Universal Remote Control, Inc.

Trademark Trial and Appeal Board

Jan 28, 2008

No. 78561702 (T.T.A.B. Jan. 28, 2008)

Mailed:
Jan. 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Universal Remote Control, Inc.
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Serial No. 78561702
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Martin Pfeffer of Ostrolenk, Faber, Gerb & Soffen, LLP for
Universal Remote Control, Inc.

Richard A. Straser, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
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Before Bucher, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Universal Remote Control, Inc., applicant herein,
seeks registration on the Principal Register of the slogan
THE FIRST IN REMOTE CONTROL TECHNOLOGIES (in standard
character form) for goods identified in the application as
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78561702
2
“remote controls for radio, televisions, stereos, cable
television and satellite television.”1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that it
is merely descriptive of the identified goods. Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Applicant has appealed the final refusal. After
careful consideration of the evidence of record and the
arguments of counsel, we affirm the refusal to register.
A mark 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,
217-18 (CCPA 1978).
Laudatory marks are a species of merely descriptive
marks. If the purchaser would view the mark as mere
puffery, then the mark is deemed to be merely descriptive
rather than inherently distinctive, and it therefore is

1 Serial No. 78561702, filed on February 7, 2005. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).

Ser. No. 78561702
3
unregistrable under Section 2(e)(1). “Marks that are
merely laudatory and descriptive of the alleged merit of a
product are also regarded as being descriptive…. Self-
laudatory or puffing marks are regarded as a condensed form
of describing the character or quality of the goods.” In
re Boston Beer Co. L.P., 198 F.3d 1370, 1373, 53 USPQ2d
1056, 1058 (Fed. Cir. 1999)(THE BEST BEER IN AMERICA for
beer and ale found to be laudatory and incapable of
distinguishing source). See also In re Nett Designs Inc.,
236 F.3d 1338, 57 USPQ2d 1564 (Fed. Cir. 2001)(THE ULTIMATE
BIKE RACK found to be a laudatory descriptive phrase that
touts the superiority of Nett Designs’ bike racks); In re
The Place Inc., 76 USPQ2d 1467 (TTAB 2005)(THE GREATEST BAR
found to be laudatory and thus merely descriptive of
restaurant and bar services). Cf. Hoover Co. v. Royal
Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720
(Fed. Cir. 2001)(NUMBER ONE IN FLOORCARE is laudatory and
thus not inherently distinctive as applied to vacuum
cleaners).
In the present case, we find that the phrase applicant
seeks to register as a trademark, THE FIRST IN REMOTE
CONTROL TECHNOLOGIES, is a laudatory slogan that would be
regarded by purchasers not as a trademark but rather as
mere puffery touting the superior quality of applicant’s
Ser. No. 78561702
4
remote controls and the technologies used in their design
and manufacture. The words THE FIRST IN are equivalent to
the laudatory words present in the marks in the cases cited
above, i.e., BEST, ULTIMATE, GREATEST and NUMBER ONE.
The record includes an entry for the word “first” from
the MSN Encarta Dictionary, which defines the word as an
adjective meaning “best: best in quality or achievement,”
and as a noun meaning “one ahead of any other: the one
positioned before any other in achievement, rank, quality,
or time.” Likewise, the record shows that The American
Heritage Dictionary of the English Language (4th ed. 2000)
defines “first” as “ranking above all others, as in
importance or quality; foremost.” Based on these
definitions, we find that the words THE FIRST IN in
applicant’s slogan would be viewed primarily in their
laudatory sense, connoting that applicant’s goods are of
first quality due to the superior technologies utilized in
their design and manufacture.
As applicant notes, these dictionaries include other
definitions of the word “first,” but we find that the word
as it appears in applicant’s phrase and as applied to
applicant’s goods primarily has the meanings set forth
above, i.e., it denotes the highest or best in quality.
Purchasers are less likely to attribute to the word the
Ser. No. 78561702
5
meaning applicant attributes to it, i.e., as denoting
“first in time” or “first in a series.” In this regard, we
note that in the In re Nett Designs Inc. case, supra, the
word “ultimate” in THE ULTIMATE BIKE RACK was found to be a
laudatory term denoting superior or the best quality. This
is so despite the fact that “ultimate” also carries the
meaning of “being last in a series, process, or
progression.” The American Heritage Dictionary of the
English Language (4th ed. 2000). Just as the word ULTIMATE
in the phrase THE ULTIMATE BIKE RACK was found to be a
laudatory term primarily connoting “highest quality” rather
than “last in a series, process, or progression,” we find
that the primary significance to purchasers of the word
FIRST in applicant’s slogan THE FIRST IN REMOTE CONTROL
TECHNOLOGIES would be its laudatory connotation, rather
than the “first in a series” or “first in time”
connotation.
Moreover, even if purchasers would view THE FIRST IN
REMOTE CONTROL TECHNOLOGIES in the manner suggested by
applicant, i.e., as meaning that applicant was the first or
original developer of remote control technologies, or that
applicant is on the cutting edge and is the first in the
industry to develop new remote control technologies, the
Ser. No. 78561702
6
slogan still would be viewed as laudatory and as mere
puffery.
Applicant has made of record ten third-party
registrations of marks which include the phrase FIRST IN,
which were registered on the Principal Register without
resort to a claim of acquired distinctiveness. The
Trademark Examining Attorney has countered with ten third-
party registrations of FIRST IN marks which the Office
allowed to be registered only on the Supplemental Register
or pursuant to a claim of acquired distinctiveness. We
have considered these registrations, but it is settled that
our decision must be based on our analysis of the facts
before us in this case. In re Nett Designs Inc., supra.
For the reasons discussed above, we find that the
slogan THE FIRST IN REMOTE CONTROL TECHNOLOGIES would be
viewed by purchasers merely as applicant’s claim that its
remote controls are of first or superior quality because
they utilize superior technologies in their design and
manufacture. The slogan is laudatory and thus merely
descriptive.
Decision: The refusal to register is affirmed.