The Place, Inc.

THIS OPINION IS CITABLE

AS PRECEDENT OF THE

TTAB

Mailed:

Oct. 18, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re The Place, Inc.

________

Serial No. 76436826

_______

Thomas F. Dunn of Morse, Barnes-Brown & Pendleton, P.C. for

The Place, Inc.

Ann Kathleen Linnehan, Trademark Examining Attorney, Law

Office 114 (Margaret Le, Managing Attorney).

_______

Before Seeherman, Bucher and Grendel, Administrative

Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register

of the mark THE GREATEST BAR (in standard character form)

for services recited in the application as “restaurant and

bar services.”1

1

Serial No. 76436826, filed on August 1, 2002. The application

is based on applicant’s allegation of its intent to use the mark

in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).

Ser. No. 76436826

At issue in this appeal is the Trademark Examining

Attorney’s final refusal to register the mark on the ground

that it is merely descriptive of applicant’s services. See

Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). The

appeal has been fully briefed. After careful consideration

of the evidence in the record and of the arguments of

counsel, we affirm the refusal to register.

A term is deemed to be merely descriptive of goods or

services, within the meaning of Trademark Act 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. See, e.g., In re

Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and

In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215

(CCPA 1978). Laudatory terms, those that attribute quality

or excellence to goods or services, generally are deemed to

be merely descriptive under Trademark Act Section 2(e)(1).

See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564

(Fed. Cir. 2001)(THE ULTIMATE BIKE RACK is “a laudatory

descriptive phrase that touts the superiority of Nett

Designs’ bike racks”); In re Boston Beer Co. L.P., 198 F.3d

1370, 53 USPQ2d 1056 (Fed. Cir. 1999)(THE BEST BEER IN

AMERICA for “beer and ale” found to be laudatory and

incapable of distinguishing source).

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Ser. No. 76436826

In this case, we must determine whether THE GREATEST

BAR is laudatory and merely descriptive of applicant’s

“restaurant and bar services.” First, we find that the

definite article THE and the generic term BAR are not

distinctive terms, and they add no source-indicating

significance to the mark as a whole. Applicant does not

contend otherwise. Next, we find that the word GREATEST is

laudatory and merely descriptive, and that the mark as a

whole likewise is laudatory and merely descriptive.

We take judicial notice that “great” is defined, in

pertinent part, as “markedly superior in character or

quality to others of the same class.” Webster’s Third New

International Dictionary (1993) at page 994.2 The same

dictionary, at page 778, defines “-est” as “used to form

the superlative degree of adjectives and adverbs of one

syllable.” Although there is no dictionary definition of

the word “greatest” per se, we find that these dictionary

definitions of “great” and “-est” suffice to establish the

laudatory significance of the word “greatest” in the mark

THE GREATEST BAR as applied to applicant’s restaurant and

2

The Board may take judicial notice of dictionary definitions.

See University of Notre Dame du Lac v. J.C. Gourmet Food Imports

Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505

(Fed. Cir. 1983); TBMP §704.12(a)(2d ed. rev. 2004).

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Ser. No. 76436826

bar services.3 It immediately informs purchasers that

applicant’s restaurant and bar is “the greatest,” i.e.,

“markedly superior in character or quality” when compared

to other restaurants and bars.

We have considered applicant’s arguments to the

contrary, but are not persuaded. First, applicant argues

that the term GREATEST in its mark is not laudatory because

it merely suggests the “high quality,” “excellence,” or

“superior quality” of applicant’s services, and not any

feature or characteristic of the services. However, it is

those very connotations which make the term GREATEST

laudatory when considered in relation to applicant’s

services. In the cases cited by applicant in support of

its argument, the terms in question, i.e., SUPER, 100%, and

PLUS, are more vague and suggestive, in terms of laudation,

than is the term GREATEST in applicant’s mark. Moreover,

the terms PLUS and SUPER, cited by applicant as examples of

terms which have been held to be non-laudatory, have been

held in other cases to be laudatory and merely descriptive.

