Best Software, Inc.

Trademark Trial and Appeal Board

Apr 3, 2002

No. 75496422 (T.T.A.B. Apr. 3, 2002)

4/3/02 Paper No. 17
csl

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Best Software, Inc.

Serial No. 75/496,422
_____

Marsha G. Gentner and Leesa N. Weiss of Jacobson Holman
PLLC for applicant.

Carol A. Spils, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______

Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

Best Software, Inc. (applicant), a Virginia
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark BEST!
IMPERATIV HRMS (“HRMS” disclaimed) for computer software
for human resource, payroll, W-2 and tax processing and
employee management.1

1 Application Ser. No. 75/496,422, filed June 3, 1998, based upon
applicant’s bona fide intention to use the mark in commerce. The
letters have been disclaimed because the letters are an initialism for
the subject matter of applicant’s software—-human resource management
system. In the application, applicant claims ownership of Registration
No. 1,911,151.
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Serial No. 75/496,422
2
The Examining Attorney has made final her requirement
for a disclaimer of the word “BEST” apart from the mark as
shown. Applicant and the Examining Attorney have submitted
briefs but no oral hearing has been requested.
Relying upon a dictionary definition2 and copies of
third-party registrations, the Examining Attorney maintains
that the word “BEST” is merely descriptive of applicant’s
goods under Section 2(e)(1) of the Act, 15 USC §1052(e)(1),
and should be disclaimed under Section 6, 15 USC §1056.
The Examining Attorney argues that “BEST” is a laudatory
word which attributes quality or excellence to applicant’s
goods, and that this word is nondistinctive and
unregistrable without proof of acquired distinctiveness.
The Examining Attorney notes that this word has been
disclaimed in applicant’s Registration No. 1,374,606,
issued December 10, 1985, covering computer programs
recorded on diskettes, for the mark BP BEST PROGRAMS “THE
QUALITY SOFTWARE COMPANY.” The Examining Attorney has also
made of record numerous third-party registrations wherein
the word “BEST” has been disclaimed. These registrations
cover such marks as BEST INTERNET COMMUNICATIONS, COMPUTER
CITY AMERICA’S BEST COMPUTERS, PAINTER’S BEST, THE BEST OF

