Electric Art, Inc.

Trademark Trial and Appeal Board

Jul 31, 2006

No. 76604925 (T.T.A.B. Jul. 31, 2006)

Mailed:
July 31, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Electric Art, Inc.
________

Serial No. 76604925
_______

Jacqueline L. Patt of Venable LLP for Electric Art, Inc.

Tracy L. Fletcher, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Grendel, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark ELECTRIC ART (in standard character form) for
goods and services identified in the application as
“graphic art prints and reproductions” in Class 16, and
“on-line retailing and wholesale distributorship services,
catalog mail order services and telephone order services,
all in the field of graphic art prints and reproductions
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76604925
2
and sculptures” in Class 35.1 Applicant has disclaimed the
exclusive right to use ART apart from the mark as shown.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that it is merely descriptive of the goods and
services. Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1).
Applicant and the Trademark Examining Attorney have
filed main appeal briefs. Applicant did not file a reply
brief and did not request an oral hearing. We affirm the
refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
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

1 Serial No. 76604925, filed November 10, 2005. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). As to the Class 16 goods, 1990 is alleged as
the date of first use anywhere and the date of first use in
commerce. As to the Class 35 services, 1998 is alleged as the
date of first use anywhere and the date of first use in commerce.

Ser. No. 76604925
3
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
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).
Ser. No. 76604925
4
Applicant’s specimens of use include a
brochure/catalog entitled “ELECTRIC ART – Framed Art
Decorated with Special Lighting Effects.” Inside the
brochure, under the heading “SPECIAL LIGHTING EFFECTS,” the
following text appears:

In addition to the World’s largest selection
of Neon Art Pictures, Electric Art also creates
wall art highlighted with miniature incandescent
lights, fiber-optics and L.E.D.s (i.e. light
emitting diodes).
Enhancing images with light in this way
creates a realistic and captivating composite
effect – adding a touch of warmth & elegance to
any room at home or business. Each illuminated
artwork is framed in a decorative glossy or matte
black picture frame and comes with a standard
110v AC plug-in wall adapter. Foreign adapters
for use in other countries are also available.
This catalog features 50 of our most popular
images.

One of applicant’s prints (entitled BRASSAI) is described
in the brochure as follows:

Electric Art features this classic print with
actual miniature incandescent light bulbs
inserted into the picture face. The light bulb
enhancements bring the image to life with a
unique chemistry unlike any other art form. Each
bulb screws in and is easily replaced.

Another of applicant’s specimens is a product
instruction sheet, which includes the following text:
“Operation: Plug wall adapter power-supply into jack on
Ser. No. 76604925
5
back of picture and any standard household electrical wall
outlet. Turn ON and OFF using push button switch on bottom
side of frame. Always turn picture off at night or when
left unattended.”
The record includes dictionary definitions of
“electric” and “art” from The American Heritage Dictionary
of the English Language (3d ed. 1992), submitted by the
Trademark Examining Attorney. “Electric” is defined in
pertinent part as “of, relating to, or operated by
electricity: electric current; an electrical appliance”;
other listed definitions are “emotionally exciting;
thrilling: gave an electric reading of the play,” and
“exceptionally tense; highly charged with emotion: an
atmosphere electric with suspicion.” “Art” is defined in
pertinent part as “the conscious production or arrangement
of sounds, colors, forms, movements, or other elements in a
manner that affects the sense of beauty, specifically the
production of the beautiful in a graphic or plastic
medium.”
Applicant has disclaimed ART apart from the mark as
shown, and does not dispute its mere descriptiveness. We
find that the dictionary definition quoted above clearly
establishes the mere descriptiveness (and indeed
Ser. No. 76604925
6
genericness) of ART as applied to applicant’s goods and
services.
However, applicant contests the Trademark Examining
Attorney’s contention that ELECTRIC, and the composite
ELECTRIC ART, are merely descriptive of applicant’s goods
and services. Applicant makes three arguments in this
regard.
First, applicant argues that even as to the definition
of “electric” which reads “of, relating to, or operated by
electricity: electric current; an electrical appliance,”

the term ELECTRIC does not describe ART as the
term ELECTRIC would describe APPLIANCE in the
example provided by the dictionary definition.
If Applicant’s mark were LIGHT ART, the term
LIGHT might describe some of the artistic
elements used in the goods provided by Applicant;
and some of the evidence provided by the
Examining Attorney might support the
descriptiveness of the mark LIGHT ART.

We are not persuaded by this argument. It is clear from
applicant’s specimens that applicant’s artworks utilize and
prominently feature electricity. They are meant to be
plugged in, and turned on and off, just like an electric
appliance. That the electricity takes the form of or is
displayed as decorative light effects in the artworks does
not diminish the mere descriptive significance of ELECTRIC
as applied to the artworks.
Ser. No. 76604925
7
Second, applicant argues that the record shows that
the word “electric” has other definitions, i.e.,
“emotionally exciting; thrilling: gave an electric reading
of the play,” and “exceptionally tense; highly charged with
emotion: an atmosphere electric with suspicion.” Applicant
contends that the term “electric,” when combined with other
terms, may create an impression other than that of
“operated by electricity.”

