Nett Designs, Inc.

Trademark Trial and Appeal Board

Jun 3, 1999

No. 74677635 (T.T.A.B. Jun. 3, 1999)

Oral Hearing: Paper No. 22
July 7, 1998 GDH/gdh
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB JUNE 4, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nett Designs, Inc.
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Serial No. 74/677,635
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Paul M. Craig, Jr., Esq. for Nett Designs, Inc.
Tom Wellington, Trademark Examining Attorney,1 Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Nett Designs, Inc. has filed an application to register
the mark "LOAD LLAMA THE ULTIMATE BIKE RACK" and design, as shown
below,

1 Anthony R. Masiello, the Trademark Examining Attorney initially
assigned to this case, left the Patent and Trademark Office ("PTO")
prior to the oral hearing herein.
Ser. No. 74/677,635
2
for "carrying racks for mounting on bicycles, accessories for
bicycle racks, namely attachments for expanding the carrying
capacity of a carrying rack for mounting on bicycles, and bungee
cords sold together as a unit with such carrying racks".2
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant's refusal to comply with a requirement for a disclaimer
of the words "THE ULTIMATE BIKE RACK," which the Examining
Attorney maintains comprise a unitary laudatory phrase which is
merely descriptive of applicant's goods within the meaning of
Section 2(e) of the Trademark Act, 15 U.S.C. §1052(e).
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We affirm the disclaimer requirement.
Applicant, while conceding in its brief that the phrase
"THE ULTIMATE BIKE RACK" is suggestive of its goods, argues in
particular that the word "ULTIMATE" would not be perceived by the
purchasing public as a laudatorily descriptive term. Instead,
applicant insists that "the word 'ULTIMATE' is merely suggestive
because it requires the exercise of some imagination, thought or
perception in order to reach a conclusion, if at all, as to the
nature of ... applicant's goods". In support of such contention,
applicant asserts, although a copy thereof was not furnished,

2 Ser. No. 74/677,635, filed on May 19, 1995, which alleges dates of
first use of September 21, 1994. The words "BIKE RACK" are
disclaimed.
Ser. No. 74/677,635
3
that Webster’s New International Dictionary (2d ed.) sets forth
the following definition of the word "ultimate":
1. Farthest; most remote in space or time;
extreme; last; final; as, man’s ultimate
destiny. 2. Last in a train of progression
or consequences; tended toward by all that
proceeds; arrived at as the last result. 3.
Incapable of further analysis, division, or
separation; elemental; as an ultimate
particle or constituent; specif. chem.
elementary; as ultimate analysis. 4. Mech.
Maximum; as ultimate strain, strength, etc.
or that at the instant of breaking or
rupture.
Relying also upon copies, which it submitted, of its
advertising brochure and the United States patents granted to its
president for its bicycle racks, applicant insists that (footnote
omitted):
The mark is used with bicycle racks or
accessories to convert existing bicycle racks
to be expandable so as to carry all sorts of
items on the bicycle rack .... .... By the
use of the term "ULTIMATE", applicant thus
seeks to convey the meaning of a new product
with capabilities not possible heretofore,
i.e., with the use of unnamed novel
beneficial characteristics on which patents
have been granted, however, without giving
any indication whatsoever what those
characteristics are. Thus, the mark in issue
is at best suggestive ....
As such, applicant maintains that not only is a disclaimer of the
phrase "THE ULTIMATE BIKE RACK" in its mark not required, but
that "[i]f the Examiner’s position were correct, [then] the word
’ULTIMATE’ should not be registrable in any form whatsoever."
Applicant points out, however, as further support for
its contentions, that the Patent and Trademark Office has issued
a number of registrations on the Principal Register for marks
Ser. No. 74/677,635
4
which consist of or include the word "ULTIMATE". Copies of such
registrations, which include such marks as "THE ULTIMATE RIDING
EXPERIENCE" for "bicycles and structural parts thereof," "THE
ULTIMATE DRIVING MACHINE" for "automobiles" and "ULTIMATE" for
"roof-mounted bicycle racks for vehicles," have been made of
record by applicant.3 Applicant contends that the Examining
Attorney, in arguing that a disclaimer is proper because this
case involves use of "the term ’ULTIMATE’ in the context of other
language that is literally descriptive," while the third-party
registrations use such term "as a pure adjective, either alone or
with non-descriptive wording," is an "artificial distinction" and
thus "is fatally flawed".
The Examining Attorney, on the other hand, urges that
"the phrase THE ULTIMATE BIKE RACK is ’an unregistrable
component’ of the applicant’s mark, within the meaning of Section
6 of the Trademark Act, because such term is merely descriptive,
in a laudatory manner, with respect to the applicant’s goods".
Relying upon the definition of record from the Random House
Unabridged Dictionary, (2d ed. 1993) at 2050, which lists the
word "ultimate" as meaning, inter alia, "not to be improved upon
or surpassed; greatest; unsurpassed: the ultimate vacation spot;
the ultimate stupidity," the Examining Attorney argues that,
inasmuch as such word modifies the generic name for applicant’s

