Eddie Bauer Licensing Services LLC

Trademark Trial and Appeal Board

Aug 14, 2019

87471896 (T.T.A.B. Aug. 14, 2019)

Mailed: August 14, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Eddie Bauer Licensing Services LLC
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Application Serial No. 87471896
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Pamela N. Hirschman and Miriam D. Trudell of Sheridan Ross P.C.
for Eddie Bauer Licensing Services LLC.

Steven W. Ferrell, Jr., Trademark Examining Attorney, Law Office 121,
Richard White, Acting Managing Attorney.
_____

Before Kuhlke, Bergsman and Kuczma, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Eddie Bauer Licensing Services LLC (Applicant) seeks registration on the
Supplemental Register of the term WORLD’S BEST DOWN (in standard characters)
for “bedding containing down, namely, pillows,” in Class 20, and “bedding containing
down, namely, comforters, blankets, throws,” in Class 24.1 Applicant disclaimed the
exclusive right to use the word “Down.”

1 Application Serial No. 87471896, filed June 1, 2017 (on the Principal Register), under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona
fide intent to use the mark in commerce on the listed goods. On November 27, 2017 Applicant
filed an Amendment to Allege Use claiming November 16, 2017 as Applicant’s dates of first
use anywhere and first use in commerce for the goods in both classes. Finally, on January
This Opinion Is Not a
Precedent of the TTAB
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The Examining Attorney refused to register the applied-for mark on the ground
that WORLD’S BEST DOWN for bedding containing down does not function and is
incapable of functioning as a mark. Sections 1, 2, 23(c), and 45 of the Trademark Act,
15 U.S.C. §§ 1051-1052 1091(c) and 1127.2 According to the Examining Attorney,
WORLD’S BEST DOWN for bedding containing down “is merely informational and
constitutes a common term or slogan that is widely used in the marketplace,
commonly used by businesses, and commonly used by those in Applicant’s particular
trade or industry such that it fails to function as a trademark when used in connection
with the down goods at issue”3 and is incapable of identifying and distinguishing
source.4

23, 2018, Applicant filed an amendment to register its mark on the Supplemental Register.
Thus, the effective filing date is January 23, 2018.
2 While the Examining Attorney referenced Section 23(c) of the Trademark Act in the body of
his brief, he did not refer to that section of the statute in the opening or concluding portions
of the brief. However, in the July 28, 2018 Final Refusal, after Applicant amended the
application to the Supplemental Register, the Examining Attorney included a refusal under
Section 23(c) and the application was prosecuted under Section 23(c) of the Trademark Act
as a basis for the refusal to register. Applicant’s January 11, 2019 Request for
Reconsideration expressly noted that “the Examining Attorney maintained the refusal of the
application on the Supplemental Register under Trademark Action Sections 1, 2, 3, 23(c), and
45 on the basis that the Examining Attorney believes the mark consists of common
informational wording about Applicant's goods and is not able to function as a trademark.”
(4 TTABVUE 10). In his denial of the request, the Examining Attorney continued the refusal
of registration under, inter alia, Section 23(c). (5 TTABVUE 2). See also Applicant’s Brief, p.
5 (7 TTABVUE 6) (noting the refusal to register under Sections 1, 2, 23(c), and 45).
Accordingly, the refusal to register to includes Section 23(c) of the Trademark Act.
3 Examining Attorney’s Brief (9 TTABVUE 4). References to the briefs, motions and orders
on appeal are to the Board’s TTABVUE docket system. Citations to the examination record
refer to the Trademark Office’s online Trademark Status and Document Retrieval system
(TSDR), by page number. All citations to the documents contained in the TSDR database are
to the downloadable .pdf version of the documents.
4 July 28, 2018 Office Action, TSDR 1.
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Applicant argues that WORLD’S BEST DOWN does not convey an ordinary or
familiar concept.5 For example,
While an individual may commonly say to a third party
“DRIVE SAFELY” before the third party enters a car, an
individual would not commonly say to a third party
“WORLD’S BEST DOWN” before the third party gets into
a bed with down filled bedding.6
Further,
Applicant has been using its WORLD’S BEST DOWN
mark as an indicator of source for its clothing since at least
as early as July 2008 and has now expanded such use to
other products. Therefore, Applicant’s use of “WORLD’S
BEST DOWN” is not informational, but puffery or
exaggerated praise for Applicant’s products, and capable of
registration on the Supplemental Register.7
Finally, Applicant proffered that the USPTO has registered over 50 “World’s Best”
formative marks primarily registered on the Supplemental Register or under the
provisions of Section 2(f) without disclaiming the exclusive right to use the term
“World’s Best.”8 Accordingly, Applicant contends that consumers will perceive
WORLD’S BEST DOWN as a trademark.

