Best Software, Inc.

Trademark Trial and Appeal Board

Feb 28, 2001

No. 75457126 (T.T.A.B. Feb. 28, 2001)

2/28/01 Paper No. 16
RLS/krd
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Best Software, Inc.
________
Serial Nos. 75/457,125 and
75/457,126
_______
Leesa N. Weiss of Jacobson, Price, Holman & Stern, PLLC for
Best Software, Inc.
Carol A. Spils, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______
Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Best Software, Inc. (applicant), a Virginia
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark BEST!
SUPPORTPLUS PREMIER for membership services in the nature
of providing computer software consultation; and computer
consultation and support services, namely, providing
upgrades of finance, tax, accounting, budget, human
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/457,125 and 75/457,126
2
resource, payroll, and asset management computer software.1
In application Serial No. 75/457,126, applicant seeks to
register the mark BEST! SUPPORTPLUS for the same services.
In both cases, the Examining Attorney has required
disclaimers of the word “BEST” and, in connection with the
'125 application, the word “PREMIER”. Applicant and the
Examining Attorney have submitted briefs but no oral
hearing was requested. Because we have consolidated the
appeals in the above-identified applications, and because
the same issue is involved in both appeals, we hereby issue
a single opinion.
Arguing that the words “BEST” and “PREMIER” in
applicant’s marks are merely descriptive because they are
laudatory terms which attribute quality or excellence to
applicant’s services, the Examining Attorney has required
disclaimers of these words under Section 6(a) of the Act,
15 USC § 1056(a).2 See TMEP § 1213.02(a). The Examining
Attorney argues that the exclamatory presentation of the
1 Application Serial No. 75/457,125, filed March 26, 1998,
based upon applicant’s bona fide intention to use the mark
in commerce. Companion Application Serial No. 75/457,126
was filed the same day and is also based on applicant’s
bona fide intention to use the mark in commerce.
2 That section provides:
The Director may require the applicant to disclaim
an unregistrable component of a mark otherwise
registrable. An applicant may voluntarily disclaim a
component of a mark sought to be registered.
Ser. Nos. 75/457,125 and 75/457,126
3
word “BEST!” in applicant’s marks reinforces the laudatory
nature of this word. The Examining Attorney also notes
that the word “BEST” is disclaimed in a registration which
applicant claimed in its original applications
(Registration No. 1,374,606, issued December 10, 1985,
covering the mark “BP BEST PROGRAMS ‘The Quality Software
Company’”). In that registration, along with other words,
applicant disclaimed the exclusive right to use “BEST
PROGRAMS” apart from the mark. With respect to the word
“PREMIER,” the Examining Attorney maintains that this word
is descriptive because it indicates that this is the best
of applicant’s service packages. The Examining Attorney
has relied upon dictionary definitions of the terms “best”
(“surpassing all others in excellence, achievement, or
quality; most excellent”) and “premier” (“first in status
or importance”), and numerous third-party registrations
wherein these words have been disclaimed. The Examining
Attorney has also relied upon cases such as In re Boston
Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed.
Cir. 1999) (“The Best Beer in America” found to be so
highly laudatory and descriptive of the qualities of
applicant’s product that the slogan did not and could not
function as a trademark to distinguish applicant’s goods
and serve as an indication of origin), and In re Wileswood,
Ser. Nos. 75/457,125 and 75/457,126
4
Inc., 201 USPQ 400 (TTAB 1978) (“America’s Best Popcorn!”
held to be a laudatory phrase merely describing the
qualities of applicant’s goods). To these we would add the
recent cases of In re Nett Designs, Inc., ___ USPQ2d ____,
Appeal No. 00-1075 (Fed. Cir. January 9, 2001)(“The
Ultimate Bike Rack” held to be a “laudatory descriptive
phrase”) and The Hoover Co. v. Royal Appliance Mg. Co., ___
USPQ2d ____, Appeal No. 00-1219 (Fed. Cir. Jan. 31,
2001)(“Number One in Floorcare” held a “generally laudatory
phrase, and thus… not inherently distinctive”).
While arguing that the words sought to be disclaimed
by the Examining Attorney are not used to describe any
characteristic or quality of applicant’s services (brief,
8), applicant argues essentially that its ownership of a
registration of the mark BEST! (Registration No. 1,911,151,
issued August 15, 1995, combined Sections 8 and 15
affidavit or declaration apparently filed) wherein there
was no disclaimer of this word or any claim of acquired
distinctiveness, precludes the Examining Attorney from
requiring a disclaimer under Section 6 of the Act. In this
regard, applicant argues that under Section 7(b) of the
Ser. Nos. 75/457,125 and 75/457,126
5
Act, 15 USC § 1057(b),3 this registration, which covers
computer consultation services among other goods and
services, is prima facie evidence of its exclusive right to
use this registered mark in connection with its services.
This registration, according to applicant, shows that the
Office has found this mark to be inherently distinctive of
its services. According to applicant, the statutorily
mandated evidentiary presumption is binding upon the Office
and the Examining Attorney’s requirement for a disclaimer
