THE BEST BURGER IN L.A.

Can you trademark that line ? Or would you rather have one for lunch ? As to the latter, I had what may be the latest and newest additional upstart contender for THE BEST BURGER IN L.A. Go no further than R + D KITCHEN in Santa Monica, across from the Aero Theater, in the same space previously occupied for many years by the Wolfgang Puck restaurant group.

One Chedder Cheeseburger with fries and cole slaw, the latter two items ala carte. The presentation, first of all, was sensational ! Where was my camera ! Then you would certainly agree. This burger must have been prepared by a cosmetic surgeon. The service was impeccable. The server friendly and helpful. Missing was the 'attitude' that is all too prevalent in L.A. And hey, the restrooms are interesting with a common set of sinks adjacent to HIS and HERS private toilets. Very hip and stunning with its mirrors, tile, and fixtures. The open kitchen behind large windows is a nice touch to the R + D concept as well. There is an extensive wine list on a very large chalkboard behind the full bar which is accented with a couple of medium size flat screen tv's in case you wanted to keep track of the V.P. debate or the Dodgers.

And so if you are wondering what THE BEST BURGER IN L.A. has to do with trademarks, well here ya go... but just a primer cuz I know you're thinkin' about that burger:

1. THE BEST BURGER IN L.A. Is it registrable for restaurant services ? Might want to slap on a logo and some other distinctive elements as this mark may otherwise get brushed back by the USPTO as merely "laudatory". And if you want to know what the USPTO thinks of laudatory marks, well here ya go straight from the horses' mouth:

"Section 2(e)(1) Refusal (e.g.., laudatory marks):

Registration is refused because the applied-for mark _________________ merely is a laudatory claim about the goods/services - 'burgers'-'restaurants'. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

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).

Accordingly, the proposed mark is refused registration because it is descriptive under Section 2(e)(1) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration." (USPTO template remarks vis-a-vis Laudatory marks).

2. R + D KITCHEN. Definitely registrable for restaurant services if not confusingly similar to an earlier mark. "R + D" is neither descriptive or generic for restaurants and should be registrable. The term "Kitchen", however, has been held to be merely descriptive for restaurants and you would have to disclaim 'exclusivity' to the term 'kitchen'. And for those of you interested in the USPTO Template brush-back language with respect to the technical "Disclaimer" that will most certainly be required for a restaurant service mark application that includes a merely descriptive term such as "Kitchen", her ya go:

"Disclaimers

Applicant must insert a disclaimer of KITCHEN in the application because the term merely describes the goods offered by the applicant, particularly kitchen utensils and kitchen cookware. Please see the attached dictionary evidence of the term kitchen as meaning “a room or part of a room or building in which food is prepared and cooked.” Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

The following is the accepted standard format for a disclaimer:

No claim is made to the exclusive right to use “KITCHEN” apart from the mark as shown.

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).

A 'disclaimer' is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change."

3. All is not lost, however, because the USPTO may throw you a lifeline and extend an invitation to you to transfer your application to the "Supplemental Register", which is kind of like the USPTO's version of the NBA's Developmental League. For instance, here is the USPTO brush-back language and supplemental register invitation to an application for "THE BEST BURGERS ON EARTH", serial no. 76663664:

"The proposed mark, THE BEST BURGERS ON EARTH, merely describes a quality of the services. The services are restaurants. The proposed mark is laudatory, because it tells the potential consumer that applicant’s burgers are the best. Laudatory terms, those which attribute quality or excellence to goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). That is, laudatory terms are nondistinctive and unregistrable without proof of acquired distinctiveness. Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 USPQ 666 (S.D.N.Y. 1974) (EXQUISITE); In re Ervin, 1 USPQ2d 1665 (TTAB 1986) (THE ORIGINAL); In re Inter‑State Oil Co., 219 USPQ 1229 (TTAB 1983) (PREFERRED); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982) (WORLD CLASS); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN!). As a result, the proposed mark must be held to be merely descriptive of the services.

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

Although the trademark-examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal under Section 2e1 by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

If you still have questions, check out our website at: http://www.tmesq.com where we have several articles posted which may answer your questions.

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