Light Effects, Inc.

Trademark Trial and Appeal Board

Aug 24, 2006

No. 76583583 (T.T.A.B. Aug. 24, 2006)

Mailed: August 24, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Light Effects, Inc.
___________

Serial No. 76583583
___________

Hillary A. Brooks of Marger Johnson & McCollum for Light
Effects, Inc.

Alison Holtz, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
____________

Before Hairston, Walters and Zervas, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Light Effects, Inc. filed an application to register on
the Principal Register the mark MOSIAC, in standard
character form, for “window coverings, namely, translucent
window film,” in International Class 17.1
The examining attorney issued a final refusal to
register under Section 2(e)(1) of the Trademark Act, 15

1 Serial No. 76583583, filed March 29, 2004, based on use in commerce,
alleging first use and use in commerce as of August 4, 2003.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76583583
2
U.S.C. §1052(e) on the ground that applicant’s mark is
merely descriptive of a characteristic or feature of
applicant’s identified goods.
Applicant has appealed and filed a main brief and reply
brief, but did not request an oral hearing. The examining
attorney also filed a brief.
The examining attorney contends that the mark is merely
descriptive because the goods feature a mosaic design. The
examining attorney included in the record a definition of
“mosaic” from The American Heritage Dictionary of the
English Language (3rd ed. 1992) as, inter alia, “noun, a
picture or decorative design made by setting small colored
pieces, as of stone or tile, into a surface,” and “verb, to
adorn with or as if with mosaic.” Additionally, the record
includes excerpts from two third-party websites offering
window films. One website, gilafilms.com, lists as
“Decorative Window Films” four types that are named “Prism,”
“Dogwood,” “Marble,” and “Mosaic,” which is described as
“simulat[ing] stained glass.”2 The other website,
decorativefilms.com, lists its many different “Decorative
Glass Enhancement & Privacy Films,” including one named
“Atlantis Mosaic,” which is described as “translucent

2 Applicant stated that the examining attorney mistakenly referred to
information from its competitor, Gila Films, as being an example of
applicant’s use. However, applicant stated that it inadvertently
submitted the Gila Film sample with its specimen of use. Therefore, we
have considered the submission in question as evidence of a third-party
use.
Serial No. 76583583
3
embossed vinyl film[;] prism-like facets scatter the light
making this privacy film look like colored glass ….” The
examining attorney also submitted excerpts from various
Internet websites advertising different products, each of
which uses the term “mosaic” to refer to the surface design
on the product, e.g., “faux mosaic fabric,” “blue mosaic
fabric shower curtain,” and “floral mosaic rug.”
Applicant contends that its mark is not merely
descriptive, arguing that its goods are not mosaics nor are
they made by a mosaic process; that even if its goods
resemble a mosaic, the mark is registrable because of the
many third-party registrations for marks including the term
“mosaic” for goods that are also not mosaics or made by a
mosaic process; and that consumers seeing the mark on the
goods must engage in a thought process to determine the
nature of applicant’s goods because “mosaic” can be either a
noun or a verb; that the mark is incongruous because mosaics
are generally made from stone or tile and are opaque,
whereas applicant’s product is translucent and the common
term for translucent window designs is “stained glass.”
Applicant makes the following statement (brief, p. 8):
[I]n addition to being a sheet rather than a
mosaic, and being made out of a contiguous film
rather than the process of mosaicing, applicant’s
window coverings do not resemble mosaic, insofar
as mosaic strongly suggests design and intentional
placement, while applicant’s specimen shows a
random cobblestone effect that fails to convey
either design or pattern. As such, applicant’s
Serial No. 76583583
4
specimen does not resemble mosaic, and as a result
MOSAIC does not immediately call to mind an
ingredient, characteristic or purpose of
applicant’s goods. [Italics in original.]

