Finest Worldwide Entertainment Inc.

Trademark Trial and Appeal Board

Aug 19, 2015

No. 85909766 (T.T.A.B. Aug. 19, 2015)

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.
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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
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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
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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
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(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
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• 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
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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
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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
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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
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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
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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
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• 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.