2 “Surpassing all others in excellence, achievement, or quality, most
excellent…” American Heritage Dictionary of the English Language Third
Edition (1992).
Serial No. 75/496,422
3
THE TWENTIETH CENTURY, SIMON SYSTEMS – SIMPLY THE BEST!,
QUALITY SERVICE CONTRACTORS QSC TRUST THE NATION’S BEST,
BEST VANTAGE, BEST ELECTRONIC SECURITY TEAM B.E.S.T., BEST
TV and design, BERRY BEST SERVICES and others. The
Examining Attorney has also relied upon the Board’s recent
decision In re Best Software Inc., 58 USPQ2d 1314 (TTAB
2001), which we shall discuss in more detail below.
Applicant, on the other hand, maintains that the
disclaimer requirement is inappropriate because the word
“BEST” is not used to describe any real or specific item or
characteristic of applicant’s goods. Further, applicant
argues that embedded in its mark is the exclamation mark
“!”, so that BEST! creates a unitary commercial impression.
With respect to its ´606 registration, where the words
“BEST PROGRAMS” were disclaimed, applicant argues that that
mark is different from the mark presented herein and that,
under Section 6(b), a disclaimer should not prejudice or
affect applicant’s rights in the disclaimed matter.
Applicant also places strong reliance upon its
ownership of Principal Register Registration No. 1,911,151,
issued August 15, 1995, Sections 8 and 15 affidavits
accepted and acknowledged, respectively, for the mark
“BEST!” without any disclaimer or without any claim of
acquired distinctiveness. That registration issued for
Serial No. 75/496,422
4
such goods as computer programs for accounting, tax
preparation, generating office reports and manuals,
electronic filing and facsimile transmission, human
resource management, financial management, computer network
management, and for office administration and file
management. Because a Section 15 affidavit has now been
filed and acknowledged, applicant argues that this
registration is now conclusive evidence of the validity of
that registration as well as applicant’s exclusive right to
use the registered mark BEST! in commerce. According to
applicant, this registered mark is identical to part of the
mark herein sought to be registered and the registration
encompasses the same goods as those in this application
(computer software for human resource, payroll, W-2 and tax
processing and employee management). In this regard,
applicant argues that “employee management” computer
software is within the scope of the prior registration.
Relying upon Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 105 S.Ct. 658, 224 USPQ 327 (1985), discussed
more fully below, applicant appears to argue that it is
improper for the Examining Attorney to require a disclaimer
herein because its registration cannot now be attacked on
the basis of mere descriptiveness.
Serial No. 75/496,422
5
Finally, applicant, like the Examining Attorney, also
made of record numerous third-party registrations issued on
the Principal Register. In these registrations, however,
the word “BEST” was not disclaimed, and the registrations
were not issued with a claim of acquired distinctiveness.
Some of these registered marks are: DISCOVER YOUR BEST,
BEST BUDDIES, STRICTLY THE BEST, TEST WITH THE BEST, BEST
THING SINCE BUTTER, BOUND TO BE THE BEST, TRADITIONALLY THE
BEST, THE BEST SPREAD FROM TOAST TO TOAST, THE BEST FOR
LAST, EARL GREY’S BEST, DIETER’S BEST, NATURALLY THE BEST,
and BEST BREED.
With respect to these third-party registrations, it is
the Examining Attorney’s position that many of them are for
slogans or unitary terms wherein no disclaimers are
required. In response to applicant’s reliance on the ´151
registration, the Examining Attorney argues that the goods
herein are different from the goods in that registration
and that applicant’s computer software content is broader
in some instances and different in others in this
application. Examining Attorney’s brief, 9. Furthermore,
decisions of other Examining Attorneys in registering
different marks are without evidentiary value and are not
binding on the office, the Examining Attorney argues. She
maintains that each case must be decided on its own facts.
Serial No. 75/496,422
6
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that the word
“BEST” in applicant’s mark is merely descriptive, in a
laudatory sense, of applicant’s computer software and must
be disclaimed, in the absence of a showing of acquired
distinctiveness.
In In re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d
1056, 1058 (Fed. Cir. 1999), in determining the
registrability of the slogan “THE BEST BEER IN AMERICA,”
the Court of Appeals for the Federal Circuit held that this
phrase was “so highly laudatory and descriptive as to be
incapable of acquiring distinctiveness as a trademark….
[I]t is so highly laudatory and descriptive of the
qualities of its product that the slogan does not and could
not function as a trademark to distinguish Boston Beer’s
goods and serve as an indication of origin”.
We also note what we said earlier in In re Best
Software, supra, at 1317:
Concerning the issue of mere
descriptiveness, for the reasons
expressed by the Examining Attorney, we
believe that the word[] “BEST”… [is a]
merely descriptive laudatory word[]
which should be disclaimed. As
presented in applicant’s marks sought
to be registered, [this word has]
merely descriptive significance,
indicating high quality or importance.
Serial No. 75/496,422
7
[It is] unregistrable without a showing
of acquired distinctiveness…

See also In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d
1564 (Fed. Cir. 2001)(“THE ULTIMATE BIKE RACK” held a
“laudatory descriptive phrase”); The Hoover Co. v. Royal
Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed.
Cir. 2001)(“Number One in Floorcare” held a “generally
laudatory phrase, and thus… not inherently distinctive”);
Exquisite Form Industries, Inc. v. Exquisite Fabrics of
London, 378 F.Supp. 403, 183 USPQ 666 (SDNY
1974)(EXQUISITE); In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995)(SUPER BUY); In re Inter-State Oil Co., 219
USPQ 1229 (TTAB 1983)(PREFERRED); and In re Wileswood,
Inc., 201 USPQ 400 (TTAB 1978)(AMERICA’S BEST POPCORN! and
AMERICA’S FAVORITE POPCORN!).
Concerning applicant’s argument regarding its
ownership of the incontestable ’151 registration, it is of
course true that under Section 15 of the Act a registrant’s
exclusive right to use a mark in commerce on or in
connection with the goods or services covered by the
registration can become incontestable. Section 15
provides, in part, as follows:
Except on a ground for which application
to cancel may be filed at any time under
paragraphs (3) and (5) of section 1064
of this title… the right of the registrant
Serial No. 75/496,422
8
to use such registered mark in commerce
for the goods or services on or in connection
with which such registered mark has
been in continuous use for five consecutive
years subsequent to the date of such
registration and is still in use in commerce,
shall be incontestable…

