Slip Guard Systems, Inc.v.Slip Guard Worldwide, Inc.

Trademark Trial and Appeal Board

May 2, 2001

No. 92030509 (T.T.A.B. May. 2, 2001)

5/2/01 Paper No. 12
PTH
T
Alpheus E. Fors
Thomas P. Arden
Processing Corp
Before Hairston
Trademark Judge
Opinion by Hair
Ralston Pu
registration ow
WORLD’S BEST CA
As grounds
the phrase WORL

1 Registratio
words “CAT LITTER
shown.
CI
THIS DISPOSITION IS NOT
TABLE AS PRECEDENT OF
THE TTABU.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
____
rademark Trial and Appeal Board
____
Ralston Purina Company
v.
Grain Processing Corporation
____
Cancellation No. 29,441
____
man for Ralston Purina Company
of McBride Baker & Coles for Grain
oration
, Chapman and Wendel, Administrative
s.
ston, Adminstrative Trademark Judge:
rina Company has petitioned to cancel a
ned by Grain Processing Corporation for
T LITTER for “cat litter.”1
for cancellation petitioner alleges that
D’S BEST CAT LITTER is incapable of

n No. 2,236,298 issued March 30, 1999. The
” have been disclaimed apart from the mark as
Cancellation No. 29,441
2
functioning as a trademark and therefore the mark is not
entitled to registration on the Supplemental Register.
Respondent, in its answer, denied the allegations of
the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; and a stipulation of facts
accompanied by photographs of respondent’s goods. In
addition, petitioner has submitted by way of notice of
reliance dictionary definitions of the words “best” and
“world” and a copy of an advertisement of respondent’s
goods from a periodical. In its notice of reliance,
respondent submitted third-party registrations of marks
incorporating the phrase “WORLD’S BEST.” Neither party
took testimony. Both parties filed briefs, but an oral
hearing was not requested.
Petitioner argues that WORLD’S BEST CAT LITTER is a
geographically defined superlative coupled with the name of
the involved goods, and as such is incapable of functioning
as a trademark for the goods under Section 23 of the
Trademark Act. Petitioner further argues that the phrase
cannot function as a mark because it is an ordinary
laudatory expression that lacks even a low level of
originality or distinctiveness.
Cancellation No. 29,441
3
Respondent, on the other hand, argues that laudatory
terms are capable of functioning as marks and that the
phrase WORLD’S BEST CAT LITTER connotes a vague
characteristic rather than a specific quality or attribute,
such that the phrase is capable of functioning as a mark.
Respondent further argues that the mark is used on
packaging for respondent’s cat litter in such a way as to
distinguish the source of respondent’s product.
Before turning to the merits of the case, we must
first consider an evidentiary matter. Respondent has
objected to the copy of an advertisement for respondent’s
goods introduced by petitioner on the ground that the
advertisement has not been authenticated. Respondent’s
objection is not well taken, however, because the
advertisement appeared in a publication available to the
general public and was therefore appropriately introduced
into evidence by way of petitioner’s notice of reliance
under Trademark Rule 2.122(e). See TBMP Section 708. We
note also respondent’s contention that “the advertisement
itself is not probative as promotional material or in
showing [respondent’s] promotional activity.” While we do
not exactly understand what respondent means by this, we
find the advertisement to be probative of the manner in
which respondent advertises its goods. In sum,
Cancellation No. 29,441
4
respondent’s objections to the copy of the advertisement
are not well taken.
We turn then to the merits of this proceeding.
Section 23 of the Trademark Act (15 U.S.C. § 1091) states
that a mark capable of distinguishing an applicant’s goods
or services and not registrable on the Principal Register
may be registered on the Supplemental Register.
At the outset, we note that there is no dispute that
WORLD’S BEST CAT LITTER is a laudatory phrase. There is
nothing in Section 23 that bars laudatory marks as a whole
from registration. See In re Bush Brothers & Co., 12
USPQ2d 1058, 1060 (Fed. Cir. 1989) (“Laudation is not
