U.S. Vision, Inc.

Trademark Trial and Appeal Board

May 17, 2013

No. 85477423 (T.T.A.B. May. 17, 2013)

Mailed: May 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re U.S. Vision, Inc.
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Serial No. 85477423
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Sherry H. Flax of Saul Ewing LLP for U.S. Vision, Inc.

Jay C. Besch, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Wellington, Wolfson, and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

U.S. Vision, Inc. has filed an application to register
the mark ULTIMATE EYEWEAR (in standard character form) for
“retail store services featuring eyewear, namely, eye
glasses, sunglasses, contact lenses, and eyewear
accessories” in International Class 35, and “optician
services” in International Class 44.1

1 Application Serial no. 85477423 filed on August 23, 2012, is
based on an allegation of intent to use the mark in commerce
under Trademark Act Section 1(b).
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 85477423
2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when
applied to applicant’s services, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether
a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
Serial No. 85477423
3
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979).
Based on the evidence of record, we conclude that
ULTIMATE EYEWEAR is merely descriptive of applicant’s
retail store services featuring eyewear and optician
services.2 The submitted dictionary evidence shows that one
given meaning of the term “ultimate” is “6. not to be
improved upon or surpassed; greatest; unsurpassed;”3 and the
term “eyewear” is defined as “any of various devices, as
spectacles, contact lenses, or goggles, for aiding the
vision or protecting the eyes.”4
We agree with the examining attorney that it is the
aforementioned meaning of the term “ultimate,” and not
others provided in the dictionary, that is relevant and
will be perceived by consumers given the term is being used
to modify EYEWEAR and will be viewed in the context of

2 While it may be obvious and is not in dispute in this
proceeding, we note that optician services involves the “making
of lenses and eyeglasses” and “selling lenses, eyeglasses, and
other optical instruments.” The American Heritage Dictionary of
the English Language (4th Ed. 2009).
3 Submitted with Office action dated December 29, 2011,
definition taken from website www.dictionary.reference.com, based
on the Random House Dictionary (2011).
4 Id.
Serial No. 85477423
4
retail store services featuring eyewear and optician
services. In other words, consumers will understand the
mark as conveying an expression that applicant’s retail
store and optician services are superior or that they
feature the best or “greatest...or unsurpassed” eyewear.
The term “ultimate” is merely being used as puffery and
laudatorily touting the quality of the “eyewear” being sold
via applicant’s retail store and optician services. The
Board has long held that laudatory words or phrases that
attribute quality or excellence to goods or services are
considered merely descriptive, including, more than once,
the term ULTIMATE. See In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (holding THE ULTIMATE
BIKE RACK a laudatory, descriptive phrase that touts the
superiority of applicant’s bicycle racks); and Target
Brands Inc. v. Hughes, 85 USPQ2d 1676, 1680 (TTAB 2007)
(ULTIMATE POLO consists of the laudatory term “ultimate”
and generic term “polo” describing best possible shirts).
See also, In re Boston Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA held
laudatory descriptive phrase for applicant’s beer and ale);
and In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005)(THE
GREATEST BAR found to be laudatory and thus merely
descriptive of restaurant and bar services). In other
Serial No. 85477423
5
words, depending on the context of the relevant goods or
services and as understood in the mark as a whole,
laudatory terms may be perceived as having no inherent
source-identifying quality because consumers are merely
perceiving the term as “hype” or puffery. That is the case
here. The mark as a whole, ULTIMATE EYEWEAR, merely
informs prospective customers that applicant’s services are
the best and/or they feature excellent eyewear. No
imagination is required and consumers will immediately
discern these touted qualities or characteristics of the
services.
We further note that the individual terms “ultimate”
and “eyewear” retain their laudatory and descriptive
character when combined to form the entirety of applicant’s
mark. There is no unique, incongruous or non-descriptive
meaning or commercial impression created by the combination
of these terms apart from that of its descriptive
connotation.
Applicant argues that some ambiguity exists based on
the term “ultimate.” Applicant contends that its mark “is
likely to be interpreted by general consumers of
applicant’s services as referring to (a) the high quality
of the glasses, sunglasses, contact lenses, or accessories,
or (b) the availability or accessibility of the products,
Serial No. 85477423
6
or (c) the broad selection of products available, or (d)
the excellence of the retail services provided.” Brief,
p. 2. Applicant concludes that “additional information is
required to understand the mark [and therefore] it cannot
be merely descriptive.” Id.
We agree with applicant to the extent that consumers
may understand the proposed mark as referencing one or more
of the aforementioned attributes; however, such possible
meanings or qualities to applicant’s services are
consistent with and result from the already explained
laudatory and merely descriptive nature of the mark.
Laudatory terms, by their very nature, merely attribute
excellence to goods and services in a “condensed form” and
thus consumers may find the “puffing” term as being
applicable to more than one feature of the goods or
services. 2 McCarthy On Trademarks and Unfair Competition
§11:17 (4th ed. 2006). See also, Burmel Handkerchief Corp.
v. Cluett, Peabody & Co., Inc., 127 F.2d 318, 53 USPQ 369,
372 (CCPA 1942)(“Such expressions are a condensed form of
describing in detail the outstanding character or quality
of the objects to which they are applied”). For example,
the word “best” being used in a mark in connection with
restaurant services may be understood by consumers as a
reference to the restaurant’s quality of food, service,
Serial No. 85477423
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location, result of reviews, etc. Thus, the fact that a
“puffing term” is able to connote several specific
qualities in a party’s goods or services is not unexpected
and does not somehow lend the mark source-indicating
significance not otherwise present.
Applicant also submitted thirteen third-party
registrations for marks containing, in part, the term
ULTIMATE for various goods and services and for which the
term was apparently not viewed as descriptive.5 Two of
these thirteen registrations involve eyewear or related
services: ULTIMATE SPECTACLE for “retail store services
featuring eyeglasses and optical wear”6 and ULTIMATE VISIONS
for “outdoor eyewear, namely sunglasses.”7 Applicant
contends these registrations “establish the willingness of
the USPTO to register marks that contain the term ULTIMATE
without disclaimer.” Brief, p. 3.
We agree with applicant’s sentiment that the Office
should strive for consistent application of the law. We
further acknowledge that the circumstances in this case