Applicant asks that the Board resolve doubt in favor of
applicant.
In support of its position, applicant submitted a
photocopy of a sample of its product and a photograph of its
product on a window; a copy of third-party Gila Film’s
product packaging, which includes a representation of Gila’s
window film named “Mosaic”; and the declaration of
applicant’s president, Tom Hicks, describing the nature of
its product, stating that it is not a mosaic for the reasons
noted above and stating that the pattern on its window film
is random and does not contain gaps as for grout. From the
Internet, applicant also submitted lists resulting from
Internet searches of stained glass products and businesses
producing stained glass; a Wikipedia entry for “mosaic”; a
definition from Merriam-Webster’s Online Dictionary of
“design” as “noun, 5a – an underlying scheme that governs
functioning, developing, or unfolding – PATTERN, MOTIF, 6 -
the arrangement of elements or details in a product or work
of art, 7 - a decorative pattern, 8 – the creative art of
executing aesthetic or functional designs, verb, 1 – to
create, fashion, execute, or construct according to plan”;
and excerpts from numerous websites pertaining to mosaic
art, such as photographs of mosaic tile floors and articles
Serial No. 76583583
5
about artists and crafts, such as kits for making mosaic
ceramic tile plates and other items.
Applicant submitted a long list of third-party
registration numbers and the respective registered marks,
each including the word “mosaic” as part thereof, and
identifications of goods or services. This is not the
proper form for submission of third-party registrations as
evidence. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2
(TTAB 1998). Accordingly, the third-party registrations
have not been considered in our determination of mere
descriptiveness. We hasten to add that the list of third-
party registrations, even if considered, would not compel a
different result in this case. First, we cannot give this
list much, if any, probative value because we have no
evidence of the status of any of the registrations or
whether any of them are registered on the Principal
Register, are subject to a claim of acquired
distinctiveness, or include any disclaimers. Second, we are
not bound by the USPTO’s allowance of prior registrations
which may have similar characteristics to applicant’s
application. In re Nett Designs Inc., 236 F.3d 1339, 57
USPq2d 1564, 1566 (Fed. Cir. 2001); and In re Best Software
Inc., 58 USPQ2d 1314 (TTAB 2001).
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
Serial No. 76583583
6
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
We agree with the examining attorney that MOSAIC is
merely descriptive of a significant characteristic of
applicant’s translucent window film, naming the design
applied to the window film. The evidence of record clearly
establishes that applicant’s goods are not mosaics as that
term is defined in the dictionary or as explained in several
of the Internet website excerpts. However, it is equally
clear from the record that the term “mosaic” is used in
Serial No. 76583583
7
connection with window films by applicant’s competitors, as
well as by manufacturers on a number of different types of
products that are not mosaics or made using a mosaic
process, to describe a particular type of design on the
window film and other products.
The mere fact that applicant’s product is not an actual
mosaic or made using a mosaic process is of no moment. It
is settled that a term which would be merely descriptive as
applied to the actual goods is deemed to be also merely
descriptive of goods which only simulate the actual goods.
For example, in In re Guylay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987), the court affirmed the Board’s decision
holding APPLE PIE to be merely descriptive of potpourri with
a simulated apple pie scent; it was not dispositive that the
potpourri’s scent was not derived from actual apple pie.
Likewise, in In re J & D Brauner, Inc., 173 USPQ 441 (TTAB
1972), the mark THE BUTCHER BLOCK was held to be merely
descriptive of “furniture for household use, namely, tables,
serving carts, kitchen counters and cabinet tops comprised
of protective decorative material, and desks,”
notwithstanding that the goods were not and would not be
mistaken for actual butcher blocks, but were instead merely
covered with a laminated decorative board designed to
simulate the appearance of a butcher’s block.
Serial No. 76583583
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Similarly, we are not convinced by applicant’s
additional arguments. In particular, there is nothing in
the record that limits actual mosaics to stone and tile or
materials that are opaque; and such a point is irrelevant
because we have acknowledged that we are concerned with a
design that resembles a mosaic, not an actual mosaic. Nor
does the record support a conclusion that applicant’s design
is more aptly described as having a “stained glass” design
than a “mosaic” design. The fact that stained glass may
also describe the design on applicant’s product is not a
question before us and, in view of the evidence in this
record, such a finding would not render MOSAIC an inherently
distinctive mark in connection with applicant’s product.
Finally, there is nothing in the record that limits mosaics
to carefully planned designs rather than random designs, or
that indicates purchasers of applicant’s product would
perceive such a distinction.
We conclude that when applied to applicant’s services,
the term MOSAIC immediately describes, without conjecture or
speculation, a significant feature or function of
applicant’s goods, namely the design of its translucent
window film. Contrary to applicant’s contention, nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
purchasers of and prospective customers for applicant’s
Serial No. 76583583
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services to readily perceive the merely descriptive
significance of the term MOSAIC as it pertains to the
identified goods.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.