WORLD'S BEST DOWN Incapable of Functioning as a Trademark for Bedding Containing Down, Says TTAB

The Board affirmed a refusal to register, on the Supplemental Register, the phrase WORLD'S BEST DOWN for bedding containing down [DOWN disclaimed], finding that the phrase is "incapable of distinguishing goods and cannot function as a trademark or indicator of source." The evidence established that "World's Best Down" is "a common advertising phrase used to tout the high quality of down in bedding and other products." In re Eddie Bauer Licensing Services LLC, Application Serial No. 87471896 (August 14, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant Eddie Bauer argued that WORLD'S BEST DOWN does not convey any ordinary or familiar concept: an individual "may commonly say 'DRIVE SAFELY' before someone else gets into a car, but "would not commonly say to a third party 'WORLD'S BEST DOWN' before the third party gets into a bed with down filled bedding." [Whatever works! - ed.].

Moreover, Eddie Bauer asserted that it has used WORLD'S BEST DOWN as a source indicator since 2008, and its use is not informational but puffery or exaggerated praise for its products. Finally, it pointed to more than 50 "World's Best" formative marks that are registered (mostly on the Supplemental Register) with disclaimers.

Examining Attorney Steven W. Ferrell, Jr., issued the refusal to register before applicant had submitted its specimen of use, and he relied on the nature of the term rather than the manner in which the mark is used. The Board therefore limited its analysis to the nature of the phrase. Nonetheless, it considered Eddie Bauer's manner of use in determining how the phrase would be perceived by consumers.

Under the case law, slogans and other terms that are "merely informational in nature, or ... common laudatory phrases or statements that would be ordinarily used in business or in the particular trade or industry, are not registrable." For example, ONCE A MARINE, ALWAYS A MARINE is an informational slogan expressing support or admiration of the Marines. I ♥ DC is merely an expression of affection or enthusiasm for the city of Washington, D.C. And DRIVE SAFELY is an everyday, commonplace admonition.

The question is, how would the phrase be perceived by consumers? The Examining Attorney submitted numerous website pages from third parties using the term "World's Best Down" in connection with bedding and other products. This evidence, the Board found, shows that "the term 'World’s Best Down' is a common advertising phrase used to tout the high quality down in bedding and other products." Eddie Bauer uses the phrase "in the manner of a superiority claim that should be freely available to all manufacturers of down products."

The Board concluded that consumers will not perceive the phrase as a trademark; the phrase "is incapable of distinguishing goods and cannot function as a trademark or indicator of source."

As to the third-party registrations cited by Eddie Bauer, the Board once again observed that it is not bound by the decisions of Examining Attorneys in other cases. Each case must be decided on its own merits.

And so the Board affirmed the refusal.

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Text Copyright John L. Welch 2019.