5 Applicant’s Brief, p. 6 (7 TTABVUE 7).
6 Id. at p. 8 (7 TTABVUE 8).
7 Id. at p. 9 (7 TTABVUE 9). Applicant is the owner of Registration No. 3548475 for the mark
WORLD’S BEST DOWN, registered on the Supplemental Register, for “clothing containing
down, namely, jackets, parkas, coats, vests, scarves, gloves and hats,” in Class 25, registered
December 16, 2008, Section 8 declaration accepted, renewed. January 23, 2018 Response to
Office Action (TSDR 3). Applicant did not include a copy of the specimen of use so we cannot
see how the mark was used.
8 Id. at p. 9 (7 TTABVUE 10); January 11, 2019 Request for Reconsideration (4 TTABVUE
11-24 and 27-165). Although Applicant submitted copies of the third-party registrations,
Applicant did not include the specimens of use.
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I. Preliminary Issue
The Examining Attorney refused registration in the first Office Action on the
ground that WORLD’S BEST DOWN does not function as a mark prior to Applicant
filing an Amendment to Allege Use and a specimen of use:9
Registration is refused because the applied-for mark is
merely informational and constitutes a common
term or slogan that is widely used in the
marketplace, commonly used by businesses, and
commonly used by those in applicant’s particular
trade or industry; it does not function as a
trademark to indicate the source of applicant’s
goods to identify and distinguish them from others.
Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-
1053, 1127; see In re Boston Beer Co., 198 F.3d 1370, 1372-
74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding
THE BEST BEER IN AMERICA unregistrable for beer and
ale because the mark would be perceived as a common,
laudatory advertising phrase and not a trademark); In re
Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006)
(holding SPECTRUM unregistrable for illuminated
pushbutton switches because the mark would be perceived
as information about the multiple color feature of the goods
and not a trademark); In re Melville Corp., 228 USPQ 970,
971 (TTAB 1986) (holding BRAND NAMES FOR LESS
unregistrable for retail clothing store services because the
mark would be perceived as a common promotional phrase
and not a service mark); TMEP §1202.04.10 (Emphasis
added).

9 September 1, 2017 Office Action (TSDR 2). Nevertheless, “[a]lthough the failure-to-function
refusal is normally a specimen-based refusal, a refusal must be issued, regardless of the filing
basis, if the evidence supports a determination that a proposed mark is merely informational
and thus would not be perceived as an indicator of source. See Trademark Manual of
Examining Procedure (TMEP) § 1202 (Oct. 2018); cf. In re Right-On Co., 87 USPQ2d 1152,
1157 (TTAB 2008) (noting that, with respect to § 66(a) applications, ‘it is appropriate for
examining attorneys to issue an ornamentation refusal if the mark is decorative or
ornamental on its face as depicted on the drawing page and described in the description of
the mark’).” TMEP § 1202.04.
10 Id.
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Applicant contends that because the Examining Attorney issued the failure-to-
function refusal prior to the filing of Applicant’s Amendment to Allege Use and
specimen, “the refusal in this case is based solely on the meaning of Applicant’s mark
and not the manner of use [sic] Applicant’s use of the mark.”11
The Examining Attorney, in his brief, did not address Applicant’s contention and,
in fact, argued that WORLD’S BEST DOWN does not function as a trademark based
on the nature of the term, rather than the manner in which Applicant uses WORLD’S
BEST DOWN.
In view thereof, we limit our analysis of the failure to function refusal based on
the nature of WORLD’S BEST DOWN. See In re Peace Love World Live, LLC, 127
USPQ2d 1400, 1401-02 (TTAB 2018) (because the final refusal under Sections 1, 2,
and 45 of the Trademark Act was limited to the mere ornamentation rationale and
the merely informational rationale was raised only in an advisory manner during
examination, the Board exercised its discretion to limit its review to whether the
subject matter sought to be registered is ornamental). However, we consider the
manner in which Applicant uses WORLD’S BEST DOWN in analyzing how it may be
perceived (i.e., merely informational or as a trademark) because in making this
determination “we look to the specimens and other evidence of record showing how
the designation is actually used in the marketplace.” In re Eagle Crest, Inc.,
96 USPQ2d 1227, 1229 (TTAB 2010).