See Plus Products v. Plus Discount Foods, Inc., 722 F.2d

999, 222 USPQ 373 (2d Cir. 1983)(PLUS held to be

3

We note that in the Nett Designs case, supra, the court, in

finding ULTIMATE to be laudatory, noted that the dictionary

definitions of ULTIMATE include “representing or exhibiting the

greatest possible development or sophistication,” and “greatest

or highest possible.” (Emphasis added.)

4

Ser. No. 76436826

laudatory); and In re Consolidated Cigar Co., 35 USPQ2d

1290 (TTAB 1995)(SUPER BUY held to be laudatory).

Likewise, the courts of appeal and this Board have

held that other marks which arguably denote “high quality,”

“excellence” and “superior quality” are laudatory and thus

merely descriptive. These include the term ULTIMATE in In

re Nett Designs Inc., supra, and the term BEST in In Re

Boston Beer Co. LP, supra. See also In re Duvernoy & Sons,

Inc., 212 F.2d 202, 101 USPQ 288 (CCPA 1954)(CONSISTENTLY

SUPERIOR held laudatory); Supreme Wine Co. v. American

Distilling Co., 310 F.2d 888, 135 USPQ 481 (2d Cir.

1962)(SUPREME held laudatory); In re Dos Padres Inc., 49

USPQ2d 1860 (TTAB 1998)(QUESO QUESADILLA SUPREME held

laudatory); In re San Miguel Corp., 229 USPQ 617 (TTAB

1986)(SELECT and its equivalent SELECTA held laudatory); In

re Inter-State Oil Co., 219 USPQ 1229 (TTAB 1983)(PREFERRED

held laudatory); and In re Wileswood, Inc., 201 USPQ 400

(TTAB 1978)(AMERICA’S BEST POPCORN held laudatory). The

term GREATEST in applicant’s mark THE GREATEST BAR is as

laudatory, if not more so, than the marks involved in the

cases cited above.

Second, applicant has made of record printouts of

eight Principal Register registrations of marks which

include the term GREATEST, which are registered without

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Ser. No. 76436826

disclaimers or under Section 2(f). Applicant argues that

these registrations show an Office practice of allowing

GREATEST marks to register. However, as expressly stated

by the court in In re Nett Designs, supra, 57 USPQ2d at

1566, “The Board must decide each case on its own merits. …

Even 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 citation omitted.)

In summary, we find that the term GREATEST in

applicant’s mark is laudatory and that the mark as a whole,

i.e., THE GREATEST BAR, likewise is laudatory and thus

merely descriptive. As noted above, the article THE and

the generic term BAR do not negate the laudatory nature of

GREATEST, and the mark as a whole is merely descriptive

because it directly conveys to customers and prospective

customers that applicant’s bar is the best.

Applicant next argues that even if the mark’s primary

significance is laudatory, the mark is not merely

descriptive because it is a double entendre, i.e., it has a

second meaning which is not merely descriptive of

applicant’s restaurant and bar services. That second

meaning, according to applicant, arises from the trade

dress, theme and motif to be used and displayed in the

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Ser. No. 76436826

restaurant/bar itself, and in the promotion and

advertisement of the restaurant/bar which will focus on

that theme or motif. According to applicant, the trade

dress and promotion will suggest to purchasers “a

restaurant and bar room experience featuring the most

notable people, places, and events in the history of the

town in which the establishment is located.” (Applicant’s

main brief, at unnumbered page 4.)

For example, in the Boston establishment, the décor

and theme will focus on the “greatest” people, places and

events in Boston’s history, such as the Blizzard of ’78

(asserted to be the greatest snowstorm in Boston’s

history); Ted Williams (asserted to be the greatest hitter

in Boston baseball history); Aerosmith (asserted to be the

greatest rock and roll band from Boston); and John F.