For example, when the term ELECTRIC is combined
with a common term for a line dance, the SLIDE,
the combination ELECTRIC SLIDE does not
immediately call to mind something operated by
electricity. Rather, the impression is of fun
and excitement. To be sure, as stated in the
ELECTRIC SLIDE by the artist Grandmaster Slice,
“You can’t see it, It’s electric!, You gotta feel
it, It’s electric!, Ooh, it’s shakin’ It’s
electric!”

Given this other meaning of “electric,” applicant argues,
the term ELECTRIC ART does not signify merely “art operated
by electricity,” but rather it creates a double entendre:
“In this case, the term ELECTRIC when combined with the
term ART as applied to Applicant’s goods and services gives
the impression of art that is fun, exciting or even
whimsical.”
We are not persuaded by this argument. For a
designation to be deemed a double entendre, both alleged
Ser. No. 76604925
8
meanings must be readily apparent and readily perceived by
purchasers. See In re The Place, Inc., 76 USPQ2d 1467
(TTAB 2005); In re Wells Fargo & Co., 231 USPQ 95 (TTAB
1986). We find that the second meaning of “electric art”
suggested by applicant simply is too nebulous and obscure
to be readily perceived by purchasers encountering
applicant’s artwork products. Instead, given the
electrical nature of applicant’s artworks, we find that the
only readily perceived meaning of “electric art” as applied
to applicant’s goods and services would be that of “art
operated by electricity.”
Applicant’s third argument regarding the meanings of
the words “electric” and “art” is somewhat of a combination
of the first two arguments. Applicant contends that even
if the words considered separately are merely descriptive
of applicant’s goods and services, the composite of the two
words is incongruous and therefore distinctive:

...their combination creates a fanciful mark
which is not merely descriptive. Art is not the
typical product that an average customer would
expect to be electrified; therefore the combined
terms are incongruous. When a customer encounters
the term ELECTRIC ART, the customer must enter
into a multistage reasoning process to determine
what attributes of the goods or services the mark
indicates. As such, the term ELECTRIC does not
immediately call to mind a feature of the goods
or services, but rather the combination of the
terms ELECTRIC ART as applied to Applicant’s
Ser. No. 76604925
9
goods and services gives the impression of art
that is fun, exciting or even whimsical.”

We are not persuaded by this argument. As discussed above,
a prominent feature of applicant’s artwork products (and
presumably those of applicant’s competitors), indeed
perhaps the prominent feature, is their electrification.
The words “electric” and “art” directly and immediately
describe artworks that utilize electricity to enhance their
decorative or artistic effect. Moreover, the evidence of
record establishes that purchasers would perceive nothing
incongruous about the term ELECTRIC ART as applied to
artworks which utilize or employ electricity. The record
includes excerpts of articles obtained from the NEXIS
database, and printouts of Internet webpages, submitted by
the Trademark Examining Attorney. Certain of these
excerpts, along with applicant’s arguments and our findings
with respect thereto, are as follows.
(1) From the website of the Museum of Neon Art (MONA),
in Los Angeles, California - text includes (emphasis
added):

Statement of Purpose: The Museum of Neon Art is a
non-profit, cultural and educational organization
which exhibits, documents and preserves
contemporary fine art in electric media and
outstanding examples of neon signs. ... MONA
conducts night time bus tours of neon signs,
Ser. No. 76604925
10
movie marquees and permanent installations of
contemporary neon art in the city. ...
Highlights & Collections: Neon, electric and
kinetic fine art; permanent collection of
historic neon signs and fine art in electric
media. ... Mission Statement – The Museum of
Neon Art (MONA) was founded to exhibit fine art
in electric and kinetic media; to document,
preserve, restore and collect outstanding
examples of neon signs; and to educate the public
about the cultural, historical, aesthetic and
technical aspects of electric art. MONA acts as
a forum and a catalyst for persons interested in
exploring, enjoying and producing artwork which
uses light and/or motion as its expressive
language.

Applicant acknowledges in its brief that this Internet
webpage “could arguably show the term ‘electric art’ as
describing a type of art.” We agree, and find as well that
its references to, e.g., “fine art in electric media” are
evidence of the mere descriptiveness of “electric art.”
(2) From The San Francisco Chronicle, November 23,
2003 (emphasis added):

...Neon signs weren’t invented in Los Angeles
(Paris gets credit), but in the 1920s and ‘30s
they were embraced here as if they had been. The
small but fun Museum of Neon Art pays tribute to
neon and other electric art, both historic and
contemporary. You’ll find the neon sign from the
original Brown Derby restaurant, some fascinating
modern creations and a current display of Los
Angeles streetlights from the late 1920s and
early 1930s.

