 227 USPQ 961, 964 (Fed. Cir. 1985) (holding BUNDT generic for ring cake mixes); In re Mecca Grade Growers, LLC, 125 USPQ2d
`1950, 1959 (TTAB 2018) (holding MECHANICALLY FLOOR-MALTED generic for malt used for brewing and distilling and for processing
`agricultural grain); TMEP §1209.01(c)(ii).  In applicant’s wording, “SMART” acts as a generic adjective.
`
`Consumers would identify the genus of goods via the mark as keyboards featuring connective technology, irrespective of whether the physical
`keyboard is embedded in a device cover.  The evidence made of record by the examining attorney over the lifespan of this case show that the
`term “smart keyboard” has been used in a general manner to describe a variety of different keyboards featuring different types of technology
`and/or integrated software.  Much of this evidence pre-dates the 2015 release of applicant’s first generation 12.9 inch iPad Pro, for which the
`original “SMART KEYBOARD” was made.   (See:  https://en.wikipedia.org/wiki/IPad_Pro#Smart_Keyboard).  The evidence clearly shows that
`the term “smart keyboard” was a common name for a technologically advanced keyboard prior to the release applicant’s products and, as
`particularly shown by the evidence above, that it is also used to categorize keyboards from different manufacturers which are compatible with
`applicant’s iPad Pro.
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`Applicant sets forth the main premise of its argument against genericness with a misstatement of the examining attorney’s position.   The
`examining attorney is not arguing that any use of the term “SMART” as being generic.   However, the evidence in this case shows that the term
`“SMART” when paired with the generic name for a specific computer peripheral would not be recognized as a mark, previously supplied
`examples of this being “smart mouse,” “smart rings,” “smart speakers,”
`  and “smart headsets.”   The analogy drawn by the examining attorney
`is that the term “SMART” is generic in the context of computers, peripherals and associated technology, (as demonstrated by the dictionary and
`marketplace evidence), when simply combined with the generic term “KEYBOARD” adds no new significance to the overall combination that
`would alter its generic nature.  See In re Virtual Independent Paralegals, LLC, 2019 USPQ2d 11512 (TTAB 2019).
`
`Applicant’s Other “SMART” Marks
`
`Delving more closely into applicant’s arguments, applicant firstly contends that “SMART KEYBOARD” cannot be generic as the USPTO has
`registered “SMART COVER,” “SMART CASE,” and “SMART CONNECTOR.”
`  This is not persuasive as it is well settled that each case
`must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records.  See In
`re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB
`2014); TMEP §1209.03(a).  The question of whether a mark is merely descriptive, (and/or generic), is determined based on the evidence of
`record at the time each registration is sought.  In re theDot Commc’ns Network LLC , 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP
`§1209.03(a); see In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.  Applicant’s referenced marks are different in what the
`
`adjective “SMART” is modifying and the goods underlying these marks differ from those of the goods at issue in this case.   
`
`Applicant contends that “SMART” is disclaimed less than 20% of the time in Class 9 and applicant has attached a screen capture of its TESS
`search results page in support, (see Resp. of April 2, 2019, Ex. A). This evidence is of little, if any probative value.  The TESS evidence provides
`no indication of what marks applicant is referencing and it cannot be discerned what the underlying goods are for the 646 “SMART”-disclaimed
`marks.  The evidence likewise doesn’t indicate which of the 646 marks with “SMART”-disclaimed might be on the Supplemental Register.
`  In
`sum, applicant’s Exhibit A attempts to paint an overly broad and simplistic assumption that the TESS database shows that “SMART” is usually
`a non-generic term, even though there are 646 potential hits in Class 9 where it could be generic in theory.  Based on the amount of speculation
`surrounding Exhibit A, the argument is not persuasive.
`
`Competency of the Examining Attorney’s Evidence
`
`Applicant next attacks the examining attorney’s evidence in this matter as being from sources that are technical, obscure, dead-linked evidence
`and are otherwise not reflective of how consumers would view “SMART KEYBOARD.”   Applicant makes the overly simplistic and sweeping
`assertion that only it uses “SMART KEYBOARD” and that its evidence shows market saturation of the wording.   At the outset, applicant’s
`market saturation does not alter the generic meaning of “SMART KEYBOARD” as perceived by the marketplace.   The fact that an applicant
`may be the first or only user of a generic designation is not dispositive on the issue of genericness where, as here, the evidence shows that the
`word or term is generic.  See In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1549 (TTAB 2017) (quoting In re Greenliant Sys. Ltd., 97
`USPQ2d 1078, 1083 (TTAB 2010)); TMEP §1209.03(c).