Kennedy (asserted to be the greatest politician from

Boston). These are but a few examples of the assertedly

“greatest” Boston people, places and events applicant

features or plans to feature in its Boston establishment.

According to applicant, these “greatest” people,

places and events will be displayed and emphasized by means

of video vignettes which will play in the establishment, by

original artwork, by menu selections featuring dishes from

the greatest area chefs, by customer voting on the greatest

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Ser. No. 76436826

local story of the week, by in-house television programming

featuring the greatest moments in the restaurant and bar,

and by the sale of merchandise featuring the greatest

people, places and events of Boston. In addition to these

“thematic devices” which highlight the “greatest” moments,

people and events of Boston, applicant asserts that the

mark THE GREATEST BAR will be accompanied, in applicant’s

promotional materials, by the tagline “A Celebration of the

Greatest People, Places, Moments and Events that Make

Boston Legendary.” Applicant argues that its mark THE

GREATEST BAR, when viewed in the context in which

purchasers will encounter it in the marketplace, i.e., in

connection with applicant’s trade dress and promotional

materials, evokes a double meaning that purchasers will

readily appreciate, and that the mark therefore is

registerable as a double entendre.

We are not persuaded. We need not reach the issue of

whether this alleged second meaning of the mark THE

GREATEST BAR is itself merely descriptive of a

restaurant/bar which features, by its trade dress, theme

and motif, the “greatest” elements of the city in which the

restaurant/bar is located. This is because we disagree

with applicant’s premise, i.e., its contention that the

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Ser. No. 76436826

alleged second meaning of THE GREATEST BAR will be readily

perceived by purchasers.

“Double entendre” is defined as “ambiguity of meaning

arising from language that lends itself to more than one

interpretation.” Webster’s Third New International

Dictionary (1993) at p. 678. As stated in TMEP

§1213.05(c), “A ‘double entendre’ is a word or expression

capable of more than one interpretation. For trademark

purposes, a ‘double entendre’ is an expression that has a

double connotation or significance as applied to the goods

or services. … The multiple interpretations that make an

expression a ‘double entendre’ must be associations that

the public would make fairly readily.”

A mark thus is deemed to be a double entendre only if

both meanings are readily apparent from the mark itself.

If the alleged second meaning of the mark is apparent to

purchasers only after they view the mark in the context of

the applicant’s trade dress, advertising materials or other

matter separate from the mark itself, then the mark is not

a double entendre. See In re Wells Fargo & Company, 231

USPQ 95 (TTAB 1986).

In Wells Fargo, the applicant was attempting to

register the mark EXPRESSERVICE for “banking and trust

services.” The Board found that EXPRESSERVICE was

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Ser. No. 76436826

equivalent to EXPRESS SERVICE, and held that the mark was

merely descriptive of a characteristic of the applicant’s

services, i.e., that the services are “fast in the sense of

saving time for banking customers.” Applicant noted,

however, that its EXPRESSERVICE mark always was used in

connection with its primary mark WELLS FARGO, and with

marketing brochures and other materials that depicted a

stagecoach and an “Old West” theme. Applicant, citing some

of the same cases cited by applicant in the present case,

argued that EXPRESSERVICE therefore was a double entendre

because it evoked “another reminiscent or associative

connotation, namely the historical connotation with

applicant’s predecessor which was extensively involved in

the Old West” and, in particular, the Pony Express. The

Board rejected the applicant’s “double entendre” argument:

There is, of course, no reasonable doubt … that

the name Wells Fargo and/or the depiction of a

stagecoach long associated with that name,

conjure up images associated with the Old West.

It is also quite clear that among these images

are the “Pony Express” and the fact that Wells

Fargo had a significant historical relationship

with that service and generally with the

“express” business during the years following

the California Gold Rush in 1848 and continued

to be active in this field until World War I.

However, we are also persuaded by the evidence

that consumers associate “Express Service” with

this Old West imagery only when the term is

used in association with the Wells Fargo name

10

Ser. No. 76436826

or with one of its allied marks (e.g., the

stagecoach design).

