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The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Office Search

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. However, applicant should note the following refusal.

Section 2(e)(1) Refusal - Mark is Merely Descriptive of Goods

Registration is refused because the applied-for mark merely describes a feature, quality or characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if the term describes only one significant function, attribute or property. In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).

In this case, the applicant’s mark, THE ULTIMATE IN BOW PROTECTION, is merely descriptive of the applicant’s goods in the nature of “accessories for boats, namely, protective polymer strips to be affixed to hulls of boats to become structural parts of boats.” The word “ultimate” is defined as “representing or exhibiting the greatest possible development or sophistication.” Please see attached dictionary definition. In this sense, “ultimate” is a laudatory term.

Laudatory words or terms that attribute quality or excellence to goods and/or services are considered merely descriptive. TMEP §1209.03(k). Thus, laudatory terms, phrases and slogans are nondistinctive and unregistrable on the Principal Register without proof of acquired distinctiveness. 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); In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA a laudatory, descriptive phrase for applicant’s beer and ale); In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2006) (holding THE GREATEST BAR a laudatory, descriptive term for applicant’s restaurant and bar since term “greatest” immediately informs prospective purchaser that applicant’s establishment is superior in character or quality when compared to other restaurants and bars); In re Dos Padres, Inc., 49 USPQ2d 1860 (TTAB 1998) (holding QUESO QUESADILLA SUPREME a laudatory, descriptive term for applicant’s cheese).

The word “bow” is defined as “the forward end of a vessel or airship.” The word “protection” is defined as “one that protects.” Please see attached dictionary definitions. Together, the wording “bow protection” describes something that protects the structural part of a boat called the bow. The wording “the ultimate” attributes high quality or sophistication to the bow protection provided by applicant’s goods.

A term is merely descriptive if it conveys an immediate idea of the ingredients, qualities, or characteristics of the identified goods and/or services. See In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). Here, the proposed mark, THE ULTIMATE IN BOW PROTECTION, immediately informs customers that applicant’s goods provide the highest level of protection for the bow of a boat.

Please also note the disclaimer statements in the attached third party registrations from the Office’s X-SEARCH database which indicate that it is Office practice to treat the wording “ULTIMATE” and “PROTECTION” as descriptive or generic in connection with a variety of goods.

In sum, applicant’s mark, “THE ULTIMATE IN BOW PROTECTION” merely describes applicant’s goods in the nature of accessories for boats, namely, protective polymer strips to be affixed to hulls of boats to become structural parts of boats. Accordingly, registration must be refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

Amendment to Supplemental Register Suggested

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal.

Benefits of Supplemental Registration

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

The registrant may use the registration symbol ®;
The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
The registrant may bring suit for infringement in federal court; and
The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

If applicant has any questions or needs assistance responding to this Office action, please telephone the undersigned examining attorney.

/Christine Cooper/

Trademark Examining Attorney

Law Office 113

U.S. Patent & Trademark Office

(571) 272-9844

(571) 273-9844 fax

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

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