11 Applicant’s Brief, p. 6 (7 TTABVUE 7).
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II. Whether WORLD’S BEST DOWN is capable of functioning as a
trademark?
“‘[A] proposed trademark is registrable only if it functions as an identifier of the
source of the applicant’s goods or services.’” In re Yarnell Ice Cream, LLC, 2019
USPQ2d 265039, *16 (TTAB 2019) (quoting In re DePorter, 129 USPQ2d 1298, 1299
(TTAB 2019)). “‘The Trademark Act is not an act to register mere words, but rather
to register trademarks. Before there can be registration, there must be a trademark,
and unless words have been so used they cannot qualify.’” Id. (quoting DePorter, 129
USPQ2d at 1299 (quoting In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA
1976)). “There are multiple reasons why a proposed mark may fail to function as one.”
Id. (citing TMEP § 1202)). As noted above, the Examining Attorney “invokes the line
of cases holding that ‘terms and expressions that merely convey an informational
message are not registrable.’” Id. (quoting DePorter, 129 USPQ2d at 1299). Matter
that does not operate to indicate the source or origin of the identified goods or services
and distinguish them from those of others does not meet the statutory definition of a
trademark and may not be registered, regardless of claims of acquired distinctiveness
or the register on which registration is sought. See In re Boston Beer Co. L.P, 53
USPQ2d at 1058 (finding that the phrase THE BEST BEER IN AMERICA “is so
highly laudatory and descriptive of the qualities of its product that the slogan does
not and could not function as a trademark” and is incapable of acquiring
distinctiveness under section 2(f)); In re Helena Rubinstein, Inc., 410 F.2d 438, 441-
42, 161 USPQ 606, 608-09 (C.C.P.A. 1969) (finding PASTEURIZED for face cream as
so highly descriptive that it fails to function as a source identifier, noting that a
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proposed mark “cannot properly be registered as a trademark, even on the
Supplemental Register, unless it is intended primarily to indicate origin of the goods
and is of such a nature that the ordinary purchaser would be likely to consider that
it indicated such origin”); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710
(TTAB 2016) (granting petition to cancel a registration on the Supplemental Register
because the mark failed to function as a trademark).
Under these cases, “[s]logans and other items that are considered to be merely
informational in nature, or to be common laudatory phrases or statements that would
ordinarily be used in business or in the particular trade or industry, are not
registrable.” In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (affirming
refusal to register “Once a Marine, Always a Marine” for clothing because it would be
perceived as an informational slogan “to express support, admiration or affiliation
with the Marines”). See also D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d at 1716
(sustaining opposition to registration of I ♥ DC for clothing because it would be
perceived as “an expression of enthusiasm, affection or affiliation with respect to the
city of Washington, D.C.”); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-
61 (TTAB 1998) (affirming refusal to register “Drive Safely” for automobiles because
it would be perceived as an everyday, commonplace safety admonition).
“The critical inquiry in determining whether a designation functions as a mark is
how the designation would be perceived by the relevant public.” Eagle Crest,
96 USPQ2d at 1229. “To make this determination we look to the specimens and other
evidence of record showing how the designation is actually used in the marketplace.”
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Id. “The more commonly a phrase is used, the less likely that the public will use it to
identify only one source and the less likely that it will be recognized by purchasers as
a trademark.” Id.
An excerpt from the specimen of use displaying the mark is reproduced below:

In addition, the Examining Attorney submitted third-party websites showing use
of the term “World’s Best Down” used in connection with bedding and other products.
For example:12
1. Anhui Eafashion Home Textiles Co., Ltd. (aheafshion.com)
Anhui down quilt has been named “the world’s best down”
by the world’s feather Bureau.13

12 The Examining Attorney has confirmed that the third parties whose websites have been
made of record offer their products for sale in the United States. February 14, 2018 Office
Action (TSDR 3).
13 September 1, 2017 Office Action (TSDR 6).
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2. Backcountry Gear (backcountrygear.com)
Western Mountaineering – Down Booties – Unisex
Western Mountaineering’s top-notch construction
methods, attention to detail, and years of experience
working solely with premium down set them apart from
other brands; they are simply one of the world’s best down
companies, bar none.14
3. Danish Eiderdowns (danishedierdowns.com.au)15