The Board also noted:

In its reply brief, appellant contends by way

of rebuttal that we are obliged to consider the

issue before us in relation to the context of

its use of EXPRESSERVICE, … and that that

context includes the name Wells Fargo and the

depiction of a stagecoach in an Old West

setting. Thus, appellant argues that in the

context of its use (i.e., in close association

with the name Wells Fargo and the depiction of

a stagecoach), as well as the continuing

references to the word “express” in connection

with Wells Fargo’s historical foundation,4

EXPRESSERVICE is bound to convey the Old West

imagery, thereby supporting the proposition

that appellant’s mark is suggestive rather than

descriptive.

The Board rejected this argument:

The well established rule that descriptiveness

issues must be analyzed in relation to the

context of use does not and cannot, obviously,

mean that descriptiveness of the term sought to

be registered must be evaluated as if that term

were used in association with other

nondescriptive indicia. In re Nash-Finch Co.,

160 USPQ 210 (TTAB 1968)[“The question is not

whether the subject matter in association with

4

Footnote 21 in the Board’s Wells Fargo opinion, in pertinent

part, states as follows: “For example, on page 16 of Exhibit H,

a sign reading ‘Wells Fargo & Co. EXPRESS’ is painted on the

window of a room at appellant’s San Francisco head office in

which a collection of Old West memorabilia, including a Wells

Fargo & Co. Overland Stage Coach is housed for public display.”

We note that applicant in the present case also relies on its

public display of “Boston” memorabilia and artwork in support of

its “double entendre” argument.

11

Ser. No. 76436826

other trademarks is capable of distinguishing

applicant’s goods but whether it is capable of

distinguishing applicant’s goods without

reference to other indicia.]

We have quoted extensively from the Wells Fargo case

because applicant in the present case makes many of the

same arguments that were rejected by the Board in Wells

Fargo, and because the holding of that case with respect to

the double entendre issue is directly relevant to our

decision herein: A mark is not a double entendre if the

second meaning is grasped by purchasers only when the mark

is used with “other indicia,” even if that other indicia is

itself not merely descriptive. In its main brief,

applicant has described the manner in which its purchasers

will encounter and then ascertain the second meaning of the

alleged double entendre as follows:

Contrary to the assertion by the Examining

Attorney that there is “no guesswork,” the

connection between THE GREATEST BAR and the

“greatest” people, places and events in the

history of a city is not immediately conveyed

to a prospective purchaser upon encountering

the services, i.e., upon seeing and entering

the applicant’s establishment. Consider the

manner in which the services are encountered

under the mark: the typical prospective

purchaser is one in search of food and drink

who, while walking the streets of a city such

as Boston, sees the applicant’s establishment.

There is nothing about the name of the

establishment THE GREATEST BAR that would

immediately convey to that purchaser that he or

she should expect to encounter services that

12

Ser. No. 76436826

are unique other than as to their high quality;

there is nothing about the manner in which this

encounter occurs that immediately conveys that

THE GREATEST BAR touts the “greatest” people,

places and events of that particular city.

Upon entering the applicant’s establishment,

the prospective purchaser might first pass by,

for example, a picture of Fenway Park captioned

as “the nation’s oldest and greatest ballpark.”

Even at this stage, however, the connection

between the seemingly random phrase “the

greatest ballpark” and applicant’s mark is not

immediately conveyed. Rather, only after

encountering the mark from the street, and once

inside encountering the reference to Fenway as

the “greatest ballpark,” and then encountering

the reference to Aerosmith as “Boston’s

greatest rock band” and perhaps then

encountering the reference to the Blizzard of

’78 as the “region’s greatest snowstorm” would

the light bulb go off and the average purchaser

say to himself or herself, “Oh, I get it.”

That perception, thought and imagination – that

“Aha!” moment, differentiates a merely

descriptive mark from a suggestive one, and

distinguishes the GREATEST BAR as a

registerable double entendre.

