Electric Visual Evolution, LLC

Trademark Trial and Appeal Board

Sep 19, 2008

No. 78868409 (T.T.A.B. Sep. 19, 2008)

Mailed:
September 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Electric Visual Evolution, LLC
________

Serial No. 78868409
_______

Robert L. Powley of Powley & Gibson, P.C. for Electric
Visual Evolution, LLC.

Simon Teng, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Electric Visual Evolution, LLC (“applicant”) filed an
intent-to-use application for the mark ELECTRIC, in
standard character format, for goods ultimately identified
as “watches and watch bands,” in Class 14.
The Trademark Examining Attorney issued a final
refusal to register the mark under Section 2(e)(1) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the ground
that the mark ELECTRIC is merely descriptive of watches
because it directly conveys to consumers that the watches
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78868409
2
run on electricity. The Examining Attorney submitted the
following evidence to show that ELECTRIC is merely
descriptive of watches:
1. A list of the first ten hits from an Internet
search conducted through the GOOGLE search engine
for “electric watches.”1 The hit list included,
but was not limited to, the following website
excerpts:

A. Vintage Hamilton Electric Watches By the
Leading Authority;

B. led, electric and strange watches – Pulsar -
Bulova – Acutron; and,

C. Collectibles – General (Modern: electric
watches
Thanks for the inquiry. Hamilton made two
models of electric wristwatches, 500 & 501.

2. An excerpt from the Rene Rondeau website
“specializing in Hamilton Electric Watches since
1986.”2 The website touts “Quality Vintage Watch
Sales & Repairs – by the World’s Leading
Authority on Hamilton mechanical and electric
watches.”

3. An excerpt from the Alibaba.com website for
Weilida Plastic Manufactory, a Chinese company
advertising the sale of electric watches in bulk.3

1 October 2, 2006 Office Action.

2 http://hamiltonwristwatch.com attached to the October 2, 2006
Office Action. There was also an excerpt from the
www.faszination.ch website. Although this foreign website is
accessible to the United States public, there is no reasonable
basis for us to consider it a relevant reference from which to
infer the commercial impression derived from the term ELECTRIC
used in connection with watches. Accordingly, we have given this
website excerpt no consideration in our decision.

3 http://weilida.en.alibaba.com attached to the October 2, 2006
Office Action. Applicant argued that we should not give this
website any probative value because its sponsor is a Chinese
Serial No. 78868409
3

4. A dictionary definition of the word “electric”
with, inter alia, the following meanings:

1. pertaining to, derived from, produced by, or
involving electricity . . .

2. producing, transmitting, or operated by
electric currents . . .

3. electrifying; thrilling; exciting; stirring
. . . 4

5. An excerpt from the BoingBoing website providing
a history of electric watches.5 The excerpt has
the following information:

History of electric watches

The Watchismo blog has a great history of
pre-quartz electrical watches, focusing on
these wacky early Swiss watches with two
huge external battery compartments.

6. An excerpt from “mitchshoppingonline.com”
advertising the sale of Hamilton Electric
Watches.6

7. An article from The Cornell Daily Sun (March 29,
2007) about the wristwatch market.7 The article
provides that “[i]expensive electric watches are
a great way to make a statement and, at a low

company and thus the website is not evidence of how U.S.
consumers would view the term “electric watches.” (Applicant’s
Brief, p. 8). Because the website is directed to consumers in
the United States, we find that it is probative of how U.S.
consumer may perceive the term “electric watches.”

4 www.dictionary.com derived from The American Dictionary of the
English Language (4th ed. 2000) attached to the October 2, 2006
Office Action.

5 www.boingboing.net attached to the April 5, 2007 Office Action.

6 April 5, 2007 Office Action.

7 www.cornellsun.com attached to the April 5, 2007 Office Action.
Serial No. 78868409
4
cost, you can stay up to date with the latest
trends or dabble in different styles before
committing to a pricier piece.”

8. An excerpt from the history section of the Timex
website providing, in relevant part, that in the
1960’s “[t]echnological advances allowed the
company to offer a wide range of products,
including the first low-priced electric watches
for men and women, as well as several other
inexpensive jeweled models.”8

9. An excerpt from Amazon.com advertising the sale
of Miller’s: Wristwatches: How to Compare and
Value by Jonathan Scatchard.9 The book
description reads as follows:

Electric watches, divers’ watches, novelty
watches, cool watches form the 60’s, and
elite watches like the Rolex V and
Chronograph I; it’s time for wristwatches to
rule the market, and these fabulous examples
are coveted as much for style as
practicality.

10. A copy of U.S. Patent No. 4070821 entitled
“Electric watch battery contact spring.”10 It is
a patent relating to the structure of an electric
watch.

11. An excerpt from the Global Sources website
advertising the sale of watches, including a
variety of electric watches.11

8 www.timex.com attached to the April 5, 2007 Office Action.

9 April 5, 2007 Office Action.

10 The patent application was filed on March 22, 1976 and was
published on January 31, 1978. The patent was copied from
www.freepatentsonline and attached to the April 5, 2007 Office
Action.

11 www.globalsources.com attached to the April 5, 2007 Office
Action.

Serial No. 78868409
5
12. Excerpts from 11 newspaper articles retrieved
from the LexisNexis database referencing electric
watches.12 A sampling of the references includes
the following excerpts:

A. New rules bar “e-waste” from state landfills

Don’t throw away that dead battery, old cell
phone or broken digital camera. As of Feb.
9, it will be illegal to send household
electronic waste – e-waste – to California
landfills. . . . . But San Diego County
environmental officials say the category
appears to cover anything that contains a
circuit board - - from electric watches and
alarm clocks to electronic toys, VCRs, even
novelty greeting card that play a tune when
opened.