`
`Apple argues that the examining attorney improperly contends that “SMART KEYBOARD” is/was generic from the outset.   This is also a
`misstatement.  The examining attorney throughout this prosecution has supplied dozens and dozens of examples from the marketplace showing
`that consumers would perceive “SMART KEYBOARD” not as a source identifier, but rather as a common name for technologically beefed up
`computer keyboards.  As stated by the examining attorney in earlier Office actions, applicant cannot pluck a generic term from the marketplace,
`saturate the market with its products using the generic term, and then claim that the market saturation shows that the generic term is no longer a
`generic term.   See In re Log Cabin Homes, 52 USPQ2d 1206 (TTAB 1999); In re Tibbals Flooring Co., 135 USPQ 374 (TTAB 1962); see also 2
`McCarthy on Trademarks and Unfair Competition §12:11 (5th Ed. 2018).
`
`Applicant next dives into its own evidence of such market saturation.  To be clear, applicant has amended the application to the Supplemental
`Register in response to the earlier alternative Section 2(e)(1) mere descriptiveness refusal.  This was done after the examining attorney rejected
`applicant’s Section 2(f) claim of acquired distinctiveness.   Applicant is attempting to repackage its rejected acquired distinctiveness evidence as
`a reason that “SMART KEYBOARD” is not a generic term.   The examining attorney contends that because the cumulative evidence of record
`shows that “SMART KEYBOARD” is a generic term, applicant’s rehashing of its Section 2(f) evidence is not probative.
`  The examining
`attorney points out that the Section 2(f) evidence, summarized by applicant here, never directly connected consumer recognition with “SMART
`KEYBOARD”.   Applicant’s success with its iPad is not relevant because that is a different mark and product than what is at issue here.   The
`evidence also suffered from an overall lack of connection as to consumer recognition.  Again, a generic term for the goods is not transformed into
`a source indicator just because someone attempts to use it in trademark-fashion.
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`The evidence made of record in this case by the examining attorney is attacked as being not creditable or authoritative as it comes from
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`“obscure” sources “that no one ever visits.”   Applicant’s argument is overly simplistic and conclusory in nature.   Applicant argues that three
`websites referenced by the examining attorney are foreign in nature.  Firstly, the evidence is not devoid of value as the Firstpost, Wccftech and
`
`Twice websites are in English and are accessible to U.S. consumers.  
`
`English language material obtained from foreign websites or foreign news publications has been accepted as competent evidence in trademark
`examination when it is likely that U.S. consumers have been exposed to the website or news publication.  See In re Bayer AG, 488 F.3d 960, 969,
`82 USPQ2d 1828, 1835 (Fed. Cir. 2007) (finding foreign website or foreign news publication evidence carries some probative value as to
`prospective consumer perception in the United States because of the “growing availability and use of the internet as a resource for news, medical
`research results, and general medical information”); In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10 (TTAB 2017) (finding foreign
`website evidence relevant because potential consumers would likely encounter those English language websites when searching for companies
`offering services similar to applicant); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (finding foreign website evidence
`relevant because the goods in the application involve the identity of a celebrity who lives and travels outside of the United States); In re IBM
`Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006) (finding foreign website evidence probative for computer hardware because professionals in
`highly technical fields such as medicine, engineering, computers, and telecommunications are likely to utilize all available resources, regardless
`
`of country of origin or medium); TBMP §§1208.01, 1208.03; TMEP §710.01(b).  
`
`It is likely that consumers in the U.S. would encounter these articles if searching for information about applicant’s products, which are sold
`globally.  Secondly, the wccftech.com website attacked by applicant is actually a global publication with reporters stationed in the United States. 
`(See: https://wccftech.com/about/).  Further, the Pulse article is a news story about a computer researcher in Georgia developing a “smart
`keyboard”.   Applicant is therefore, not fully correct that the evidence should be excluded from consideration as it bears on and is accessible from
`the United States.
`
`Likewise, applicant’s conclusion as to the obscurity of the evidence, is just that, a conclusion.   Applicant attacks blogger evidence from DZone
`and other sources as not being “mainstream” and not visited by Apple customers, even though software developers are within the class of
`relevant consumers of applicant’s product as defined by the identification of goods.   Such user forum evidence actually reflects how those in the
`consuming class talk and name different goods.  Evidence from blogger forums is absolutely probative and offers a window as to how the
`wording is perceived and used by those who are in the relevant consuming class.
