Can You Trademark BEST, ULTIMATE or PRIME? How Praise-Word Marks Got Past a Laudatory Refusal

You are in this situation if your Section 2(e)(1) refusal calls a word in your mark laudatory, defines it as best, superior or highest in quality, and says the rest of the mark names your goods, so the whole reads as a claim of quality. These letters often cite THE ULTIMATE BIKE RACK and THE BEST BEER IN AMERICA and add that "[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services]."

Before you argue

If you have used the name for five years, a one-sentence claim of acquired distinctiveness under Section 2(f) is often the short path: ULTIMATE GI REPAIR filed the five-year statement 12 days after the fifth anniversary of its first-use date, with no argument, and was approved the next day. Our 2(f) article covers that route.

Praise words have a limit there. The manual cites THE BEST BEER IN AMERICA as "so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness" (TMEP 1209.03(k)).

The letter that refused BEST HEALTH, a name its application said was in use since 2002, warned that "the USPTO will not accept a verified statement of five years’ use alone to establish distinctiveness because applicant’s mark is highly descriptive of applicant’s goods and/or services." BEST HEALTH argued instead (route 1 below).

The Supplemental Register (a second-tier register for descriptive marks) is the fallback, not a strategy; most of the refused files below ended there, the intent-to-use ones only after filing proof of use.

If you decide to argue: four routes that got praise words registered

The manual's rule is short: "Laudatory terms, those that attribute quality or excellence to goods or services, are merely descriptive under §2(e)(1)" (TMEP 1209.03(k)). Each route below answers one part of it: whether the Office has already let the word through, whether it praises anything here, or whether the rest of the mark names the goods. GOOD GOOD, SUPERMOTOCROSS and TOPSERV won with argument and evidence alone, and ESIM PRIME's only disclaimer was already in its application; the other approved files also disclaimed the generic word or amended their services, as each row says. If your letter defines every word in your mark and the praise word is only one of several, the descriptive-words playbook fits your refusal better.

Whichever you choose, attach copies of the registrations and pages you rely on (USPTO status printouts or certificates). A list typed into the response does not count as evidence.

1. Your own registration already carries the praise word (prior decisions)

The rule: "The USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records" (TMEP 1216.01).

When it fits: you already own a live Principal Register registration of the same words, or of a mark built on the same praise word, for the same or overlapping goods, and the praise word was neither disclaimed nor claimed under 2(f).

What to file: the TSDR record or certificate of your registration, showing which words were disclaimed; any disclaimer of the generic word the examiner names; and, if you have them, other owners' registrations of the praise word (route 2), as both approved files did.

In their words. BEST HEALTH's response opened: "As an initial matter, the USPTO has already previously determined that Applicant’s Mark is not merely descriptive." GOOD GOOD said the doubled word "is in essence hyperbole and does not define with any degree of particularity Applicant’s food products." The final refusal that answered ULTIMATE FAMILY CABANA: "However, as Applicant acknowledges, the relevant family of marks is not long used, nor has applicant demonstrated that such a family exists."

The pattern: the approved files relied on Principal Register registrations of their own, for the same kind of goods, with the praise word left undisclaimed, and filed the records. ULTIMATE FAMILY CABANA's registrations were on the Supplemental Register and for other services, and the examiner treated them as an unproven family of marks.

2. Others registered the same praise word for the same goods (third-party registrations)

The rule: "Third-party registrations are not conclusive on the question of descriptiveness or genericness" (TMEP 1209.03(a)). The manual's example of the limit is a praise word: THE ULTIMATE BIKE RACK was held merely descriptive of bicycle racks although other Principal Register marks used ULTIMATE without a disclaimer.

When it fits: other owners have registered your praise word for goods or services in your class, on the Principal Register, with no disclaimer of it and no 2(f) claim.

What to file: a status printout or certificate for each registration. Choose the praise word itself, not the other words in your mark, and the same class. Expect the examiner to search too: registrations that disclaim the word count against you.