3 Of the third-party registrations, we note that only the registration
for the mark "THE ULTIMATE DRIVING MACHINE" for "automobiles" issued
under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f), and thus, absent a showing of acquired distinctiveness,
could be viewed as merely descriptive.
Ser. No. 74/677,635
5
goods, the literal meaning immediately conveyed by the phrase
"THE ULTIMATE BIKE RACK" is that (footnote omitted):
[A]pplicant’s bike racks are the greatest
bike racks available. To claim that one’s
goods are "greatest" and "unsurpassed" is
equivalent to the claim that they are the
best available goods, representing the
superlative degree of quality. The Board has
held that the word BEST is a merely laudatory
epithet describing the claimed quality of a
product and not entitled to trademark
protection in the absence of compelling proof
that it has acquired a ’secondary meaning’ to
the relevant public. In re Wileswood, Inc.,
201 USPQ 400 (TTAB 1978).
Thus, according to the Examining Attorney, "the slogan THE
ULTIMATE BIKE RACK is a claim of superiority to which every maker
of bicycle racks would like to aspire".
Moreover, the Examining Attorney points out that the
fact that applicant’s bicycle racks are of a patented design,
with novel features and capabilities previously unavailable in
such goods, does not mean that the word "ULTIMATE" in applicant’s
mark simply suggests the presence of certain advanced
characteristics. Instead, the Examining Attorney maintains that
when the word "ULTIMATE" is used in connection with any patented
product, including applicant’s goods, "the clear message conveyed
is that the product is unsurpassed in technical quality, i.e.,
that it is the best."
Finally, with respect to the third-party marks upon
which applicant relies, the Examining Attorney insists that the
registrations thereof are not inconsistent with the disclaimer
required in this case because, not only is the word "ULTIMATE"
Ser. No. 74/677,635
6
not used alone in applicant’s mark, but more significantly
(underlining in original):
As has been shown, the applicant’s slogan THE
ULTIMATE BIKE RACK is literally a claim that
the goods are of unsurpassed quality. None
of the ... [third-party] marks can be read in
this way, except THE ULTIMATE DRIVING MACHINE
... which, being descriptive, was registered
under Section 2(f) of the Trademark Act. The
other compound marks, when read literally,
describe not the ... goods but something else
.... These marks have an indirectness and a
suggestiveness that is lacking in applicant’s
slogan; [by contrast,] interpretation of
applicant’s slogan requires no imagination.
....
It is well settled that a term or phrase is considered
to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term or phrase describe
all of the properties or functions of the goods or services in
order for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term or phrase describes a
significant attribute or aspect about them. Moreover, whether a
term or phrase 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 or
is to be used in connection with those goods or services and the
possible significance that the term or phrase would have to the
Ser. No. 74/677,635
7
average purchaser of the goods or services because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
Classified within the category of merely descriptive
designations set forth above are those which Professor McCarthy
refers to as "self-laudatory terms". As explained in 2 J.
McCarthy, McCarthy on Trademarks & Unfair Competition §11.17 (4th
ed. 1999) (footnotes omitted):
Marks that are merely "laudatory" and
descriptive of the alleged merit of a product
are also regarded as being "descriptive."
This includes such terms as ... PREFERRED,
DELUXE, GOLD MEDAL, BLUE RIBBON, SUPER BUY,
and the like.
Since each tangible product carries with
it a "psychic load" of intangible consumer
psychological expectations about the product,
a mark could be "descriptive" of the product
itself or those intangible expectations, or
both. Self-laudatory or "puffing" marks are
regarded as a condensed form of describing
the character or quality of the goods. ....
In the present case, we agree with the Examining
Attorney that the phrase "THE ULTIMATE BIKE RACK" is merely
descriptive of the overall characteristics or quality of
applicant's carrying racks for mounting on bicycles. Such
phrase, therefore, must be disclaimed inasmuch as it immediately
conveys, without speculation or conjecture, that applicant's
goods are the greatest or unsurpassed, and hence the best of
their kind, in the sense of the sophistication and usefulness of
their features. We judicially notice, 4 in this regard, that The