`
`Applicant provides no evidence to back up its statement that the evidence in this matter is of little or improper weight based on authoritativeness
`and credibility.  Rather applicant regurgitates case law concerning “occasional misuse” of the mark within the relevant consumer class in order
`to downplay the examining attorney’s dozens of evidentiary examples.   Websites and webpages, dictionaries, newspaper articles and
`publications are generally a competent source for determining how the public perceives the mark in connection with applicant’s goods.   See In re
`N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d
`1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP
`§1209.01(b).  Applicant even agrees with the examining attorney that evidence aside from big chain retail store evidence, (tendered by applicant),
`is not the sole measure of evidentiary competency.
`
`The LEXISNEXIS® extracted newspaper articles, to start, that were attached to the Office action of June 28, 2017 are taken from sources such as
`the Los Angeles Times, The New York Times, and The Chicago Business Journal, which are not exactly small and obscure publications with
`little readership, and all offer online and print editions.   The evidence in this case has also been taken from high traffic retailers such as Amazon,
`and popular computer product review publications such as PC Magazine, CNet, and Macworld.  Applicant’s repeated statements throughout this
`prosecution that the marketplace evidence is obscure is conclusory and rooted in applicant’s own opinions, which would seem to suggest that no
`evidentiary source meets the competency requirement.  Rather the cumulative evidence from the marketplace shows that “SMART
`KEYBOARD” has been used as a common name for a broad category of keyboards that incorporate a technologically advanced feature(s).
`
`The Examining Attorney’s Patent Evidence
`
`Applicant also argues that the utility patent/published patent application evidence made of record by the examining attorney is also not competent
`on the question of genericness.  Applicant again attempts to posit that the presence of “SMART KEYBOARD” in the specifications of fifteen
`patents and published patent applications, (substantially more than “several” as described by applicant), are simply sporadic regurgitations of
`“SMART KEYBOARD.”   The argument is not persuasive.
`
`Section 112 of the Patent Act requires that a patent specification “contain a written description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is
`most nearly connected, to make and use the same.”   See 35 USC §112(a) (emphasis added).  The specification must employ the commonly
`understood names of the invention and/or its elements unless otherwise defined in the specification as patent applicants may act as their own
`lexicographer.  See Manual of Patent Examining Procedure (MPEP) §2173.05(a). 
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`Additionally, the use of a mark in a patent application is generally discouraged but can be allowed in a patent if:
`
`(A) its meaning is established by an accompanying definition in the specification which is sufficiently descriptive, enabling, precise and
`definite such that a claim including the mark or trade name complies with the requirements of 35 U.S.C. §112, or
`(B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature.
`
`See, e.g., United States Gypsum Co. v. National Gypsum Co., 74 F3d 1209, ____ n.6, 37 USPQ2d 1388, 1392 n. 6 (Fed. Cir. 1996); §MPEP
`608.01(v).
`
`In other words, if the mark itself is a common name, resulting in its being definite for purposes of Section 112, then it is permissible to be present
`in the patent specification and not capitalized.  Id.
`
`The cumulative patent evidence made of record shows extensive presence of “smart keyboard” as a term that is commonly understood within the
`consuming public.  It shows that “smart keyboard,” as a whole, is understood to be a common name for what constitutes a broad range of
`technologically advanced keyboards.  Further, none of the patentees and patent applicants referenced by the examining attorney acted as their
`own lexicographer to re-define “smart keyboard” in the specifications, further indicating that “smart keyboard” is a generally understood term.
`Lastly, as to the patent evidence, many of the referenced patents and published patent applications pre-date applicant’s introduction of its goods
`
`into the market.  
`
`Relation of the Evidence to Applicant’s Product Release Date
`
`With respect to the temporal aspects of the evidence raised by applicant, the examining attorney contends that the evidence in support of
`genericness of “SMART KEYBOARD” reflects that the term was understood in the marketplace before applicant began using “SMART
`KEYBOARD” in the market in the fall/winter of 2015.   This is further reflected in the November dates of use and use-in-commerce as set
`forth by applicant.  Again, much of the patent evidence pre-dates this marketplace release date.  Much of the evidence from the marketplace
`shows use of the mark as a common name for technologically advanced keyboards in the several years prior to the fall 2015 release date of the
`first generation of applicant’s products.   The evidence also shows a continuing use of “SMART KEYBOARD” in the marketplace by
`publications and competitors who make keyboards that are compatible with applicant’s iPad Pro product.   In this emerging market of “smart”
`peripherals, the term has been recognized from a period of years prior to the fall of 2015 and continues to be ongoing.  That “SMART
`KEYBOARD” is used by other keyboard makers and is consistently used by publications to show a category of keyboards that can be used with
`applicant’s iPad product further reinforces the impression on the purchasing public that this is indeed the common name for the genus of
`keyboards and that others in the marketplace need to be able to use such names to describe their goods.  See In re Trek 2000 Intl Ltd., 97
`USPQ2d 1106, 1109 (TTAB 2010).
