Finest Worldwide Entertainment Inc.Download PDFTrademark Trial and Appeal BoardAug 19, 2015No. 85909775 (T.T.A.B. Aug. 19, 2015) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: August 19, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Finest Worldwide Entertainment Inc. _____ Serial Nos. 85909766, 85909775, 85909791 and 85909801 _____ Robert L. Brewer, Martha B. Allard, Emily A. Burrows, and Jonathan D. Holbrook of Bass, Berry & Sims, PLC for Finest Worldwide Entertainment Inc. Melissa Vallillo, Trademark Examining Attorney, Law Office 105, Susan Hayash, Managing Attorney. _____ Before Wellington, Hightower, and Goodman, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On April 19, 2013, Finest Worldwide Entertainment Inc. (“Applicant”) filed four applications seeking registration on the Principal Register of: • FINEST MEDIA, for “film and music production services for others” in International Class 41 (Serial No. 85909766); • FINEST BOOKS, for “publishing of books, music and illustrations for others” in International Class 41 (Serial No. 85909791); • FINEST WORLDWIDE MANAGEMENT GROUP, for “management of creative and performing artists” in International Class 35 (Serial No. 85909775); and • FINEST WORLDWIDE ENTERTAINMENT, for “prerecorded CDs featuring original music” in International Class 9 (Serial No. 85909801). Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 2 - All four of the applied-for marks are in standard characters. Each of the applications was filed based on Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 35 U.S.C. § 1051(b). The Trademark Examining Attorney has refused registration of Applicant’s marks under Section 2(e)(1) of the Trademark Act, 35 U.S.C. § 1052(e)(1), on the ground that they are merely descriptive of the identified goods and services. When the refusals were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the requests for reconsideration, the appeals were resumed. On January 15, 2015, the Board granted Applicant’s request for remand of application Serial No. 85909775 so that Applicant could amend the application to disclaim MANAGEMENT GROUP.1 On February 20, 2015, the Board issued an order granting the Examining Attorney’s motion to consolidate the four appeals. Because the appeals resumed without action by the Examining Attorney on the proffered disclaimer in application Serial No. 85909775, on May 26, 2015, the Board suspended the consolidated proceedings and remanded the application to the Examining Attorney. On June 18, 2015, the Examining Attorney acknowledged the disclaimer but maintained the final refusal, and proceedings subsequently resumed. We affirm the refusals to register. 1 We also note Applicant’s statements in its appeal briefs that it is willing to disclaim MEDIA from application Serial No. 85909766 (Brief at 8, 7 TTABVUE 13) and BOOKS from application Serial No. 85909791 (Brief at 1, 7 TTABVUE 5) if its marks are allowed to register on the Principal Register. These conditional offers do not constitute disclaimers. Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 3 - Applicable Law A term is merely descriptive within the meaning of Section 2(e)(1) if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). It is not necessary, in order to find that a mark is merely descriptive, that the mark describe each feature of the goods or services, only that it “describes a single, significant quality, feature, function, etc.” In re Venture Lending Assocs., 226 USPQ 285, 286 (TTAB 1985). Determining the descriptiveness of a mark is done in relation to an applicant’s identified goods or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. Chamber of Commerce, 102 USPQ2d at 1219. Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). In other words, we evaluate whether someone who knows what the goods or services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). It is well established that laudatory terms – those that attribute quality or excellence to goods or services – are merely descriptive under Section 2(e)(1). See Kotzin v. Levi Strauss & Co., 111 USPQ 161, 163 (Comm’r Pat. & Trademarks 1956) Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 4 - (finding AMERICA'S FINEST OVERALL to be used as a laudatory phrase that “represents mere ‘puffing’ or ‘touting’ in advertising and seeking customers for its overalls”); see also DuoProSS, 103 USPQ2d at 1759 (SNAP SIMPLY SAFER merely descriptive for medical devices, including cannulae, needles and syringes); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive that it is incapable of acquiring distinctiveness); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1680 (TTAB 2007) (ULTIMATE POLO highly descriptive mark combining laudatory “ultimate” and generic “polo” to describe best possible shirts); In re Dos Padres Inc., 49 USPQ2d 1860, 1862 (TTAB 1998) (QUESO QUESADILLA SUPREME merely descriptive of cheese). Record Evidence The records for the four applications are not identical, although there is significant overlap among the evidence in each file. Evidence relevant to the issue of descriptiveness and common to all four applications includes the following: • Definitions of “fine” and the adjective “finest,” including, e.g., “surpassing in quality”2; “of superior quality, skill, or appearance” 3; and “of superior or best quality; of high or highest grade”4; • Synonyms for “finest,” including “high-grade, top-quality, top-grade, best (vs. worst)”;5 2 From rhymezone.com. 3 From thefreedictionary. 4 From dictionary.reference.com. 5 From thesaurus.infoplease.com. Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 5 - • 20 third-party registrations including the term FINEST registered either on the Supplemental Register or on a showing of acquired distinctiveness under Section 2(f) of the Trademark Act, submitted by the Examining Attorney; and • Two registrations owned by a company related to Applicant and 56 third- party registrations on the Principal Register for marks incorporating “finest” without disclaimer of that word, submitted by Applicant. Analysis We have considered the registration on the Principal Register owned by an entity related to Applicant for the mark FINEST MUSIC for “Entertainment and music publishing services, namely, production of audio and video recordings featuring music and entertainment; event planning services; and booking services for entertainment, musical, and cultural events and performances” in International Class 41.6 We also have considered the competing evidence of third-party registrations incorporating the term FINEST with respect to each application. These prior registrations are not conclusive. While uniform treatment under the Trademark Act is an administrative goal, our task in these appeals is to determine, based on the records before us, whether Applicant’s particular marks sought to be registered here are merely descriptive. As often stated, each case must stand on its own record and be decided on its own merits, and the Board is not bound by the actions of prior examining attorneys. See, e.g., In re Nett Designs Inc., 236 F.3d 6 Registration No. 3839968, in standard characters, issued August 31, 2010. Each subject application except application Serial No. 85909801 was initially refused pursuant to Trademark Act Section 2(d) on the ground of a likelihood of confusion with the mark in Registration No. 3839968 and a second registration owned by Finest Music, Inc. The refusals were withdrawn after Applicant submitted proof of unity of control between it and Finest Music, Inc. See Declaration of Michael Sheahan, Exhibit A to the February 13, 2014 Response to Office Action for applications Serial No. 85909766, 85909775, and 85909791. Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 6 - 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“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.”); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (affirming required disclaimers of descriptive laudatory words BEST and PREMIER despite applicant’s previous registration for BEST! without disclaimer). 1. Application Serial No. 85909766 for FINEST MEDIA Applicant seeks to register FINEST MEDIA for “film and music production services for others.” In addition to the evidence discussed supra demonstrating the meaning of the word “finest,” evidence the Examining Attorney made of record includes the following: • A definition of “media” as meaning: “Any kind of data including graphics, images, audio and video, though typically excluding raw text or executable code.”;7 • Eight third-party registrations for production services in International Class 41 from which the term MEDIA is disclaimed;8 and • Screen captures from four third-party websites using the phrase “finest media” descriptively in association with production services.9 Based on the evidence of record, we find that the proposed mark FINEST MEDIA is merely descriptive of Applicant’s services. “Finest” is a laudatory term signifying “of superior or best quality,” while “media” is a descriptive term referring 7 August 13, 2013 Office Action at 35, from dictionary.reference.com (citing The Free On- line Dictionary of Computing (2010)). 8 Id. at 9-30. 9 April 15, 2014 Final Office Action at 77-86. Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 7 - to audio and video data. These terms retain their descriptive character when combined to form the entirety of Applicant’s mark. Applicant argues that its mark is suggestive rather than descriptive, in part because the word FINEST suggests only “a vague notion of high quality or superiority,”10 and that: “Use of the word ‘finest’ simply does not connote specific qualities or attributes, but rather suggests whatever qualities or attributes the specific consumer considers positive or good.”11 We cannot agree. Applicant’s mark immediately informs prospective consumers that Applicant’s media production services are of the best quality. Thus, the mark as a whole is laudatorily descriptive of services related to media that are of the finest quality. No imagination is required to discern this purported characteristic of the services. Indeed, the record indicates that the phrase “finest media production” is used descriptively by others. We find that the mark FINEST MEDIA, when used in connection with “film and music production services for others,” is laudatorily descriptive of those services under Section 2(e)(1) of the Trademark Act. 2. Application Serial No. 85909791 for FINEST BOOKS Applicant seeks to register FINEST BOOKS for “publishing of books, music and illustrations for others.” In addition to the evidence discussed supra demonstrating the meaning of the word “finest,” evidence the Examining Attorney submitted 10 Appeal Brief at 3, 7 TTABVUE 9. 11 Id. Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 8 - includes screen captures from two third-party websites using the phrase “finest books” in association with publishing services.12 The applied-for mark combines the laudatory term FINEST with the generic name of a subject of Applicant’s publishing services, BOOKS. We find that Applicant’s mark would be immediately perceived by consumers as nothing more than the name of goods to which Applicant directs its services modified by a laudatory adjective indicating the superior quality of those services. Applicant argues that the term “finest” is used suggestively in its mark and, in connection with Applicant’s publishing services, “could refer to the quality of print, the quality of the content, the responsiveness of the employees who render the services, or the overall quality of the finished product.”13 To deny registration on the Principal Register based on the assertion that the word FINEST is merely descriptive would be tantamount to saying that adjectival use of any word, no matter how subjective and vague, in connection with admittedly descriptive words, such as ‘books,’ necessarily dooms an application for registration on the Supplemental Register.14 The question we must answer, however, is whether someone who knows that Applicant’s services include “publishing of books . . . for others” will understand the mark FINEST BOOKS to convey information about those services. DuoProSS, 103 USPQ2d at 1757. We reiterate that the mark need only describe a single feature or attribute of Applicant’s services. Chamber of Commerce, 102 USPQ2d at 1219. 12 April 14, 2014 Final Office Action at 17-23. 13 Appeal Brief at 6, 7 TTABVUE 10. 14 Id. at 4-5, 7 TTABVUE 8-9. Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 9 - We find that Applicant’s mark immediately informs prospective consumers that Applicant holds out its book publishing services to be of superior quality. For these reasons, FINEST BOOKS is merely descriptive of Applicant’s book publishing services under Section 2(e)(1) of the Trademark Act. 3. Application Serial No. 85909775 for FINEST WORLDWIDE MANAGEMENT GROUP Applicant seeks to register FINEST WORLDWIDE MANAGEMENT GROUP for “management of creative and performing artists.” In addition to the evidence discussed supra demonstrating the meaning of the word “finest,” evidence the Examining Attorney made of record relevant to the issue before us includes seven third-party registrations with “MANAGEMENT GROUP” disclaimed,15 as well as dictionary definitions of “worldwide,”16 “management,”17 and “group.”18 The applied-for mark combines the laudatory adjective “finest” with three other descriptive words immediately informing prospective customers that Applicant’s group offers management services worldwide. Each term retains its merely descriptive character when combined to form the entirety of Applicant’s mark. With this mark also, Applicant asserts that the term FINEST connotes only a vague characteristic of the services, and that: “Such a vague term does not convey an immediate idea of or merely describe Appellant’s creative management 15 August 13, 2013 Office Action at 33-51. 16 Id. at 30-32 (from thefreedictionary.com); April 15, 2014 Final Office Action at 60 (from rhymezone.com). 17 April 15, 2014 Final Office Action at 61 (from education.yahoo.com/reference/dictionary). 18 Id. at 62 (from rhymezone.com). Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 10 - services.”19 We find, however, that the mark is laudatorily descriptive of worldwide management services that are held out to be of superior quality, with no imagination, thought, or perception required by average prospective purchasers to discern these purported characteristics. We therefore find that FINEST WORLDWIDE MANAGEMENT GROUP is merely descriptive within the meaning of Section 2(e)(1) in association with the recited services, “management of creative and performing artists.” 4. Application Serial No. 85909801 for FINEST WORLDWIDE ENTERTAINMENT In the final application before us, Applicant seeks to register FINEST WORLDWIDE ENTERTAINMENT for “prerecorded CDs featuring original music.” In addition to the evidence discussed supra demonstrating the meaning of the word “finest,” evidence the Examining Attorney made of record includes the following: • Definitions of “worldwide”20 and “entertainment,” with the latter definitions including “Something that amuses, pleases, or diverts, especially a performance or show”21; • Three screen captures of web sites including the phrase “worldwide music” or “world-wide music”;22 • Two third-party registrations for CDs or musical sound recordings from which the word “worldwide” is disclaimed;23 and 19 Appeal Brief at 4, 8 TTABVUE 9. 20 April 16, 2014 Final Office Action at 60 (from rhymezone.com). 21 Id. at 61 (from education.yahoo.com/reference/dictionary). 22 Id. at 62-70. 23 Id. at 71-76. Serial Nos. 85909766, 85909775, 85909791 and 85909801 - 11 - • Seven additional third-party registrations registered on the Supplemental Register or including either a disclaimer of the word “finest” or a claim under Section 2(f) of the Trademark Act as to that term.24 The record shows that the term “entertainment” is broad enough to encompass Applicant’s “prerecorded CDs featuring original music.” The other two words in the mark, “finest” and “worldwide,” merely describe the purported superior quality of Applicant’s goods and their global scope, respectively. Applicant argues that both FINEST and WORLDWIDE are too vague to be considered merely descriptive. We find, however, that prospective consumers would immediately perceive Applicant’s mark to convey information about the quality, features, and characteristics of Applicant’s “prerecorded CDs featuring original music.” For these reasons, FINEST WORLDWIDE ENTERTAINMENT is laudatorily descriptive in association with Applicant’s identified goods. Decision: We have found that each of Applicant’s asserted marks is merely descriptive of Applicant’s respective goods and services, based on the record evidence for each application. Accordingly, the refusals to register Applicant’s marks FINEST MEDIA, FINEST BOOKS, FINEST WORLDWIDE MANAGEMENT GROUP, and FINEST WORLDWIDE ENTERTAINMENT are affirmed. 24 Id. at 82-101. Copy with citationCopy as parenthetical citation