Ser. No. 76604925
11
Applicant has submitted the July 29, 2005 declaration of
its Marketing Director, Jay Andre, who declares, inter
alia, that he spoke with the author of this San Francisco
Chronicle article, John Flinn, on July 5, 2005. “Mr. Flinn
informed me that he spontaneously made up the expression
‘electric art’ which appeared in his article as part of an
effort to be creative for his readers. He also informed me
that he does not believe the term ‘electric art’ is a
common term.” Attached to the Jay Andre declaration is a
July 6, 2005 letter from Mr. Flinn which reads: “To whom it
may concern – The phrase I used in my article of Nov. 23,
2003, ‘electric art,’ is just something that popped into my
mind. I don’t believe it is in common use.” However, we
do not find Mr. Flinn’s statements to be particularly
credible, in light of the fact that the institution about
which he is writing, the Museum of Neon Art, itself uses
the term “electric art” generically on its website to
describe the subject matter of its exhibits. See website
excerpt infra. Moreover, notwithstanding the article’s
author’s subsequent statement of his intention and his
understanding as to the meaning of the term “electric art,”
it is clear that the term appears in the article (as it
does on the museum’s website) as a merely descriptive or
even generic designation. The article’s readers would not
Ser. No. 76604925
12
be privy to the author’s intention; they would have seen
only the face of the article and its descriptive or generic
use of the term “electric art.”
(3) From The San Diego Union-Tribune, November 23,
2003 (emphasis added):

...Resort Superstore is holding its grand opening
at 2500 Vista Way from 11 a.m. to 6 p.m. today.
The store carries game tables, billiards, spas,
barbecue islands, waterfalls, patio furniture and
electric art.

In his declaration, Jay Andre states that “The Resort
Superstore mentioned in the article is an authorized dealer
of Electric Art, Inc. which is reselling applicant’s
products under the ELECTRIC ART trademark.” However,
regardless of whether The Resort Superstore is an
authorized dealer of applicant’s, the manner in which
“electric art” is used in this article, and the manner in
which it would be perceived by readers, is clearly
descriptive or even generic. It appears in lower case
letters as part of a list of generic products carried by
the store, along with “game tables, billiards, spas,
barbecue islands, waterfalls, patio furniture.”
(3) From the Toledo Blade (Ohio), June 2, 2005
(emphasis added):

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13
American Gallery, 6600 Sylvania Ave., Sylvania,
presents Dream in Neon, an exhibition presenting
the new work of Philip Hazard. On display will
be electric pop art, neon, and mixed-media
collage painting.

In its appeal brief, applicant argues that this excerpt
does not support the mere descriptiveness refusal. We
disagree. Although the term used in the article is
“electric pop art” rather than “electric art,” we find that
it nonetheless is probative evidence of the descriptiveness
of “electric” when used in connection with “art.” Exact
usage of the term in question is not required, because the
issue in this case is not genericness, but rather is mere
descriptiveness.
(4) From the website of PoolDawg.com (emphasis added):

Pool Dawg :: Pool Accessories :: Game Room
Accessories :: Electric Art – Framed Art
Decorated with Special Lighting Effects.

In his declaration, Jay Andre states that “PoolDawg.com is
an authorized dealer of Electric Art, Inc. and sells
applicant’s products under the ELECTRIC ART trademark.”
However, the manner of use of “Electric Art” on this
website clearly is descriptive if not generic; “Electric
Art” is presented as a product category, along with “Pool
Accessories” and “Game Room Accessories.”
Ser. No. 76604925
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(5) From the website of Zenithgallery.com – the resume
of Philip Hazard, “an internationally recognized artist
working with neon since 1975.” Text includes (emphasis
added):

[He describes his work as] “an assemblage of
electric pop-art neon and mixed media collage-
painting.” ... His custom commercial neon art
has been displayed in Bloomingdales... [One of
his exhibitions (appearing in 1986 in Montgomery,
AL, Tulsa, OK, Pittsburgh, PA and Pontiac, MI)
was entitled] “Electric Art” – Neon Art National
Tour.

In its brief, applicant argues with respect to this excerpt
that “the Artist uses the term NEON ART as the term to
describe his art pieces..., and the term “Electric Art” as
a suggestive trademark for his exhibit.” We disagree, and
find instead that the artist uses “Electric Art” to
describe the subject matter of his show. Moreover, the
reference to “electric pop-art” supports a finding of mere
descriptiveness of “electric” as used in connection with
“art.”
Based on this evidence, as well as the dictionary
definitions of record and also applicant’s own specimens,
we find that ELECTRIC ART merely describes a key feature or
characteristic of applicant’s goods. There is nothing
incongruous or ambiguous about the designation; instead, it
Ser. No. 76604925
15
immediately and directly informs purchasers that
applicant’s artworks utilize electricity to create their
artistic or decorative effects. The mark therefore is
merely descriptive and unregistrable on the Principal
Register.

Decision: The refusal to register is affirmed.