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`Applicant references as an analogy the Federal Circuit’s decision in In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4
`USPQ2d 1141 (Fed. Cir. 1987), in support of its contention that “SMART KEYBOARD” does not identify a genus.   What is particularly
`interesting about Merrill Lynch was the focus placed by the court on the use of Merrill Lynch’s mark “CASH MANAGEMENT ACCOUNT” in
`the marketplace prior to the introduction of the services to consumers and this is where the case actually runs counter to applicant’s contention
`on this record.  The court concluded in Merrill Lynch that the USPTO’s evidence was essentially devoid of usage of “CASH MANAGEMENT
`ACCOUNT” prior to the launch of the service offerings and in this vein, the only usage of the mark was by Merrill Lynch.   Id at 1143.
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`While applicant’s online market saturation on search engines of “SMART KEYBOARD” may be similar to Merrill Lynch’s market saturation
`campaign in the early 1980’s, this is where the similarities end.   Unlike the record in Merrill Lynch, here, there is ample evidence showing usage
`of “SMART KEYBOARD” for technologically advanced keyboards prior to the introduction of applicant’s product, and ongoing today among
`manufacturers who produce alternative iPad compatible keyboards.
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`The Nature of Applicant’s Goods
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`Applicant further argues that “SMART KEYBOARD” is not generic because it is not trying to register the wording for a keyboard, but rather for
`a tablet cover that features an embedded keyboard.  The argument is not persuasive and is essentially a distinction without a difference.  The
`examining attorney maintains that the evidence shows that “SMART KEYBOARD” describes a genus of goods, of which applicant’s products
`are but one species.  The primary characteristic of applicant’s goods is an integrated keyboard, otherwise applicant would be left with just its
`“SMART COVER.”   The keyboard, again features computer technology.  The genus, as the evidence shows, contains other keyboards that
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`contain other types of software and connective technology.
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`Applicant again cites In re Merrill Lynch, as an analogy where the mark “CASH MANAGEMENT ACCOUNT” was held not generic as the
`term was found not have been used with its services for stock brokerage, money market fund administration and loan provision.  Id at 4 USPQ2d
`1143.  Unlike the situation in Merrill Lynch, applicant’s goods, actually feature a keyboard as a key component, ( i.e. the reason why a putative
`Apple consumer would purchase the goods in the first place in order to impart keyboard functionality on an iPad), and that the product as a
`whole, where the keyboard is the primary component, features connective technology that allows it to function with applicant’s iPad, rendering it
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`“SMART” within the accepted meaning of the term of the genus.   
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`Applicant also cites the Board’s non-precedential decision in In re The Country Vintner, Serial No.: 85567206, (TTAB 2014).  The Trademark
`Trial and Appeal Board has stated that decisions designated as not precedential are not binding upon the Board but may be cited for whatever
`persuasive value they might have.  TBMP §101.03; TMEP §705.05.  This matter is also distinguishable as the evidence in that case showed that
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`the USPTO’s evidence did not show use of the mark within the relevant and more-narrow consuming class for wholesalers.   Id. at 12.  
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`The identification of goods in this case adequately defines the genus and does not include language that distinctly limits the relevant consumers. 
`The relevant class of consumers for applicant’s goods comprise all persons, sophisticated and otherwise.   Unlike, The Country Vintner,
`applicant’s identification is not limited to only wholesale or retail or any other specific group.   Therefore, this case is of little persuasive value.
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`Applicant Not Knowing Which Evidence Relates to the Refusal
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`Lastly, applicant has posited that the evidence and the examining attorney’s case is defective because applicant does not understand which pieces
`of evidence in the record relate to the genericness refusal and therefore, cannot mount a rebuttal.  In nearly four years of prosecution of this
`matter, applicant has made attempts to discredit the examining attorney’s evidence and in response, the examining attorney has continued to
`build the evidentiary record.  Applicant has made attempts to attack the patent evidence made of record, whether certain pieces of internet
`evidence were still live, whether certain pieces of evidence were or were not foreign sources, etc.  In every action issued by the Office, the
`examining attorney has made it amply clear, that the evidence in each prior Office action was incorporated by