Applicant makes this argument in order to rebut the

Trademark Examining Attorney’s contention that even this

asserted second meaning of the mark THE GREATEST BAR is

merely descriptive of applicant’s restaurant/bar services.5

However, this description of the manner in which

5

As noted above, we need not and do not reach the issue of

whether the second meaning of applicant’s mark is merely

descriptive or instead is suggestive. What matters is that the

mark’s primary significance is merely laudatory, and that the

second meaning of “greatest” claimed by applicant would not be

“fairly readily” appreciated by purchasers, a fact which

precludes a finding that the mark is a double entendre.

13

Ser. No. 76436826

prospective purchasers will encounter the mark and

understand its “second meaning” is highly relevant to our

determination of the double entendre issue, i.e., whether

the second meaning of the mark will be “fairly readily”

understood by purchasers. It appears from applicant’s own

contention as to how purchasers will come to understand the

asserted second meaning of applicant’s mark that the double

entendre will not be “fairly readily” ascertained by

purchasers. Instead, it is only in the context of what the

Board in Wells Fargo called “other indicia” surrounding use

of the mark, e.g., the Boston-themed memorabilia and

artwork on the walls of the establishment, that the double

entendre will be understood by purchasers. The alleged

double entendre does not inhere in the language of the mark

itself; the mark therefore is not a double entendre.

We also note that although applicant’s intention

and/or current practice is to use its “greatest” theme and

motif in its restaurant/bars, the recitation of services in

the application is not limited to such use. Under the

terms of the registration applicant seeks, applicant would

be free to change the “greatest” theme and motif at any

time, and thus find itself to be the owner of what is the

laudatory and merely descriptive mark THE GREATEST BAR.

14

Ser. No. 76436826

The Board addressed this issue in the Wells Fargo case as

follows:

Another way of looking at it is that since the

other concededly registerable indicia are not

part of the matter sought to be registered, the

presumed right to exclude others from using

EXPRESSERVICE which would be accorded appellant

by registration of that term is not limited to

its use in association with Wells Fargo and/or

the stage coach design. Consequently, the

effect of these other indicia on consumer

perceptions cannot be considered in our

determination whether its registration would be

contrary to the provisions of Section 2(e)(1).

Finally, we find that this case is distinguishable

from the double entendre cases relied upon by applicant,

because in those cases the double entendre was apparent on

the face of the mark itself. For example, in In re

Colonial Stores Inc., 394 F.3d 549, 157 USPQ 382 (CCPA

1968), the court found that the mark SUGAR & SPICE for

bakery products was a double entendre, because it

immediately connoted both the ingredients of the bakery

products and the well-known nursery rhyme phrase “sugar &

spice and everything nice.” In In re National Tea Co., 144

USPQ 286 (TTAB 1965), the Board held that the mark NO BONES

ABOUT IT for ham immediately connoted both the fact that

the ham was boneless and the commonly used phrase “no bones

about it.” Other examples of cases in which the marks were

15

Ser. No. 76436826

found to be double entendres are In re Happy Baby Carrier

Company, 179 USPQ 864 (TTAB 1973)(NAPSACK a double entendre

as applied to baby carriers); and In re Horsman Dolls Inc.,

185 USPQ 639 (TTAB 1975)(CRY BABY a double entendre as

applied to dolls that “cry real tears”).

In summary, and for the reasons discussed above, we

find that applicant’s mark THE GREATEST BAR is not a double

entendre. Instead, we find that it is a laudatory and

merely descriptive mark as used in connection with the

services recited in the application, i.e. “restaurant and

bar services.” We have carefully considered all of

applicant’s arguments to the contrary (including those not

specifically mentioned herein), but are not persuaded. We

conclude, without doubt, that applicant’s mark is merely

descriptive, and that it therefore is barred from

registration under Trademark Act Section 2(e)(1).

Decision: The refusal to register is affirmed.

16