inimical to a term’s capability of functioning as a
trademark.”) However, for a laudatory phrase to be
registrable, it must have some element of originality or
uniqueness that would render the expression capable of
distinguishing respondent’s goods from like goods of
others. Ex parte I. Lewis Cigar Mfg. Co., 95 USPQ 224
(Exam. In Chief 1952). The issue here is whether WORLD’S
BEST CAT LITTER is capable of indicating origin, i.e.,
whether WORLD’S BEST CAT LITTER is of such a nature that
ordinary purchasers would be likely to consider that the
phrase indicated such origin. In re Helena Rubenstein,
Inc., 410 F.2d 438, 441, 161 USPQ 606, 608 (CCPA 1969).
Cancellation No. 29,441
5
The phrase WORLD’S BEST CAT LITTER is a combination of
the common laudatory phrase WORLD’S BEST and the generic
wording CAT LITTER. Our primary reviewing court, the Court
of Appeals for the Federal Circuit recently held that a
phrase similar to the one now before us, namely THE BEST
BEER IN AMERICA, was not capable of functioning as a
trademark for beer. The Court stated:
The proposed mark is a common, laudatory
advertising phrase, which is merely descriptive
of Boston Beer’s goods. Indeed, it is so highly
laudatory and descriptive of the qualities of its
product that the slogan does not and could not
function as a trademark to distinguish Boston
Beer’s goods and serve as an indication of
origin.
In re Boston Beer Company L.P., 198 F.3d 1370, 1373, 153
USPQ2d 1056, 1058 (Fed. Cir. 1999) affirming In re Boston
Beer Co. L.P., 47 USPQ2d 1914 (TTAB 1998).
We find similarly that WORLD’S BEST CAT LITTER is such
a highly laudatory and descriptive phrase that it cannot
function as a trademark. Consumers would view WORLD’S BEST
CAT LITTER as mere puffery and not as a source indicator of
respondent’s goods. See e.g., In re Carvel Corp., 223 USPQ
65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM found not
capable of distinguishing goods from like goods of others
within the meaning Section 23); and Kotzin v. Levi Strauss
& Co., 111 USPQ 161, 162 (Comm. 1956) (AMERICA’S FINEST
represents mere “puffing” or “touting” in advertising and
Cancellation No. 29,441
6
seeking customers for respondent’s overalls, and as used,
it neither identifies nor distinguishes respondent’s
products).
We are not persuaded by respondent’s argument that
WORLD’S BEST CAT LITTER is used in such a manner that it
serves to identify and distinguish respondent’s goods.
Reproduced below are copies of a photograph of the front of
a package for respondent’s cat litter and an advertisement
for respondent’s cat litter that appeared in Cat Fancy.
Cancellation No. 29,441
7
It is respondent’s position that, in the absence of
any other product designation on the package, purchasers
would view WORLD’S BEST CAT LITTER as a source indicator.
We disagree. The mere fact that no other indicia appears
on the package does not mean that WORLD’S BEST CAT LITTER
is capable of functioning as a mark.
Here, WORLD’S BEST is such a common superlative,
highly descriptive phrase that, even assuming respondent’s
cat litter has been determined to be the “world’s best,” if
a better or equally good cat litter is produced in the
future, the new producer(s) should be entitled to use that
designation in selling its goods. See Carvel at 69.
Stated differently, WORLD’S BEST is the type of superior
claim that should be freely available to all competitors in
any given field to refer to their products or services
subject to the limits of the law. In re Boston Beer Co.
L.P., supra.
With regard to the third-party registrations relied on
by respondent, while uniformity under the Trademark Act is
desired, we would point out that the Board is not bound by
the underlying decisions to grant those registrations.
Rather, we must look to the statute and the precedent of
our primary reviewing court.
Cancellation No. 29,441
8
In sum, we find that WORLD’S BEST CAT LITTER is not
capable of identifying and distinguishing respondent’s
goods from like goods of others within the meaning of
Section 23.
Decision: The petition to cancel is granted and
Registration No. 2,236,298 will be cancelled in due course.