Wednesday, January 31, 2024

TTABlog Test: Is "UNRIVALED LUXURY" Merely Descriptive of Cruise Ship Services?

The USPTO refused to register the proposed mark UNRIVALED LUXURY for, inter alia, cruise ship services, finding the mark to be merely descriptive under Section 2(e)(1). On appeal, Applicant Seven Seas argued that the mark is at most suggestive because it is "an inventive composite mark that requires some imagination to arrive at a conclusion about the mark's significance in connection with the identified cruise ship and travel tour services for cruise ship passengers." How do you think this came out? In re Seven Seas Cruises S. de R.L., Serial No. 97219378 (January 29, 2024) [Not precedential] (Opinion by Judge Angela Lykos).

The USPTO has the burden to establish a prima facie case of mere descriptiveness. If such a showing is made, the burden of rebuttal shifts to the applicant, but the ultimate burden remains with the Office and any doubt must be resolved in applicant's favor. 

Examining Attorney Lourdes Ayala provided dictionary evidence that the phrase UNRIVALED LUXURY is laudatory, nor merely suggestive.

The word "unrivaled," when used as an adjective, is defined as "having no rival, incomparable, supreme." The noun "luxury" is defined as "a condition of abundance or great ease;" "something adding to the pleasure or comfort but not absolutely necessary;" or "an indulgence in something that provides pleasure, satisfaction or ease." The combination of the two words as "unrivaled luxury" has no unique or incongruous meaning in relation to cruise ship services other than as a superlative.

The Board concluded that "no mental leap or multi-stage reasoning is required to understand that Applicant intends to market high-end cruise services." The dictionary definitions alone established the mere descriptiveness of the mark.

The Board's finding of mere descriptiveness was bolstered by evidence "showing that it is not uncommon for competitors in the cruise ship industry to use the phrase 'unrivaled luxury' to tout lavish features and amenities."

Th[e] evidence not only shows "unrivaled luxury" as a superlative used by third parties to describe upscale cruise ship services but also demonstrates that consumers shopping for cruises specifically look for superior amenities when making purchasing decisions. Competitors in the cruise ship field should be free to continue to use this merely descriptive language when describing their own cruise ship services to the public in advertising and marketing materials.

Seven Seas pointed to more than 35 registered marks that include the word "unrivaled" or "luxury" either alone or in conjunction with another merely descriptive or generic term, and to its own prior registrations for the marks AN UNRIVALED EXPERIENCE, UNRIVALED SPACE AT SEA, LUXURY PERFECTED, and LUXURY GOES EXPLORING, for the same services as in the application at issue. The Board was unimpressed:

[N]one of the third-party registrations or prior registrations consist of marks containing both UNRIVALED and LUXURY. We hasten to add that the USPTO is not bound by a decision of a Trademark Examining Attorney who examined and allowed the application for a previously registered similar mark, based on a different record.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? BTW: Who had a hit song entitled "Sea Cruise?"

Text Copyright John L. Welch 2024.


At 8:44 AM, Anonymous Anonymous said...

I just love that use of the term "unrivaled luxury" is widespread in the cruise industry. We're all #1!

At 10:30 AM, Anonymous Anonymous said...

Frankie Ford sang "Sea Cruise."

At 11:27 AM, Anonymous Anonymous said...

"Sea Cruise" hit by Frankie Ford -- but -- the music, lyrics, and irrepressible New Orleans sound were by Huey "Piano" Smith (RIP 1934 - 2023) and his band the Clowns.

At 1:22 PM, Blogger Bob Cumbow said...

The answer to your trivia question is Frankie Ford, and no, I didn't look it up, I really do go back that far. As for the case, rightly decided, I think--and to the extent that the applicant has competitors in the luxury cruise business, the mark might also be deceptively misdescriptive in implying that they don't.

At 2:35 PM, Anonymous Anonymous said...

I once tried citing other similar registrations (with same services) and was swatted with that language about each case is different. I struggle with whether this is good law or not. If the TTAB allowed marks with similar words and similar related goods, then are they implying that these other marks were wrongly decided. The TTAB is not concerned about consistency where some marks make is through while other similar marks (with the same goods) do not.

At 4:12 PM, Blogger Sean Heneghan said...

Not only were the music, lyrics and sound by Smith, the record label just had Ford’s voice dubbed over Smith's and band's original backing track, pressed the single and it was played on radio stations while Smith and the Clowns were touring!


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