The San Diego Union-Tribune (January 22,
2006)

B. Savage On Wheels: Pontiac takes big leap in
style, quality with G6; Drive train lags
behind Japanese stable mates

The drive train represents the major
difference. The Pontiac’s 3.5–liter V-6 is
a typical noisy pushrod GM engine as opposed
to the overhead-cam design seen in Japanese
makes. That means this one growls while it
runs up to speed and through the gears,
while Camry and Accord are quiet. Think of
it as the difference between a noisy
grandfather clock and an electric watch.

Milwaukee Journal Sentinel (January 15,
2005)

C. “Goldfinger” Finds That Time Is On His Side

In this throwaway world, people still bring
watches in for repairs and not just new
batteries. . . . The technology, set on its
ear by quartz watches, keeps expanding.

12 Attached to the November 19, 2007 Office Action.
Serial No. 78868409
6
There are mechanical watches, quartz watches
and electric watches.

Orlando Sentinel (July 18, 2004).

Based on this evidence, the Examining Attorney
contends that “[t]he word ‘electric’ immediately conveys to
consumers that Applicant’s watches run on electricity.”13
On the other hand, applicant contends that ELECTRIC is not
merely descriptive because (1) consumers are unlikely to
associate the term “electric” with watches and watchbands
and (2) the word “electric” has multiple meanings,
including “emotionally charged” or “exciting.”14
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section

13 Examining Attorney’s Brief, p. 2.

14 Applicant’s Brief, pp. 4-5 and 6-7. Applicant attached copies
of advertisements to its brief from watch companies to show that
“several well-known watch brands” do not use the term “electric.”
(Applicant’s Brief, p. 8 and Exhibit 2). The Examining Attorney
objected to the evidence attached to applicant’s brief pursuant
to Trademark Rule 2.142(d). That rule provides, in part, that
the record should be complete prior to the appeal and that the
Board will ordinarily not consider evidence after the appeal is
filed. In response, applicant argues that the rule is not
mandatory and urges the Board to exercise its discretion to
consider the evidence. Because this evidence was not recently
discovered or otherwise unavailable, we decline to admit the
late-filed evidence and therefore grant the objection of the
Examining Attorney. Even if we admitted applicant’s late-filed
advertisements, it would not change our decision because a mark
may be descriptive regardless of the number of competitors, if
any, use it. See In re National Shooting Sports Foundation, 219
USPQ 1018, 1020 (TTAB 1983) (“The fact that applicant may be the
first and only user of this highly descriptive or generic
designation does not justify registration if the term projects
only merely descriptive significance”).
Serial No. 78868409
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2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
Serial No. 78868409
8
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Applying these principles in the present case, and
based on the evidence submitted by the Trademark Examining
Attorney, we find that ELECTRIC is merely descriptive as
applied to “watches.”15 It directly tells consumers that
applicant’s watches are powered by electricity. That
interpretation is amply supported by the websites and news
articles referencing electric watches.
Applicant makes the following argument:
The average consumer is unlikely to
associate the term “electric” with
watches and watch bands. The average
consumer associates watches with
mechanical wind-up operation,

15 It is well settled that where a mark is merely descriptive of
one or more items identified in the description of goods but may
be suggestive or even arbitrary as applied to other items,
registration is properly refused if the mark sought to be
registered is descriptive of any of the goods. In re Canron,
Inc., 219 USPQ 820, 821 (TTAB 1983); Electro-Coatings, inv.
Precision National Corporation, 204 USPQ 410, 420 (TTAB 1979); In
re Brain Research Foundation, 171 USPQ 825, 826 (TTAB 1971).
Accordingly, we cannot consider applicant’s request that even if
we find ELECTRIC descriptive of watches, we should not find it
descriptive of watch bands. (Applicant’s Reply Brief, p. 5).

Serial No. 78868409
9
batteries, motion or even solar power,
but not electricity. If asked what
powers their watch, consumers are more
likely to answer “battery” not
“electric” or “electricity.” The term
“electric” is not commonly used by the
general public to describe a source of
power for watches, nor is the term
“electricity.” When further
questioned, consumers would secondarily
concede that batteries are electric.16

One problem with applicant’s analysis is that it
starts with the term ELECTRIC and asks whether the
purchaser can conclude what applicant’s goods are. As
indicated above, the proper analysis should start with the
products “watches and watch bands” and inquire whether the
term ELECTRIC describes a significant feature or subject of
the “watches and watch bands.” The evidence shows that
watches may be electric watches. Thus, the mark directly
describes a feature of applicant’s goods.
Another problem with applicant’s analysis is that it
is not supported by any evidence. All applicant has
provided is argument regarding what a proposed purchaser
would conclude when confronted with applicant’s mark. We
have been given no evidence to support the argument. See
In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni, 219
USPQ 69, 70 (TTAB 1983) (assertions in briefs are not
evidence). See also In re Minnetonka, 212 USPQ 772, 777

16 Applicant’s Brief, p. 4.
Serial No. 78868409
10
(TTAB 1981) (determining whether a mark has acquired
distinctiveness is based on the facts as they exist and are
revealed by the evidence in the record at the time the
application is acted upon).
We are also not persuaded by applicant’s argument that
the Examining Attorney’s evidence is outdated or makes only
historical references to electric watches. First, the
excerpts from the websites are from 2006 and 2007 and the
newspaper articles retrieved from the LexisNexis database
include articles published in 2006, 2005 and 2004. In
addition, the websites show companies advertising for the
sale and repair of electric watches and the newspaper
articles show references by the authors to electric
watches.
Based on the evidence of record, we find that ELECTRIC
is merely descriptive of “watches and watch bands,” the
goods identified in the application, and that registration
therefore is barred by Trademark Act Section 2(e)(1).
Decision: The refusal to register is affirmed.