The Enkeboll Co.

Trademark Trial and Appeal Board

Apr 13, 2009

No. 77320532 (T.T.A.B. Apr. 13, 2009)

Mailed: April 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Enkeboll Co.
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Serial No. 77320532
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Kit M. Stetina of Stetina Brunda Garred & Brucker for The
Enkeboll Co.

Amos Thomas Matthews, Trademark Examining Attorney, Law
Office 117 (Loretta C. Beck, Managing Attorney).
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Before Walters, Bucher and Rogers, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

The Enkeboll Co. has filed an application to register
on the Principal Register the standard character mark THE
FINEST ARCHITECTURAL WOODCARVINGS IN THE WORLD for
“advertising and promotional services pertaining to
architectural woodcarving products,” in International Class
35.1

1 Serial No. 77320532, filed November 2, 2007, based on an allegation of
a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77320532
2
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its services.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007); In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). 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 describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
Serial No. 77320532
3
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
The examining attorney contends that the phrase “the
finest in the world” is a common laudatory phrase; and he
makes the following statement (brief, p. 3):
The term FINEST is a laudatory word which touts
the quality of woodcarvings that are advertised
and promoted, ARCHITECTURAL WOODCARVINGS
identifies the items and the term WORLD indicates
the scope of the services. As such consumers
would immediately view it as attributing
excellence or superior quality to the
architectural woodcarving products that applicant
advertises and promotes through its services.

The examining attorney submitted definitions from
www.answers.com of the individual terms comprising the
mark, of which we note the definition of “finest” as
“surpassing in quality.” Additionally, we take
judicial notice of the definition in Merriam-Webster’s
Collegiate Dictionary (11th ed. 2003) of “fine” as
meaning, in relevant part, “4. superior in kind,
quality or appearance: ‘excellent.’”
The examining attorney also submitted
approximately twenty use-based third-party
registrations for marks that include either the phrase
“WORLD’S FINEST” or the substantially equivalent phrase
“Finest … in the World,” registered either on the
Supplemental Register or on the Principal Register
Serial No. 77320532
4
under Section 2(f) and/or with a disclaimer of such
phrases. The following are representative examples:
• THE WORLD’S FINEST WALKING SHOES registered on the
Supplemental Register for “retail shoe store services”
in International Class 35 (Registration No. 2,350,950).

• THE WORLD’S FINEST APPLES registered on the Principal
Register under Section 2(f) with regard to WORLD’S
FINEST and disclaimer of APPLE for “fresh apples” in
International Class 31 and “association services,
namely, promoting public awareness of the benefit of
consuming apples” in International Class 42
(Registration No. 2,240,052).

• WORLD’S FINEST FUND RAISING PROGRAMS registered on the
Supplemental Register for “promoting the fund raising
efforts of others by providing candy products
customized to the specifications of fund raisers, and
providing sales record keeping forms customized to the
specifications of fundraisers for use by fundraisers”
(Registration No. 2,619,091).

• SIMPLY THE FINEST CUSTOM COUTURE CLEANER IN THE WORLD
registered on the Principal Register under Section 2(f)
for “stain removal kit for fabric and garments, namely,
kits comprised primarily of a cleaning formula, rinse
solution, stain guide and absorbent material” in
International Class 16 and “fabric and garment
cleaning, preservation and restoration services” in
International Class 37 (Registration No. 3,172,800).

• THE WORLDS FINEST CRYSTAL registered on the Principal
Register under Section 2(f) for “catalog in the field
of crystal” in International Class 16 and “retail
stores, online retail store services and catalog
ordering services Featuring crystal” in International
Class 35 (Registration No. 3,116,790).

• THE FINEST ICE CREAM IN THE WORLD registered on the
Principal Register under Section 2(f) for “ice cream”
in International Class 30 (Registration No. 1,615,913).

• THE FINEST BERRIES IN THE WORLD registered on the
Principal Register under Section 2(f) for “fresh
strawberries, raspberries, blueberries and
Serial No. 77320532
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blackberries” in International Class 31. (Registration
No. 2,116,219).

Additionally, the examining attorney submitted
excerpts of a significant number of the 100 articles
retrieved in a search of “the finest in the world” in
the Lexis/Nexis database, including the following
representative examples:
• Los Angeles Times, November 6, 1987: “‘Our
nation's air transit system is the finest in
the world, it's the safest in the world, it's
the most efficient in the world,’ McArtor
said.”

