Comfort Revolution, LLC

This Opinion is not a
Precedent of the TTAB

Mailed: December 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Comfort Revolution, LLC
_____

Serial No. 87357126
_____

Amy Sullivan Cahill of Cahill IP PLLC,
for Comfort Revolution, LLC.

Brittany Cogan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.

_____

Before Cataldo, Shaw and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Comfort Revolution, LLC (“Applicant”) seeks registration on the Principal

Register of the mark ULTIMATE GEL (in standard characters) for

Beds for household pets; Chair cushions; Mattress toppers;
Mattresses; Pillows in International Class 20.1

1 Application Serial No. 87357126 was filed on March 3, 2017, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 87357126

The Trademark Examining Attorney refused registration of Applicant’s mark

ULTIMATE GEL under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),

on the ground that the proposed mark is merely descriptive

After the refusal was made final, Applicant timely appealed and requested

reconsideration. After the Trademark Examining Attorney denied the Request for

Reconsideration, the appeal was resumed. The appeal is fully briefed. For the reasons

set forth below, we affirm the refusal to register.

I. Evidentiary Issue

Before proceeding to the merits of the refusal, we address an evidentiary matter.

With its Appeal Brief, Applicant submitted copies of screenshots from third-party

Internet websites that were not previously introduced into the record during

prosecution. (8 TTABVUE 5-9). Because Applicant did not assert differently, we

assume that the evidence Applicant seeks to introduce with its brief was available

during the prosecution of its application.

Relying on Rule 2.142(d), 37 C.F.R. § 2.142(d), the Examining Attorney objects to

such evidence submitted by Applicant with its Appeal Brief. Rule 2.142(d) states:

The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.

As set forth in the Rule, the record should be complete prior to the filing of the appeal.

If Applicant desired to introduce additional evidence after the appeal was filed, it

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Serial No. 87357126

should have submitted a request to the Board to suspend the appeal and to remand

the application for further examination. Thus, we sustain the Examining Attorney’s

objection and the evidence Applicant attempts to submit with its Appeal Brief will

not be considered. See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011);

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1207.01

(June 2018).

II. Descriptiveness Under Section 2(e)(1)

Determining the descriptiveness of a mark under Section 2(e)(1) of the Trademark

Act, 15 U.S.C. § 1052(e)(1), is done in relation to an applicant’s goods, 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. See In re

Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.

2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831

(Fed. Cir. 2007)). For a term to be merely descriptive within the meaning of § 2(e)(1),

it is not necessary that the term describe each feature of the goods, only that it

conveys a single, significant ingredient, quality, characteristic, feature, function,

purpose or use of the goods with which it is used. See, e.g., In re TriVita, Inc., 783

F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl &

Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Chamber

of Commerce, 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,

1009 (Fed. Cir. 1987).

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Serial No. 87357126

Marks comprising more than one element, like Applicant’s mark, must be

considered as a whole and should not be dissected; however, we may consider the

significance of each element separately in the course of evaluating the mark as a

whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103

USPQ2d 1753, 1757 (Fed. Cir. 2012). Thus, we look first to the meaning of the

components of Applicant’s applied-for mark ULTIMATE GEL. The Examining

Attorney cites to the Merriam-Webster dictionary which defines “ultimate” as “c: the

best or most extreme of its kind” in support of her argument that “ultimate” is merely

laudatory.2

The Examining Attorney also submits copies of nine third-party registrations for

marks comprising “ULTIMATE” together with merely descriptive or generic terms

for goods that are the same as or similar to Applicant’s goods which further support

that the term “ULTIMATE” is merely laudatory. In those registrations, “ULTIMATE”

was either considered to be merely descriptive and disclaimed, or the marks

containing the term “ULTIMATE” were registered on the Supplemental Register, or

were registered on the Principal Register under § 2(f) of the Trademark Act, 15 U.S.C.

1052(f).3 Third-party registrations featuring goods the same as or similar to

2 See April 9, 2018 Request for Reconsideration Denied at TSDR 47 citing to Merriam-
Webster dictionary at . Page
references herein to the application record refer to the downloadable .pdf version of the
United States Patent and Trademark Office (USPTO) Trademark Status & Document
Retrieval (TSDR) system. References to the briefs refer to the Board’s downloadable
TTABVUE docket system.
3See the registrations cited in the April 9, 2018 Request for Reconsideration Denied at TSDR
4-26: Registration No. 3522097 for SLEEP IN HEAVENLY PEACE THE INN ULTIMATE
LUXURY CREATED EXCLUSIVELY FOR AT CHRISTMAS PLACE PIGEON FORGE,
TENNESSEE and Design (for beds, mattresses and box springs) “ULTIMATE LUXURY

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Serial No. 87357126

Applicant’s goods are probative evidence on the issue of descriptiveness where the

relevant word or term is disclaimed, registered on the Supplemental Register, or

registered under § 2(f) of the Trademark Act based on a claim of acquired

distinctiveness. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738,

1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co.,

958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79

USPQ2d 1953, 1955 (TTAB 2006).