4 Judicial notice may properly be taken of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
Ser. No. 74/677,635
8
American Heritage Dictionary of the English Language (3rd ed.
1992) defines the word "ultimate" as an adjective meaning, inter
alia, "3.a. Of the greatest possible size or significance;
maximum: Has the ultimate diamond been found? b. Representing
or exhibiting the greatest possible development or
sophistication: the ultimate bicycle. c. Utmost; extreme: the
ultimate insult." Similarly Webster’s New World College
Dictionary (3rd ed. 1997) lists such term as signifying, in
relevant part, "4 greatest or highest possible; maximum;
utmost". Applicant’s advertising brochure reflects such themes
by emphasizing that the highly developed and sophisticated
features of its goods provide a variety of advantages; that "The
’Load Llama The Ultimate Bike Rack’ allows users of bicycles
to enjoy the ride without constant apprehension that carried-
along objects may fall off the carrier"; and that, in essence,
"this is the rack, a basket without the bulk" (emphasis added).
Viewed in this context, consumers are bound to regard "THE
ULTIMATE BIKE RACK" as a laudatorily descriptive phrase which
touts the superiority of applicant’s carrying racks for mounting
on bicycles rather than simply suggesting, as urged by applicant,
that such goods are the latest thing or development.
With respect to the distinction urged by the Examining
Attorney between the propriety of the disclaimer requirement in
this case and the allowance of various third-party registrations,

F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/677,635
9
we tend to agree with applicant that such position is, indeed, a
somewhat "artificial distinction". Each case, however, must be
decided on its own merits and, while uniform treatment under the
Trademark Act is desirable, a merely descriptive phrase or term
is not made registrable simply because other similar (or arguably
so) marks appear on the register. See, e.g., In re Consolidated
Cigar Co., 35 USPQ2d 1290, 1295 (TTAB 1995) and cases cited
therein. Moreover, to the extent that the third-party
registrations have any probative value herein, it would seem that
the phrase "THE ULTIMATE BIKE RACK," when used in connection with
applicant’s goods, is most like the slogan "THE ULTIMATE DRIVING
MACHINE" for "automobiles," which as a merely descriptive phrase
was allowed to be registered only upon a showing of acquired
distinctiveness. Such phrases convey forthwith, in a laudatory
manner, that the products with which they are associated are of
unsurpassed quality and features and that the respective goods,
in short, are simply the greatest, best or most highly developed
of their kind.
Decision: The requirement for a disclaimer under
Section 6(a) is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant’s mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, amends
Ser. No. 74/677,635
10
its present disclaimer to one which appropriately disclaims the
phrase "THE ULTIMATE BIKE RACK".5
R. L. Simms
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board

5 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993). For the
proper format for a disclaimer, attention is directed to TMEP
§§1213.09(a)(i) and 1213.09(b).