Thus, the statute clearly states that the incontestability
provided applies specifically to the use of the registered
mark, rather than registration. A review of the relevant
legal authorities makes this clear, as well as the fact
that even the ownership of an incontestable registration
does not allow an applicant to obtain, by that fact alone,
another registration for the same or similar mark for
somewhat different goods or services.
In Park 'N Fly, supra, the owner of an incontestable
registration for the mark PARK ’N FLY sued an alleged infringer
who was using the mark DOLLAR PARK AND FLY. The defendant
argued that the mark PARK ’N FLY was merely descriptive and
therefore unenforceable. The Supreme Court disagreed, holding
that the owner of a registered mark may rely on the
incontestable status of its registration under Section 15 to
enjoin infringement by a third party, and that an incontestable
registration cannot be challenged by a party on the ground that
the mark is merely descriptive.
In In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ
865 (Fed. Cir. 1985), the applicant claimed that its
Serial No. 75/496,422
9
incontestable registration for virtually the same mark
(“DURANGOS” vs. “DURANGO”) for closely related goods
(cigars vs. chewing tobacco) precluded a refusal of its
subsequent application as primarily geographically
deceptively misdescriptive. The Court disagreed, holding
that each application must be evaluated separately, and
further stating that the statute did not provide “a right
ipso facto to register a mark for additional goods when
items are added to a company’s line or substituted for
other goods covered by a registration.”
Also, in In re Merrill Lynch, Pierce, Fenner, & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987), the Court
stated that, “The benefits of incontestability are no more than
that ‘the registration shall be conclusive evidence of the
registrant’s exclusive right to use the registered mark in
commerce.’ …The only thing that becomes incontestable is the
right of the registrant to use the mark for the goods or
services for which it is registered (emphasis added).” The
Court recognized that “ownership of a registration does not of
itself authorize the grant of another registration for different
goods. Each application for registration must be considered on
its own merits.” Id. at 1142.
And in In re Save Venice New York Inc., 259 F.3d 1346, 59
USPQ2d 1778 (Fed. Cir. 2001), the Court recently rejected an
Serial No. 75/496,422
10
argument that registration should be permitted because of
applicant’s ownership of an incontestable registration, saying,
at 57 USPQ2d 1783:
A registered mark is incontestable only in the
form registered and for the goods or services
claimed. See In re Merrill Lynch…(holding
applicant's incontestable registration of a
service mark for “cash management account” did
not automatically entitle applicant to
registration of that mark for broader financial
services); In re Bose Corp., 772 F.2d 866, 873,
227 USPQ 1, 6-7 (Fed. Cir. 1985). A registered
mark on goods other than those previously
registered carries no presumption of
distinctiveness. In re Loew's…(holding
incontestable mark DURANGO for cigars
insufficient to establish distinctiveness of
DURANGO for chewing tobacco). Here, the proposed
composite mark is an entirely different mark from
SAVE VENICE standing alone, and is used on
entirely different goods from those services
previously registered under the SAVE VENICE mark.
Because the incontestable service mark SAVE
VENICE used for fundraising services carries no
presumptive weight within this composite mark as
applied to the nine international classes of
consumer goods at issue, we therefore turn to the
Board's evaluation of the graphic and linguistic
strength of this element.

