Friday, December 14, 2018

TTAB Test: Is ULTIMATE GEL Merely Descriptive of Bedding Products?

The USPTO refused to register the mark ULTIMATE GEL, finding it merely descriptive of "Beds for household pets; Chair cushions; Mattress toppers; Mattresses; Pillows." Applicant Comfort Revolution pointed to five existing registrations for marks that include the word ULTIMATE for the same or related products, without disclaimer of ULTIMATE. Examining Attorney Brittany Cogan relied on nine third-party registrations either on the Supplemental Register, or registered under Section 2(f), or containing a disclaimer of ULTIMATE. How do you think this came out? In re Comfort Revolution, LLC, Serial No. 87357126 (December 12, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).

The Board found the word ULTIMATE to be laudatory and therefore merely descriptive of applicant's goods. "Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods." Wording like "ultimate," "best," "greatest," and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods.

The word GEL describes the nature of applicant's goods. Third-party website evidence showed the use of "gel" to describe mattresses, dog beds, seat cushions,etc. Applicant's website uses the word descriptively to describe pillows. From this evidence, the Board concluded that GEL is a commonly used term for bedding products to describe a feature that includes gel to keep the user of the device cool.

Finally, the Board found that the components of the applied-for mark retain their laudatory and descriptive meaning when combined. The composite mark offers no unique, incongruous, or nondescriptive meaning in relation to the goods.

Comfort Revolution lamely contended that ULTIMATE GEL could be used to sell a wide variety of products unrelated to bedding - like hair care products and boat sealant. It argued that a consumer must gather additional information in order to perceive the significance of the phrase, and therefore the mark is at most suggestive of its goods.

The Board pointed out, however, that the determination of descriptiveness must be made in relation to the goods at issue. Whether the applied-for mark has different meanings in other contexts is simply irrelevant.

The Board had no doubt that ULTIMATE GEL is merely descriptive of applicant's bedding products, and so it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2018.


At 11:50 AM, Anonymous Anonymous said...

I would have appealed. A few years ago I overcame a 2(e)(1) refusal for the mark ULTIMATE [GENERIC TERM] by arguing that the generic product was so mundane and boring that the ULTIMATE [GENERIC TERM] formulation presented an essentially absurd statement that no reasonable consumer would believe.


Post a Comment

<< Home