Applicant also submits twelve third-party registrations for marks containing the

term “ULTIMATE,” arguing that they have been allowed to register and therefore

Applicant’s mark should also be registrable. However, four of those registrations are

cancelled or abandoned, two of them disclaim “ULTIMATE,” and one is registered

under § 2(f). Thus, Applicant may rely on only five of the registrations for marks that

include the word “ultimate” for the same or related products.

The fact that five third-party registrations exist for marks allegedly similar to

Applicant’s mark because they contain the word “ultimate” is not conclusive on the

CREATED EXCLUSIVELY FOR” and “PIGEON FORGE, TENNESSEE” disclaimed;
Registration No. 3150171 for ULTIMATE TEXTILE BUY THE CASE (for tablecloths, fabric
napkins and chair throws and fitted fabric slip covers for chairs) registered on the
Supplemental Register; Registration No. 4080815 for ULTIMATE BACK SUPPORTER (for
sleep products, namely, mattresses, spring mattresses, box springs and mattress
foundations) “ULTIMATE” disclaimed; Registration No. 4039930 for YOUR ULTIMATE
PILLOW (for pillows) registered on Supplemental Register; Registration No. 4027203 for
ULTIMATE SACK (for bean bag chairs) registered on Supplemental Register; Registration
No. 4243780 for THE ULTIMATE TRAVEL PILLOW (for inflatable travel pillow) registered
on the Supplemental Register; Registration No. 4384027 for ULTIMATE SACK (for bean bag
chairs) entire mark registered under §2(f); Registration No. 4787723 for ULTIMATE FIT (for
mattress pads) registered on Supplemental Register; Registration No. 5108279 for THE
ULTIMATE DOG BED & Design (for dog beds) “ULTIMATE DOG BED” disclaimed.

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Serial No. 87357126

issue of descriptiveness. In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519

(TTAB 1977) (holding SCHOLASTIC merely descriptive of devising, scoring, and

validating tests for others despite the presence of other marks on the Register using

the word “Scholastic”). Although there are nearly twice as many registered marks

containing the word “ULTIMATE” in the record where registration was based on a

disclaimer, registered on the Supplemental Register or under §2(f), compared to the

registrations which were granted on the Principal Register without the foregoing, it

is well settled that each case must be decided on its own facts and the Board is not

bound by prior decisions involving different records. See In re Nett Designs, Inc., 236

F. 3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d

1330, 1336 (TTAB 2014).

The term “ultimate” is laudatory and thus merely descriptive of the quality of

Applicant’s goods. “Self-laudatory or puffing marks are regarded as a condensed form

of describing the character or quality of the goods.” DuoProSS Meditech v. Inviro Med.

Devices, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 53

USPQ2d 1056, 1058 (Fed. Cir. 1999)). Thus, wording such as “ultimate,” “best,”

“greatest,” and the like are generally considered laudatory and descriptive of an

alleged superior quality of the goods and/or services. See In re Nett Designs, 57

USPQ2d at 1566; In re The Boston Beer, 53 USPQ2d at 1058-59; In re The Place, Inc.,

76 USPQ2d 1467, 1468 (TTAB 2005).

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Serial No. 87357126

In support of the merely descriptive nature of the term “GEL,” the Examining

Attorney submits copies of third-party websites showing the use of the word “gel” to

describe a feature of Applicants goods:

Wayfair – gel foam mattresses with “core construction”
comprised of “gel memory foam” . . . “. . . gel foam
mattresses are made of the same material that memory
foam mattresses are made of; viscoelastic. The difference
in the viscoelastic in gel foam mattresses is that it’s been
infused with gel beads or liquid, hence the name, gel foam.
. . . .” 4

Doctors Foster and Smith – gel pet bed features “gel cell
technology” 5

pettherapeutics – gel pet bed comprised of “gel cell
technology” 6

Buddy Beds – gel memory foam dog beds comprised of “gel
infused memory foam” 7

Miracle Cushion – gel seat cushions 8

Lane – memory foam gel mattress topper comprised of cool
gel memory foam 9

Google search results, showing third-party use of the term
“gel” to describe gel mattress toppers – The Big One, Lucid,

4 March 22, 2017 Office Action at TSDR 5-25.
5 October 6, 2017 Final Office Action at TSDR 6-8.
6 Id. at TSDR 9-11.
7 Id. at TSDR 12-14.
8 Id. at TSDR 15-17.
9 Id. at TSDR 23-32.