4. DownTown Company (downtowncompany.com)
DownTown
Company
More Than Just Down
DownTown Company specializes in bringing together the
highest quality materials with the best textile craftsmen in
the world, creating the ultimate luxury bedding and
premium home accessories. We use luxurious white goose
down from Siberia and Hungary and is therefore renowned
for providing the world’s best down products.16

14 September 1, 2017 Office Action (TSDR 7).
15 Id. at TSDR 8.
16 Id. at TSDR 9.
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5. Jousten Finland Oy (finnairshop.com)
Joutsen Finland Oy is the world’s northernmost
manufacturer of down products. Joutsen down coats and
bedding items are made of the world’s best down
qualities.17
6. Kauffmann (Kauffmann.at/en)
Education and Entertainment
The employees are the main contribution to the success of
KAUFFMANN. Ambition, enthusiasm and passion are
necessary to implement the company’s vision realizing the
world’s best down and feather comforters.18
7. The Northwestern Business Review
(northwesternbusinessreview.org)
Canada Goose and the Technology of Warmth
Those trendy Canada Goose jackets many students at
Northwestern wear often have hefty price tags. But are
they really worth it?
… The warmest jackets they sell “are good to minus
seventy standing still,” Canada Goose director of design
and marketing Spencer Orr boasted in a 2013 interview
with the Toronto Star. “We have the world’s best down.”19

17 Id. at TSDR 10. This website is an excerpt from the Finnair website offering a wide variety
of products to Finnair flyers.
18 Id. at 12.
19 Id. at 14.
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8. Primaloft (primaloft.com)20

9. Sierra Trading Post (sierratradingpost.com)21

20 Id. at 15.
21 Id. at 16.
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10. Tundra (tundrasleepingbags.com)
Ethical Down
Design & Philosophy
Why Ethical Production?
Tundra draws on the skills of designers who have many
years’ experience in producing practical, high quality
equipment for outdoor enthusiasts and their contemporary
approach is coupled with Poland’s expert long tradition of
manufacturing down products. Add to this fact that we use
the lightest practical fabric available … and the world’s
best down … and you have an end product that easily
surpasses competition in quality and performance.22
11. Luxury US Imports, Inc. (luxuryimports.com)23

12. Pillowpacker Pillows (pillowpackerpillows.com)
PILLOWPACKER® PILLOWS – THE WORLD’S BEST
INFLATABLE TRAVEL PILLOW
We think we have the best inflatable pillow. We also think
we have the world’s best down travel pillow and the world’s
best microfiber travel pillow. Those are big claims for a
small company.24

22 Id. at 17.
23 July 28, 2018 Office Action (TSDR 6).
24 Id. at 7.
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13. MooseJaw (Moosejaw.com)
First Ascent Men’s Peak XV Down Jacket
Features of the Men’s Peak XV Jacket by First Ascent
• 850 Fill Power Premium Northern European Goose
Down: Ultra-light, ultra-warm, ultra-compressible World’s
Best Down25
The evidence 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. Applicant
uses WORLD’S BEST DOWN in the manner of a superiority claim that should be
freely available to all manufacturers of down products subject to the laws regarding
false advertising. Where, as here, consumers encounter a term such as “World’s Best
Down,” used in connection with the goods for numerous third parties, they will not
view the term as a trademark. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d
at 1716; In re Eagle Crest, 96 USPQ2d at 1230. Thus, it is incapable of distinguishing
goods and cannot function as a trademark or indicator of source.
With regard to the third-party registrations relied on by Applicant, the Board is
not bound by the underlying decisions by Examining Attorneys to register those
marks. See In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (“The Board must decide each case on its own merits” and “[e]ven if some prior
registrations had some characteristics similar to Nett Designs’ application, the PTO’s
allowance of such prior registrations does not bind the Board or this court.”) (internal

25 January 24, 2019 Denial of Request for Reconsideration (5 TTABVUE 5).
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citation omitted). Rather, we look to precedents set by previous court and Board cases
discussed above.
Decision: The refusal to register Applicant’s mark WORLD’S BEST DOWN is
affirmed.