• Los Angeles Times, December 6, 1986: “Widely
acknowledged as one of the finest in the
world, the San Diego Zoo is a beautifully
landscaped tropical garden within beautifully
landscaped Balboa Park.”
• Memphis Flyer (Tennessee), September 28, 2006: October
4, 2006: “As befitting a man of his reach and means,
his set of antique decoys is among the finest in the
world.”
• The Boston Herald, December 25, 2007: “‘The instrument
here is one of the finest in the world,’ says Mary
Kennedy, who has been playing the bells at St. Stephens
for more than 30 years.”
• The Tennessee Tribune (Nashville), September 29, 2005:
“‘Our soldiers and veterans are the finest in the
world,’ said [Lamar Alexander].”
• The Virginian-Pilot (Norfolk, VA), July 5,
1997: “Mr. Ruehlmann took exception to the
comments Mr. Heston made about the American
public school system having previously been
considered to be the finest in the world.”

• The Washington Post, September 4, 1999:
“Director Louis J. Freeh, at the
groundbreaking of the $ 130 million complex in
Serial No. 77320532
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Quantico, called the FBI's crime lab ‘the
finest . . . in the world.’"

The evidence establishes that “the finest in the world”
or “the finest [fill in product/service/noun] in the world”
are commonly-used phrases that are clearly laudatory. These
phrases convey the sentiment that, essentially, “this
product/service/noun is the very best of its kind.”
The examining attorney has submitted definitions of the
individual terms “architectural” and “woodcarving,” and
applicant does not dispute that there is a category of
products known as “architectural woodcarvings.” We do not
agree with the examining attorney that “the world” describes
the scope of applicant’s services. Rather, the laudatory
and, thus, the merely descriptive nature of the phrase is
evident when, as noted herein, the phrase is read in its
entirety. The phrase THE FINEST ARCHITECTURAL WOODCARVINGS
IN THE WORLD is mere puffery as to the assertedly superior
quality of the architectural woodcarvings.
Applicant has made several arguments that are not well
taken. First, applicant argues that the proposed mark is
not merely descriptive because the alleged puffery in the
mark pertains to architectural woodcarvings, not to
applicant’s advertising or promotional services. However,
applicant’s identified advertising and promotional services
are rendered specifically in connection with “architectural
woodcarving products.” We do not consider the mark in the
Serial No. 77320532
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abstract, nor do we consider the identified advertising and
promotional services without reference to the object of that
activity.
Second, applicant argues that, in the context of the
entire mark, the word “finest” refers to architectural
woodcarvings and, thus, is not laudatory because it means
“delicately fashioned.”2 As previously stated, we must
consider the mark in its entirety and in the context of the
identified services. As such, the evidence supports the
conclusion that “finest,” when considered as part of the
phrase “The finest … in the World,” connotes “superior in
kind, quality or appearance: ‘excellent.’”
Finally, applicant argues that the third-party
registrations are inapposite because the laudatory language
in those registrations relates directly to the identified
goods or services, e.g., THE FINEST ICE CREAM IN THE WORLD
for “ice cream,” whereas in the proposed mark, the allegedly
laudatory language pertains to the woodcarvings, not to the
identified services. While some of the registered marks in
evidence refer directly to the product or service
identified, several of the registered marks are analogous to

2 Applicant submitted this definition of “fine” with its brief and the
source is identified as “Dictionary.com Unabridged (v 1.1) based on the
Random House Unabridged Dictionary (2006).” We take judicial notice of
this definition because the Board may take judicial notice of online
reference works which exist in printed format or have regular fixed
editions. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581
(TTAB 2008). See also In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006).

Serial No. 77320532
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the mark in this case in that they refer to the object of
the identified services. As noted above, this does not
render the mark any less descriptive.
Considering the record and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that when considered in
connection with applicant’s services, the phrase THE FINEST
ARCHITECTURAL WOODCARVINGS IN THE WORLD immediately
describes, without the need to engage in conjecture or
speculation, a significant feature or function of
applicant’s services, namely, that the architectural
woodcarving products, which are the focus of applicant’s
advertising and promotional services, are of allegedly
superior quality. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for prospective customers for
applicant’s services to readily perceive the merely
descriptive significance of this phrase as it pertains to
applicant’s services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.