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Serial No. 87357126

Serta, Comfort Wave, Beautyrest, Comforpedic, Brookside,
Lane, and Linenspa <https://www.houzz.com/product10

Houzz – Cool Gel Ultimate 14” Plush Gel Memory Foam
Mattress describing a “gel-infused memory foam keeps you
cool . . .”11

Houzz search results, showing third-party use of the term
“gel” to describe gel mattresses and gel pillows – Trinity,
Classic Brands, Emerald Home, InnoMax, Lucid, Serenia
Sleep, Divano Roma Furniture, Enso Sleep Systems,
Malouf, Royal Tradition, Northern Feather, Rio Home
Fashions, Remedy, PureCare, SensorPEDIC, and Euro
Style Collection12 and

Classic Brands – “Cool Gel Ultimate Gel Memory Foam” to
describe a mattress “which consists of breathable
ventilated Cool Gel memory foam”13 https://www.amazon.com/
Classic-Brands-Ultimate-14-Inch-Mattress/dp/. . . and

Petco –use of the term “gel” to describe gel pet cooling beds
and pads of Pet Therapeutics14 .

Additionally, Applicant’s own website advertises various types of pillows using the

term “gel” descriptively:

Comfort Revolution – gel pillows comprised of “Memory
Foam layered with Hydraluxe gel technology”
and .15

10 Id. at TSDR 33-37.
11 Id. at TSDR 38-41.
12 Id. at TSDR 42-55.
13 Id. at TSDR 62-73.
14 Id. at TSDR 74-76.
15 Id. at TSDR 56-61.

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Serial No. 87357126

The evidence above confirms that “GEL” is a term commonly used by businesses

selling items such as beds for pets, chair cushions, mattress toppers, mattresses and

pillows to identify or describe a feature that includes gel which assists in keeping the

user of the device cool; as Applicant explains, the “sleep products [are] made of

memory foam that combine the latest in cooling technology with the comfort of tried

and true memory foam. [Applicant’s] products feature memory foam containing a

phase change material that provides for a temperature-regulated sleep experience.”16

Thus, the term “gel” is used descriptively by sellers of such products to describe

products having that feature.

The evidence submitted by the Examining Attorney amply supports that the

applied-for mark “ULTIMATE GEL” is laudatory and merely descriptive. Not only

are the components of the applied-for mark laudatory and descriptive, they retain

their laudatory and descriptive meanings in relation to Applicant’s goods resulting in

a composite mark that is itself descriptive and not registrable. In re Fat Boys Water

Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64

USPQ2d 1314, 1317-18 (TTAB (2002)); see also e.g., Apollo Med. Extrusion Techs.,

Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding

MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion

goods produced by employing medical extrusion technologies); In re Cannon Safe,

Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely

16Applicant’s Appeal Brief p. 2 (8 TTABVUE 3); also see e.g., October 6, 2017 Final Office
Action at TSDR 9, 12, 25, 38, 49, 62-63.

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Serial No. 87357126

descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052

(TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds,

mattresses, box springs, and pillows).

Upon reviewing the evidence submitted by Applicant, we find it is insufficient to

overcome the evidence that the term “ULTIMATE GEL” is laudatory and merely

descriptive of the bedding, mattresses, pillows and cushions listed in Applicant’s

identification of goods. Here, both of the individual components, as well as the

composite mark, are descriptive of Applicant’s goods and do not create a unique,

incongruous, or nondescriptive meaning in relation to the goods. Specifically, each

term retains its descriptive meaning. Based on the foregoing evidence, the wording

“gel” merely describes or refers to part of the content of Applicant’s goods. The record

shows that “ultimate” means best. Therefore, adding the term “ultimate” to a

descriptive term such as “gel” does not add any source-indicating significance or

otherwise affect the overall descriptiveness.

A mark may be merely descriptive even if it does not describe the “full scope and

extent” of Applicant’s goods. In re Oppedahl & Larson, 71 USPQ2d at 1371 (citing In

re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir.

