The Place, Inc.

Trademark Trial and Appeal Board

Oct 18, 2005

No. 76436826 (T.T.A.B. Oct. 18, 2005)

Mailed:
Oct. 18, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Place, Inc.
________

Serial No. 76436826
_______

Thomas F. Dunn of Morse, Barnes-Brown & Pendleton, P.C. for
The Place, Inc.

Ann Kathleen Linnehan, Trademark Examining Attorney, Law
Office 114 (Margaret Le, Managing Attorney).
_______

Before Seeherman, Bucher and Grendel, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark THE GREATEST BAR (in standard character form)
for services recited in the application as “restaurant and
bar services.”1

1 Serial No. 76436826, filed on August 1, 2002. The application
is based on applicant’s allegation of its intent to use the mark
in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
THIS OPINION IS CITABLE
AS PRECEDENT OF THE
TTAB
Ser. No. 76436826
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register the mark on the ground
that it is merely descriptive of applicant’s services. See
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). The
appeal has been fully briefed. After careful consideration
of the evidence in the record and of the arguments of
counsel, 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
(CCPA 1978). Laudatory terms, those that attribute quality
or excellence to goods or services, generally are deemed to
be merely descriptive under Trademark Act Section 2(e)(1).
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001)(THE ULTIMATE BIKE RACK is “a laudatory
descriptive phrase that touts the superiority of Nett
Designs’ bike racks”); In re Boston Beer Co. L.P., 198 F.3d
1370, 53 USPQ2d 1056 (Fed. Cir. 1999)(THE BEST BEER IN
AMERICA for “beer and ale” found to be laudatory and
incapable of distinguishing source).
Ser. No. 76436826
3
In this case, we must determine whether THE GREATEST
BAR is laudatory and merely descriptive of applicant’s
“restaurant and bar services.” First, we find that the
definite article THE and the generic term BAR are not
distinctive terms, and they add no source-indicating
significance to the mark as a whole. Applicant does not
contend otherwise. Next, we find that the word GREATEST is
laudatory and merely descriptive, and that the mark as a
whole likewise is laudatory and merely descriptive.
We take judicial notice that “great” is defined, in
pertinent part, as “markedly superior in character or
quality to others of the same class.” Webster’s Third New
International Dictionary (1993) at page 994.2 The same
dictionary, at page 778, defines “-est” as “used to form
the superlative degree of adjectives and adverbs of one
syllable.” Although there is no dictionary definition of
the word “greatest” per se, we find that these dictionary
definitions of “great” and “-est” suffice to establish the
laudatory significance of the word “greatest” in the mark
THE GREATEST BAR as applied to applicant’s restaurant and

2 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); TBMP §704.12(a)(2d ed. rev. 2004).

Ser. No. 76436826
4
bar services.3 It immediately informs purchasers that
applicant’s restaurant and bar is “the greatest,” i.e.,
“markedly superior in character or quality” when compared
to other restaurants and bars.
We have considered applicant’s arguments to the
contrary, but are not persuaded. First, applicant argues
that the term GREATEST in its mark is not laudatory because
it merely suggests the “high quality,” “excellence,” or
“superior quality” of applicant’s services, and not any
feature or characteristic of the services. However, it is
those very connotations which make the term GREATEST
laudatory when considered in relation to applicant’s
services. In the cases cited by applicant in support of
its argument, the terms in question, i.e., SUPER, 100%, and
PLUS, are more vague and suggestive, in terms of laudation,
than is the term GREATEST in applicant’s mark. Moreover,
the terms PLUS and SUPER, cited by applicant as examples of
terms which have been held to be non-laudatory, have been
held in other cases to be laudatory and merely descriptive.
See Plus Products v. Plus Discount Foods, Inc., 722 F.2d
999, 222 USPQ 373 (2d Cir. 1983)(PLUS held to be