The Board, when faced with the issue of incontestability in
appeals, has generally held that the incontestable status of a
prior registration does not alter the analysis for
registrability in a later application for a similar mark. In In
re BankAmerica Corporation, 231 USPQ 873 (TTAB 1986), the
Examining Attorney refused registration under Section 2(e). In
response, applicant argued that it owned seven registrations for
Serial No. 75/496,422
11
the same mark for related services, all of which were
incontestable under Section 15 (the first three had been issued
under Section 2(f), but the most recent four were not).
Applicant further argued that the holding in Park ‘N Fly
prevented Examining Attorneys from refusing to register the same
or virtually the same mark. However, the Board disagreed and
affirmed the refusal, saying, “This Office cannot and should
not be barred from examining the registrability of a mark when
an applicant seeks to register it for additional goods or
services… The cases are legion holding that each application for
registration of a mark for particular goods or services must be
separately evaluated.” Id. at 875-76, and cases cited therein.
Similarly, in Strang Corp. v. The Stouffer Corp., 16 USPQ2d
1309 (TTAB 1990), the Board held that Section 15 has no
application to a cancellation proceeding. “Section 14 and
Section 15 speak to different purposes, Section 14 being in
effect a five year time limit barring certain attacks on a
registration, while Section 15 provides incontestable rights of
use.” Id. at 1311.
And in In re Best Software, supra, at 1317, the Board
earlier dealt with applicant’s arguments concerning its
ownership of this same registration, which was five years
old at the time of decision but for which the Section 15
affidavit or declaration had not yet been processed. The
Serial No. 75/496,422
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Board relied on much of the same authority discussed above,
and also cited In re Sunmarks Inc., 32 USPQ2d 1470, 1472
(TTAB 1994)(“The cases are legion holding that each
application for registration of a mark for particular goods
or services must be separately evaluated…. Section 20 of
the Trademark Act…gives the Board the authority and duty to
decide an appeal from an adverse final decision of the
Examining Attorney. This duty may not be delegated by
adoption of conclusions reached by Examining Attorneys on
different records. Suffice it to say that each case must
be decided on its own merits based on the evidence of
record. We obviously are not privy to the record in the
files of the registered marks and, in any event, the
issuance of a registration(s) by an Examining Attorney
cannot control the result of another case.”) See also In
re Bose Corp., 772 F.2d 866, 227 USPQ 1, 7 n. 5 (Fed. Cir.
1985)(incontestable status of registration for one speaker
design does not establish non-functionality of another
speaker design with shared feature); and In re Industrie
Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988)
(Examining Attorney may refuse registration on the ground
that a mark is primarily merely a surname even if applicant
owns incontestable registration of same mark for unrelated
goods). Compare In re American Sail Training Association,
Serial No. 75/496,422
13
230 USPQ 879, 880 (TTAB 1986), where the Board held that an
Examining Attorney may not require a disclaimer of “TALL
SHIPS” in an application for registration of the mark
RETURN OF THE TALL SHIPS, where applicant owns an
incontestable registration for the mark TALL SHIPS covering
identical services. There, the Board stated that the
matter required to be disclaimed was “identical to the
subject matter of applicant’s incontestable registration,”
and that “the services described in applicant’s application
are identical to those recited in the prior incontestable
registration.”
In sum, ownership of an incontestable registration does
not give the applicant a right to register the same or
similar mark for different goods or services, even if they
are closely related to the goods or services set forth in
the incontestable registration. Here, this application
seeks registration of a different mark--BEST! IMPERATIV
HRMS--with a different commercial impression from the mark
in the prior registration--BEST! per se-—for goods which,
although similar, are nevertheless somewhat different.
Moreover, as noted above, each case must be decided on its
own merits. See also In re Nett Designs, supra, and In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417,
424 (Fed. Cir. 1985). Finally, we have given little weight
Serial No. 75/496,422
14
to the numerous third-party registrations submitted by both
sides. In re Nett Designs, supra (“Even if some prior
registrations had some characteristics similar to
[applicant's] application, the PTO's allowance of such
prior registrations does not bind the Board or this
court.”)
Decision: The requirement for a disclaimer is
affirmed. Applicant is allowed until 30 days in which to
submit an appropriate disclaimer. If applicant submits the
required disclaimer, it will be entered, the refusal to
register will be set aside, and the application will be
forwarded for publication.