800-Gifthouse

Trademark Trial and Appeal Board

Aug 11, 1999

No. 75016128 (T.T.A.B. Aug. 11, 1999)

Hearing: Paper No. 13
December 10, 1998 HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 11,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re 800-Gifthouse, Inc.
________
Serial No. 75/016,128
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Thomas M. Galgano of Galgano & Burke for 800-Gifthouse,
Inc.
Matthew C. Kline, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Simms, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
800-Gifthouse, Inc. has filed an application to
register the mark WORLD’S FAVORITE FLORIST for “receiving
orders for flowers and floral products, transmitting them
to and/or causing them to be filled by participating
Ser No. 75/016,128
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florists in the vicinity of the recipient” in Class 35 and
“retail flower and plant store services” in Class 42.1
Registration has been finally refused under Section
2(e)(1), on the ground that the proposed mark is merely
descriptive of the identified services. Both applicant and
the Examining Attorney have filed briefs and an oral
hearing was held.
As a preliminary matter, at the oral hearing applicant
supplied the Board with a copy of a request to suspend the
appeal and remand the application to the Examining Attorney
for consideration of newly submitted evidence, which
request was said by applicant’s counsel to have been filed
with the Office on February 17, 1998. Although this
request was not in the application file, and thus had not
previously been reviewed by the Board, the request has now
been taken under consideration and is denied.
Applicant attached to its appeal brief copies of
third-party registrations and applications which the
Examining Attorney objected to both as being untimely under
Rule 2.142(d) and as being improper copies, in that they
were printouts from the database of a private company.
Applicant, in response, filed its request to suspend and to

1 Serial No. 75/016,128, filed October 31, 1995, based on a bona
fide intention to use the mark in commerce. A disclaimer has
Ser No. 75/016,128
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reopen prosecution before the Examining Attorney so that
its newly submitted soft copies of third-party
registrations could be considered by the Examining
Attorney.
Clearly this is contrary to the purpose of Trademark
Rule 2.142(d), which requires that the record be complete
before the filing of an appeal. Newly found evidence may
provide a basis for a remand to the Examining Attorney, but
not tardily provided copies of third-party registrations
which have long been available. Not only is the request
denied, but the Examining Attorney’s objection to the
copies originally filed with applicant’s brief is upheld
and the third-party registrations have not been considered
in this appeal.2
Turning to the refusal at hand, the Examining Attorney
has taken the position that the proposed mark is
laudatorily descriptive of applicant’s florist services and
thus equivalent to any other merely descriptive term under

been entered of the word “FLORIST.”
2 For the sake of completeness, even if these registrations had
been considered, our decision would have remained the same. The
third-party registrations are for “World’s Favorite” marks which
are not nearly so closely related to the services with which they
are being used. For example, in Reg. No. 1,733,632, it is the
mark THE WORLD’S FAVOURITE VACATIONS which is being used in
connection with air transportation services, not WORLD’S FAVORITE
AIRLINE. In Reg. No. 1,091,995 it is the mark WORLD’S BEST
Ser No. 75/016,128
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Section 2(e)(1). He likens the proposed mark WORLD’S
FAVORITE FLORIST to the phrases AMERICA’S BEST POPCORN and
AMERICA’S FAVORITE POPCORN which were held by the Board to
be no more than laudatory epithets describing the claimed
quality and popularity of the product with which they were
being used, and thus merely descriptive under Section
2(e)(1). See In re Wileswood, Inc., 210 USPQ 400 (TTAB
1978).
Applicant argues that the term WORLD’S FAVORITE is not
analogous to the term AMERICA’S FAVORITE, or AMERICA’S
BEST, in that WORLD’S does not convey the same commercial
impression as AMERICA’S. Applicant contends that, although
the term AMERICA’S may be primarily geographic and
descriptive in nature, the term WORLD’S is too broad to
suggest any identifiable unit or place of origin or to be
descriptive of the bounds within which a mark functions,
citing World’s Carpets Inc., v. Dick Littrell’s New World
Carpets, 438 F.2d 482, 168 USPQ 609 (5th Cir. 1971).
According to applicant, the phrase WORLD’S FAVORITE is only
suggestive that applicant is renowned for its florist
services, a type of trade puffery that has been found
registrable on the Principal Register in the past.

COOKED SECRET being used for restaurant services, not WORLD’S
BEST RESTAURANT.
Ser No. 75/016,128
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In its recent decision in In re Boston Beer Co. L.P.,
47 USPQ2d 1914 (TTAB 1998), the Board once again reviewed
the registrability of laudatory designations or expressions
used to tout the superior qualities of an applicant’s
product. The designation THE BEST BEER IN AMERICA was
found to be no more than a descriptive claim of superiority
with respect to applicant’s beer, in the same sense that
AMERICA’S BEST POPCORN and AMERICA’S FAVORITE POPCORN had
previously been held to be only laudatory, comparative,
descriptive designations. Even though there was no means
by which any single beer was actually awarded the title of
“best beer in America,” the claim of superiority in itself,
referred to as “trade puffery” by the Board, was deemed
descriptive.
Applicant is also simply touting or describing its
florist services as being superior in popularity to the
services of others. We have no idea, nor would purchasers,
whether there is any factual basis for this claim.
Instead, this is trade puffery, pure and simple. There is
no element of suggestiveness, as argued by applicant, only
a boastful claim of the superior popularity of applicant’s
services with the purchasing public.
Furthermore, we fail to see how a viable distinction
can be made on the basis of using the word WORLD’S, as
Ser No. 75/016,128
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opposed to AMERICA’S. Both in the Wileswood case and in In
re Carvel Corp., 223 USPQ 65 (TTAB 1984)[AMERICA’S FRESHEST
ICE CREAM], the inclusion of the term AMERICA’S was found
to merely reinforce the laudatory nature of the
designation, or, in other words, to simply add to the
boastfulness of the claim. Applicant’s use of the word
WORLD’S is for the same purpose. The holding in World’s
Carpets Inc. v. Dick Littrell’s New World Carpets, supra,
was in reference to the geographic descriptiveness of the
term WORLD in itself, which is not the issue here. When
used in a laudatory sense to describe the realm of the
claimed superiority, WORLD’S has the same effect as
AMERICA’S, albeit with broadened boundaries. In In re
Royal Viking Line A/S, 216 USPQ 795, 797 (TTAB 1982), the
Board held the words WORLD CLASS merely descriptive for
cruise ship services, stating that these words were used
“in a laudatory manner much like one would use ‘first
class’ or ‘world’s finest’ or ‘world’s best,” to convey to
purchasers the superior nature of applicant’s services. We
see no difference in the use here by applicant of the term
WORLD’S, as part of the designation WORLD’S FAVORITE
FLORIST, to tout the superiority of its florist services.
Ser No. 75/016,128
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Decision: The refusal to register under Section
2(e)(1) is affirmed.
R. L. Simms
T. J. Quinn
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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