3 We note that in the Nett Designs case, supra, the court, in
finding ULTIMATE to be laudatory, noted that the dictionary
definitions of ULTIMATE include “representing or exhibiting the
greatest possible development or sophistication,” and “greatest
or highest possible.” (Emphasis added.)
Ser. No. 76436826
5
laudatory); and In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995)(SUPER BUY held to be laudatory).
Likewise, the courts of appeal and this Board have
held that other marks which arguably denote “high quality,”
“excellence” and “superior quality” are laudatory and thus
merely descriptive. These include the term ULTIMATE in In
re Nett Designs Inc., supra, and the term BEST in In Re
Boston Beer Co. LP, supra. See also In re Duvernoy & Sons,
Inc., 212 F.2d 202, 101 USPQ 288 (CCPA 1954)(CONSISTENTLY
SUPERIOR held laudatory); Supreme Wine Co. v. American
Distilling Co., 310 F.2d 888, 135 USPQ 481 (2d Cir.
1962)(SUPREME held laudatory); In re Dos Padres Inc., 49
USPQ2d 1860 (TTAB 1998)(QUESO QUESADILLA SUPREME held
laudatory); In re San Miguel Corp., 229 USPQ 617 (TTAB
1986)(SELECT and its equivalent SELECTA held laudatory); In
re Inter-State Oil Co., 219 USPQ 1229 (TTAB 1983)(PREFERRED
held laudatory); and In re Wileswood, Inc., 201 USPQ 400
(TTAB 1978)(AMERICA’S BEST POPCORN held laudatory). The
term GREATEST in applicant’s mark THE GREATEST BAR is as
laudatory, if not more so, than the marks involved in the
cases cited above.
Second, applicant has made of record printouts of
eight Principal Register registrations of marks which
include the term GREATEST, which are registered without
Ser. No. 76436826
6
disclaimers or under Section 2(f). Applicant argues that
these registrations show an Office practice of allowing
GREATEST marks to register. However, as expressly stated
by the court in In re Nett Designs, supra, 57 USPQ2d at
1566, “The Board must decide each case on its own merits. …
Even if some prior registrations had some characteristics
similar to Nett Designs’ application, the PTO’s allowance
of such prior registrations does not bind the Board or this
court.” (Internal citation omitted.)
In summary, we find that the term GREATEST in
applicant’s mark is laudatory and that the mark as a whole,
i.e., THE GREATEST BAR, likewise is laudatory and thus
merely descriptive. As noted above, the article THE and
the generic term BAR do not negate the laudatory nature of
GREATEST, and the mark as a whole is merely descriptive
because it directly conveys to customers and prospective
customers that applicant’s bar is the best.
Applicant next argues that even if the mark’s primary
significance is laudatory, the mark is not merely
descriptive because it is a double entendre, i.e., it has a
second meaning which is not merely descriptive of
applicant’s restaurant and bar services. That second
meaning, according to applicant, arises from the trade
dress, theme and motif to be used and displayed in the
Ser. No. 76436826
7
restaurant/bar itself, and in the promotion and
advertisement of the restaurant/bar which will focus on
that theme or motif. According to applicant, the trade
dress and promotion will suggest to purchasers “a
restaurant and bar room experience featuring the most
notable people, places, and events in the history of the
town in which the establishment is located.” (Applicant’s
main brief, at unnumbered page 4.)
For example, in the Boston establishment, the décor
and theme will focus on the “greatest” people, places and
events in Boston’s history, such as the Blizzard of ’78
(asserted to be the greatest snowstorm in Boston’s
history); Ted Williams (asserted to be the greatest hitter
in Boston baseball history); Aerosmith (asserted to be the
greatest rock and roll band from Boston); and John F.
Kennedy (asserted to be the greatest politician from