2001)). It is enough that the term describes only one significant function, attribute,

or property of the goods. In re Chamber of Commerce, 102 USPQ2d at 1219; In re

H.U.D.D.L.E., 216 USPQ 216 USPQ 358, 359 (TTAB 1982). The question is not

whether someone presented only with the proposed mark ULTIMATE GEL could

guess the products listed in the identification of goods. Rather, the question is

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Serial No. 87357126

“whether someone who knows what the goods are will understand the mark to convey

information about them.” DuoProSS Meditech v. Inviro Med. Devices, 103 USPQ2d at

1757 (quoting In re Tower Tech, Inc., 64 USPQ2d at 1316-17); In re Swatch Grp.

Mgmt. Servs. AG, 110 USPQ2d 1751, 1762 n.54 (TTAB 2014). Therefore, the wording

“Ultimate Gel” is merely descriptive of Applicant’s goods because, at the very least, it

describes a significant feature.

Applicant contends that ULTIMATE GEL could be used to sell a wide variety of

totally unrelated products including hair styling, hair care products and boat

sealants.17 When used in connection with its goods, Applicant argues that

ULTIMATE GEL is suggestive because it is susceptible to multiple connotations

requiring imagination and a gathering of further information in order for the relevant

public to perceive of any significance of the term.18

Only where the combination of descriptive terms creates a unitary mark with a

unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is

the combined mark registrable. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ

382, 385 (CCPA 1968) (SUGAR & SPICE, along with the favorable suggestion which

it may evoke, seems to clearly function in the trademark sense and not as a term

merely descriptive of goods); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63

(TTAB 2013) (whether a composite mark formed of two or more merely descriptive

terms has a merely descriptive significance turns on whether the combination of

17 Applicant’s Appeal Brief p. 2 (8 TTABVUE 3).
18 Id. at pp. 2-3 (8 TTABVUE 3-4).

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Serial No. 87357126

terms evokes a new and unique commercial impression; if each component retains its

merely descriptive significance in relation to the goods, the combination results in a

composite that is merely descriptive); In re Petroglyph Games Inc., 91 USPQ2d 1332,

1341 (TTAB 2009) (“[B]ecause the combination of the terms does not result in a

composite that alters the meaning of either of the elements, refusal on the ground of

descriptiveness is appropriate”). “That a term may have other meanings in different

contexts is not controlling.” In re Franklin County Historical Soc’y, 104 USPQ2d 1085,

1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)).

The determination of whether a mark is merely descriptive is made in relation to an

applicant’s goods, not in the abstract. DuoProSS Meditech v. Inviro Med. Devices, 103

USPQ2d at 1757; In re Chamber of Commerce, 102 USPQ2d at 1219; see, e.g., In re

Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-

CONTROL would refer to the “documents” managed by applicant’s software rather

than the term “doctor” shown in a dictionary definition); In re Digital Research Inc.,

4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and

CONCURRENT DOS merely descriptive of “computer programs recorded on disk”

where the relevant trade used the denomination “concurrent” as a descriptor of a

particular type of operating system). Here, Applicant’s goods are pet beds, chair

cushions, mattresses and mattress toppers and pillows. That Applicant’s applied-for

mark may have different meanings in other contexts or for other products has no

bearing on whether it is descriptive of the identified goods.

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Serial No. 87357126

Generally, if the individual components of a mark retain their descriptive meaning

in relation to the goods, the combination results in a composite mark that is itself

descriptive and not registrable. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823

(TTAB 2012). Here, the laudatory term “ultimate” is combined with a merely

descriptive term, “gel,” resulting in both the individual components and a composite

that is merely descriptive of Applicant’s goods and does not create a unique,

incongruous, or nondescriptive meaning in relation to the goods. See In re Nett

Designs, 57 USPQ2d at 1566 (holding THE ULTIMATE BIKE RACK merely

laudatory and descriptive of applicant’s bicycle racks being of superior quality).

III. Conclusion

While we agree with Applicant’s contention that any doubt regarding the mark’s

descriptiveness should be resolved on Applicant’s behalf,19 In re Gourmet Bakers,

Inc., 173 USPQ 565, 566 (TTAB 1972); In re ActiveVideo Networks, Inc., 111 USPQ2d

1581, 1605 (TTAB 2014), here there is no doubt. As supported by the evidence, the

proposed mark, ULTIMATE GEL, is laudatory and merely describes a feature of

Applicant’s goods. Thus, Applicant’s applied-for mark ULTIMATE GEL is not

entitled to registration.

Decision: The refusal to register Applicant’s mark ULTIMATE GEL under

§ 2(e)(1) of the Trademark Act is affirmed.

19 Applicant’s Appeal Brief p. 2 (8 TTABVUE 3).

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