Tuesday, October 07, 2008

TTAB Pulls Plug on "ELECTRIC" for Watches, Affirms 2(e)(1) Mere Descriptiveness Refusal

Well, here we are again with a candidate for our WYHA file (Would You Have Appealed?). The Board affirmed a Section 2(e)(1) refusal of the mark ELECTRIC for watches and watch bands, finding it merely descriptive of watches. Applicant Electric Visual Evolution argued that "the term 'electric' is not commonly used by the general public to describe a source of power for watches," but the PTO's evidence demonstrated otherwise. In re Electric Visual Evolution, LLC, Serial No. 78868409 (September 19, 2008) [not precedential].

Examining Attorney Simon Teng maintained that “[t]he word ‘electric’ immediately conveys to consumers that Applicant’s watches run on electricity.” Applicant argued 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.” According to Applicant:

"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, 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."

Unfortunately for Applicant, the PTO's website pages and news articles demonstrated that, time and again, the term "electric watch" is used to describe or name watches that are powered by electricity. Applicant's argument, on the other wrist, was unsupported by evidence.

The Board was also not persuaded by applicant’s assertion that the PTO evidence was "outdated or makes only historical references to electric watches." The website evidence was dated 2006 and 2007 and the newspaper articles were published in 2006, 2005 and 2004. Moreover, 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."

Because the mark ELECTRIC is descriptive as to watches, the Board was not required to consider whether it was descriptive of watch bands, because "registration is properly refused if the mark sought to be registered is descriptive of any of the goods."

Text Copyright John L. Welch 2008.


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