Boston). These are but a few examples of the assertedly
“greatest” Boston people, places and events applicant
features or plans to feature in its Boston establishment.
According to applicant, these “greatest” people,
places and events will be displayed and emphasized by means
of video vignettes which will play in the establishment, by
original artwork, by menu selections featuring dishes from
the greatest area chefs, by customer voting on the greatest
Ser. No. 76436826
8
local story of the week, by in-house television programming
featuring the greatest moments in the restaurant and bar,
and by the sale of merchandise featuring the greatest
people, places and events of Boston. In addition to these
“thematic devices” which highlight the “greatest” moments,
people and events of Boston, applicant asserts that the
mark THE GREATEST BAR will be accompanied, in applicant’s
promotional materials, by the tagline “A Celebration of the
Greatest People, Places, Moments and Events that Make
Boston Legendary.” Applicant argues that its mark THE
GREATEST BAR, when viewed in the context in which
purchasers will encounter it in the marketplace, i.e., in
connection with applicant’s trade dress and promotional
materials, evokes a double meaning that purchasers will
readily appreciate, and that the mark therefore is
registerable as a double entendre.
We are not persuaded. We need not reach the issue of
whether this alleged second meaning of the mark THE
GREATEST BAR is itself merely descriptive of a
restaurant/bar which features, by its trade dress, theme
and motif, the “greatest” elements of the city in which the
restaurant/bar is located. This is because we disagree
with applicant’s premise, i.e., its contention that the
Ser. No. 76436826
9
alleged second meaning of THE GREATEST BAR will be readily
perceived by purchasers.
“Double entendre” is defined as “ambiguity of meaning
arising from language that lends itself to more than one
interpretation.” Webster’s Third New International
Dictionary (1993) at p. 678. As stated in TMEP
§1213.05(c), “A ‘double entendre’ is a word or expression
capable of more than one interpretation. For trademark
purposes, a ‘double entendre’ is an expression that has a
double connotation or significance as applied to the goods
or services. … The multiple interpretations that make an
expression a ‘double entendre’ must be associations that
the public would make fairly readily.”
A mark thus is deemed to be a double entendre only if
both meanings are readily apparent from the mark itself.
If the alleged second meaning of the mark is apparent to
purchasers only after they view the mark in the context of
the applicant’s trade dress, advertising materials or other
matter separate from the mark itself, then the mark is not
a double entendre. See In re Wells Fargo & Company, 231
USPQ 95 (TTAB 1986).
In Wells Fargo, the applicant was attempting to
register the mark EXPRESSERVICE for “banking and trust
services.” The Board found that EXPRESSERVICE was
Ser. No. 76436826
10
equivalent to EXPRESS SERVICE, and held that the mark was
merely descriptive of a characteristic of the applicant’s
services, i.e., that the services are “fast in the sense of
saving time for banking customers.” Applicant noted,
however, that its EXPRESSERVICE mark always was used in
connection with its primary mark WELLS FARGO, and with
marketing brochures and other materials that depicted a
stagecoach and an “Old West” theme. Applicant, citing some
of the same cases cited by applicant in the present case,
argued that EXPRESSERVICE therefore was a double entendre
because it evoked “another reminiscent or associative
connotation, namely the historical connotation with
applicant’s predecessor which was extensively involved in
the Old West” and, in particular, the Pony Express. The
Board rejected the applicant’s “double entendre” argument:

There is, of course, no reasonable doubt … that
the name Wells Fargo and/or the depiction of a
stagecoach long associated with that name,
conjure up images associated with the Old West.
It is also quite clear that among these images
are the “Pony Express” and the fact that Wells
Fargo had a significant historical relationship
with that service and generally with the
“express” business during the years following
the California Gold Rush in 1848 and continued
to be active in this field until World War I.
However, we are also persuaded by the evidence
that consumers associate “Express Service” with
this Old West imagery only when the term is
used in association with the Wells Fargo name
Ser. No. 76436826
11
or with one of its allied marks (e.g., the
stagecoach design).

The Board also noted:

In its reply brief, appellant contends by way
of rebuttal that we are obliged to consider the
issue before us in relation to the context of
its use of EXPRESSERVICE, … and that that
context includes the name Wells Fargo and the
depiction of a stagecoach in an Old West
setting. Thus, appellant argues that in the
context of its use (i.e., in close association
with the name Wells Fargo and the depiction of
a stagecoach), as well as the continuing
references to the word “express” in connection
with Wells Fargo’s historical foundation,4
EXPRESSERVICE is bound to convey the Old West
imagery, thereby supporting the proposition
that appellant’s mark is suggestive rather than
descriptive.

The Board rejected this argument:

The well established rule that descriptiveness
issues must be analyzed in relation to the
context of use does not and cannot, obviously,
mean that descriptiveness of the term sought to
be registered must be evaluated as if that term
were used in association with other
nondescriptive indicia. In re Nash-Finch Co.,
160 USPQ 210 (TTAB 1968)[“The question is not
whether the subject matter in association with

4 Footnote 21 in the Board’s Wells Fargo opinion, in pertinent
part, states as follows: “For example, on page 16 of Exhibit H,
a sign reading ‘Wells Fargo & Co. EXPRESS’ is painted on the
window of a room at appellant’s San Francisco head office in
which a collection of Old West memorabilia, including a Wells
Fargo & Co. Overland Stage Coach is housed for public display.”
We note that applicant in the present case also relies on its
public display of “Boston” memorabilia and artwork in support of
its “double entendre” argument.

Ser. No. 76436826
12
other trademarks is capable of distinguishing
applicant’s goods but whether it is capable of
distinguishing applicant’s goods without
reference to other indicia.]

We have quoted extensively from the Wells Fargo case
because applicant in the present case makes many of the
same arguments that were rejected by the Board in Wells
Fargo, and because the holding of that case with respect to
the double entendre issue is directly relevant to our
decision herein: A mark is not a double entendre if the
second meaning is grasped by purchasers only when the mark
is used with “other indicia,” even if that other indicia is
itself not merely descriptive. In its main brief,
applicant has described the manner in which its purchasers
will encounter and then ascertain the second meaning of the
alleged double entendre as follows:

Contrary to the assertion by the Examining
Attorney that there is “no guesswork,” the
connection between THE GREATEST BAR and the
“greatest” people, places and events in the
history of a city is not immediately conveyed
to a prospective purchaser upon encountering
the services, i.e., upon seeing and entering
the applicant’s establishment. Consider the
manner in which the services are encountered
under the mark: the typical prospective
purchaser is one in search of food and drink
who, while walking the streets of a city such
as Boston, sees the applicant’s establishment.
There is nothing about the name of the
establishment THE GREATEST BAR that would
immediately convey to that purchaser that he or
she should expect to encounter services that
Ser. No. 76436826
13
are unique other than as to their high quality;
there is nothing about the manner in which this
encounter occurs that immediately conveys that
THE GREATEST BAR touts the “greatest” people,
places and events of that particular city.
Upon entering the applicant’s establishment,
the prospective purchaser might first pass by,
for example, a picture of Fenway Park captioned
as “the nation’s oldest and greatest ballpark.”
Even at this stage, however, the connection
between the seemingly random phrase “the
greatest ballpark” and applicant’s mark is not
immediately conveyed. Rather, only after
encountering the mark from the street, and once
inside encountering the reference to Fenway as
the “greatest ballpark,” and then encountering
the reference to Aerosmith as “Boston’s
greatest rock band” and perhaps then
encountering the reference to the Blizzard of
’78 as the “region’s greatest snowstorm” would
the light bulb go off and the average purchaser
say to himself or herself, “Oh, I get it.”
That perception, thought and imagination – that
“Aha!” moment, differentiates a merely
descriptive mark from a suggestive one, and
distinguishes the GREATEST BAR as a
registerable double entendre.