violates applicant’s exclusive rights conferred by statute.
With respect to the Examining Attorney’s reference to
another one of applicant’s registrations containing a
disclaimer, applicant argues that that registered mark does
not display the mark in the manner herein sought to be
registered. Applicant has also made of record third-party
registrations which contain the word PREMIER or variations
thereof which have been registered without a disclaimer of
that word or any claim of acquired distinctiveness under
3 That section provides:
A certificate of registration of a mark upon the
principal register provided by this Act shall be prima
facie evidence of the validity of the registered mark
and of the registration of the mark, of the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered
mark in commerce on or in connection with the goods or
services specified in the certificate, subject to any
conditions or limitations stated in the certificate.
Ser. Nos. 75/457,125 and 75/457,126
6
Section 2(f) of the Act. With respect to the cases cited
by the Examining Attorney, applicant argues that they did
not involve an applicant which claimed ownership of a prior
registration.4
In response to applicant’s reliance upon its
Registration No. 1,911,151, the Examining Attorney argues
that previous decisions by Examining Attorneys are without
evidentiary value and are not binding on the Office or the
Board, and that a mark which is merely descriptive may not
be registered just because similar marks appear on the
register. Likewise, according to the Examining Attorney,
descriptive words must be disclaimed despite the existence
of other marks on the register with the same wording which
is not disclaimed.
We believe the Examining Attorney’s contentions with
regard to the third-party registrations are correct. Each
application for registration of a mark for particular goods
or services must be separately evaluated. In re Owens-
Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417,
424 (Fed. Cir. 1985). We do not know what records were
4 In applicant’s appeal brief, which apparently crossed in the
mail with the Board’s decision of April 14, 2000, applicant
raised certain objections to the Examining Attorney’s evidence
submitted in response to applicant’s request for reconsideration.
Inasmuch as the Board has already ruled upon those objections in
the April 14 order, these objections need not be further
considered.
Ser. Nos. 75/457,125 and 75/457,126
7
before the Examining Attorneys in other cases. Thus, there
is little persuasive value in the third-party
registrations. In re Nett Designs, Inc., supra. We must
determine the propriety of the requirement for disclaimers
based upon this record.
Moreover, with respect to its prior registration
without a disclaimer, we note that the registration covers
“computer consultation” services in Class 42 whereas the
instant application covers services which appear to go
beyond those in the registration. In particular, the
application includes, among other services, computer
support services. Accordingly, the registration does not
serve to overcome this refusal. See In re Loew’s Theatres,
Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir. 1985)
(“[Applicant’s] existing rights arising from its
registration of DURANGOS for cigars are unaffected by the
ruling with respect to the subject application… The basic
flaw in [applicant’s] analysis is that each application for
registration of a mark for particular goods must be
separately evaluated. Nothing in the statute provides a
right ipso facto to register a mark for additional goods
when items are added to a company’s line or substituted for
other goods covered by a registration. Nor do the PTO
rules afford any greater rights…”); and In re Sunmarks
Ser. Nos. 75/457,125 and 75/457,126
8
Inc., 32 USPQ2d 1470, 1472-73 (TTAB 1994)(“The cases are
legion holding that each application for registration of a
mark for particular goods or services must be separately
evaluated… Section 20 of the Trademark Act, 15 USC Section
1070, gives the Board the authority and duty to decide an
appeal from an adverse final decision of the Examining
Attorney. This duty may not be delegated by adoption of
conclusions reached by Examining Attorneys on different
records. Suffice it to say that each case must be decided
on its own merits based on the evidence of record. We
obviously are not privy to the record in the files of the
registered marks and, in any event, the issuance of a
registration(s) by an Examining Attorney cannot control the
result of another case.”)
Concerning the issue of mere descriptiveness, for the
reasons expressed by the Examining Attorney, we believe
that the words “BEST” and “PREMIER” are merely descriptive
laudatory words which should be disclaimed. As presented
in applicant’s marks sought to be registered, these words
have merely descriptive significance, indicating high
quality or importance. They are unregistrable without a
showing of acquired distinctiveness.
Decision: The requirements for disclaimers of “BEST”
and “PREMIER” in Application Serial No. 75/457,125 and of
Ser. Nos. 75/457,125 and 75/457,126
9
“BEST” in Application Serial No. 75/457,126 are affirmed.
Applicant may submit the required disclaimers in these two
cases within thirty days from the mailing date stamped on
this decision. If applicant does so, the disclaimers will
be entered and the applications will be forwarded for
publication in the Official Gazette.