5 In its brief, applicant asserts there are “hundreds of
registered marks that begin with the term ULTIMATE and add a
disclaimed term that were registered with[out] even suggesting
that ULTIMATE is merely descriptive.” Brief, p. 2. Without
evidence in support, e.g., Office database copies of these
registrations, we cannot accept this statement as being
substantiated.
6 Registration No. 3448439 issued on June 17, 2008.
7 Registration No. 2982517 issued on August 9, 2005.
Serial No. 85477423
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bear a resemblance to those present in the ULTIMATE
SPECTACLE registration. At the same time, we also offer
that the phrases ULTIMATE SPECTACLE (not “SPECTACLES”) and
ULTIMATE VISIONS (not “VISION”) may be construed as having
meanings that do not merely describe the characteristics of
the goods and services to which they pertain. In addition,
the examining attorney also submitted approximately twenty
third-party registrations for marks containing the term
ULTIMATE for use on or in connection with various goods and
services, and the term is disclaimed or the registration
issued on the Supplemental Register or under Section 2(f),
thus indicating ULTIMATE was held descriptive in connection
with the identified goods and services.
In any event, we cannot make our decision in this
proceeding based on examining attorneys’ decisions in other
matters. In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB
2006) (“Although consistency in examination is a goal of
the Office, the decisions of previous Trademark Examining
Attorneys are not binding on us, and we must decide each
case based on the evidence presented in the record before
us”); In re Finisair Corp., 78 USPQ2d 1618, 1621 (TTAB
2006); In re Wilson, 57 USPQ2d 1863 (TTAB 2001)
(administrative law doctrine of “reasoned decision-making”
does not require consistent treatment of all applications
Serial No. 85477423
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to register marks; each application for registration must
be considered on its own record and merits). Simply put,
the goal of consistency does not require that we ignore a
statutory directive. “Even if all of the third-party
registrations should have been refused registration …, such
errors do not bind the USPTO to improperly register
Applicant's marks.” In re Shinnecock Smoke Shop, 571 F.2d
1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (citing In re
Boulevard Entm't, 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed.
Cir. 2003)).
Ultimately, we must make our determination in this
matter based on the commercial impression engendered by the
mark in association with the services at issue in this
case. In this regard, based on the record and the
arguments presented herein, we find that ULTIMATE EYEWEAR
is merely descriptive because it immediately informs
prospective customers that applicant’s retail store and
optician services are “the best” or “unsurpassed” in a
puffing manner, or that they feature the best or highest
quality of eyewear.
Decision: The refusal to register is affirmed.