Applicant makes this argument in order to rebut the
Trademark Examining Attorney’s contention that even this
asserted second meaning of the mark THE GREATEST BAR is
merely descriptive of applicant’s restaurant/bar services.5
However, this description of the manner in which

5 As noted above, we need not and do not reach the issue of
whether the second meaning of applicant’s mark is merely
descriptive or instead is suggestive. What matters is that the
mark’s primary significance is merely laudatory, and that the
second meaning of “greatest” claimed by applicant would not be
“fairly readily” appreciated by purchasers, a fact which
precludes a finding that the mark is a double entendre.

Ser. No. 76436826
14
prospective purchasers will encounter the mark and
understand its “second meaning” is highly relevant to our
determination of the double entendre issue, i.e., whether
the second meaning of the mark will be “fairly readily”
understood by purchasers. It appears from applicant’s own
contention as to how purchasers will come to understand the
asserted second meaning of applicant’s mark that the double
entendre will not be “fairly readily” ascertained by
purchasers. Instead, it is only in the context of what the
Board in Wells Fargo called “other indicia” surrounding use
of the mark, e.g., the Boston-themed memorabilia and
artwork on the walls of the establishment, that the double
entendre will be understood by purchasers. The alleged
double entendre does not inhere in the language of the mark
itself; the mark therefore is not a double entendre.
We also note that although applicant’s intention
and/or current practice is to use its “greatest” theme and
motif in its restaurant/bars, the recitation of services in
the application is not limited to such use. Under the
terms of the registration applicant seeks, applicant would
be free to change the “greatest” theme and motif at any
time, and thus find itself to be the owner of what is the
laudatory and merely descriptive mark THE GREATEST BAR.
Ser. No. 76436826
15
The Board addressed this issue in the Wells Fargo case as
follows:

Another way of looking at it is that since the
other concededly registerable indicia are not
part of the matter sought to be registered, the
presumed right to exclude others from using
EXPRESSERVICE which would be accorded appellant
by registration of that term is not limited to
its use in association with Wells Fargo and/or
the stage coach design. Consequently, the
effect of these other indicia on consumer
perceptions cannot be considered in our
determination whether its registration would be
contrary to the provisions of Section 2(e)(1).

Finally, we find that this case is distinguishable
from the double entendre cases relied upon by applicant,
because in those cases the double entendre was apparent on
the face of the mark itself. For example, in In re
Colonial Stores Inc., 394 F.3d 549, 157 USPQ 382 (CCPA
1968), the court found that the mark SUGAR & SPICE for
bakery products was a double entendre, because it
immediately connoted both the ingredients of the bakery
products and the well-known nursery rhyme phrase “sugar &
spice and everything nice.” In In re National Tea Co., 144
USPQ 286 (TTAB 1965), the Board held that the mark NO BONES
ABOUT IT for ham immediately connoted both the fact that
the ham was boneless and the commonly used phrase “no bones
about it.” Other examples of cases in which the marks were
Ser. No. 76436826
16
found to be double entendres are In re Happy Baby Carrier
Company, 179 USPQ 864 (TTAB 1973)(NAPSACK a double entendre
as applied to baby carriers); and In re Horsman Dolls Inc.,
185 USPQ 639 (TTAB 1975)(CRY BABY a double entendre as
applied to dolls that “cry real tears”).
In summary, and for the reasons discussed above, we
find that applicant’s mark THE GREATEST BAR is not a double
entendre. Instead, we find that it is a laudatory and
merely descriptive mark as used in connection with the
services recited in the application, i.e. “restaurant and
bar services.” We have carefully considered all of
applicant’s arguments to the contrary (including those not
specifically mentioned herein), but are not persuaded. We
conclude, without doubt, that applicant’s mark is merely
descriptive, and that it therefore is barred from
registration under Trademark Act Section 2(e)(1).
Decision: The refusal to register is affirmed.