In their words. ESIM PRIME's response: "Below are representative examples of active Principal Register registrations for PRIME-formative marks in Class 38, covering streaming, communications, and data transmission services similar to those identified by the Applicant." The letter that answered PRIME FORMULAS: "Further, the following refusal(s) and/or requirement(s) has been withdrawn: Section 2(e)(1) Refusal." ULTIMATE NUGGETS's final refusal attached registrations in which ULTIMATE "was treated as a descriptive term for such goods."

The pattern: the approved files filed registrations of the praise word itself, PRIME, for their own class, and attached them. The refused files filed none (ULTIMATE NUGGETS only asserted that they exist) or filed registrations of the other word (GROWTH), and ULTIMATE NUGGETS's examiner answered with registrations that treated the word as descriptive.

3. The praise word has a second meaning that fits the goods (meaning judged against the goods)

The rule: "Descriptiveness must be determined in relation to the goods or services for which registration is sought," so "the fact that a term may have a different meaning(s) in a different context is not controlling" (TMEP 1209.03(e)). A second meaning helps only when it is a meaning the word has for your goods.

When it fits: read with your goods, the praise word also names something that is not praise: a related sport your events stage, a function your product performs.

What to file: the dictionary or trade meaning of the second sense, and the facts that tie it to your goods. Answer any questions the letter asks; SUPERMOTOCROSS's answers confirmed that its events feature both supercross and motocross.

In their words. SUPERMOTOCROSS, answering the examiner's question about competitors: "applicant is the first to use the term supermotocross for a combined championship event involving the best of both disciplines." PRIME LUBE asked whether PRIME refers to the oil's quality or "the function of priming or preparing an engine for use"; the next letter said "the following refusal has been withdrawn: Trademark Act Section 2(e)(1) Refusal: Merely Descriptive." SUPERSOUP's final refusal: "consumers will immediately understand the applied-for mark SUPERSOUP to convey information about applicant's goods, namely, that applicant provides soup products that are high in nutritional quality."

The pattern: the approved second meanings described the goods themselves without praising them: events that combine supercross and motocross, oil that primes an engine. SUPERSOUP's second meaning came from the founders' story and the company name on the label, and the examiner read SUPER against the soup.

4. The other words do not name the goods (the praise-word combination rule)

The rule: the manual quotes the Board's test for SUPER: "if the word 'super' is combined with a word which names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services, but if such is not strictly true, then the composite mark is regarded as suggestive of the products or services" (TMEP 1209.03(k)).

When it fits: the word after the praise word is not the name of your goods or services, or of their main component, when read with what you sell.

What to file: what the word means in your mark and why it is not the product's name. Check that your goods list, website and specimen do not use it as the product's name, because examiners read them.

In their words. TOPSERV said SERV "is an acronym which stands for Strategize, Engage, Rank and Validate." WORLD-CLASS WEALTH: "While it may suggest monetary wealth, it also encompasses wealth in knowledge, skills, and personal growth." The final refusal that answered SUPERTAG: "In this case and at least by definition, the goods are an electronic device attached to golf club for tracking purposes."

The pattern: the approved responses gave the second word a meaning that did not name what was sold: an acronym, personal growth for development courses. SUPERTAG's examiner showed others in the trade calling swing-tracking devices tags, so TAG named the goods.

Arguments that rarely carried a case alone

Arguments that the praise word is vague, subjective or names no particular feature appear in approved and refused files alike; ESIM PRIME and GOOD GOOD made them beside their registrations. ADVANCED HEALTHCARE CLINICS argued that ADVANCED "references a quality" but no particular service, with case law and nothing attached; the final refusal attached seven registrations to show that ADVANCED "is commonly disclaimed on the principal register for similar medical services as being merely descriptive and/or laudatory of medical services"; the mark registered on the Supplemental Register. LUXURY ANIMAL called luxury subjective; its final refusal answered that words such as luxury, premium, best and greatest "are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services," and the application was abandoned. For the routes that end a descriptiveness refusal without argument, see Common Descriptiveness Refusals: How to Overcome Them.

Two stock answers recur. ULTIMATE NUGGETS's final refusal: "It is enough if a mark describes only one significant function, attribute, or property." And to the argument that the word is mere puffery, the letter that refused TOPSERV: "puffing, if anything, is more likely to render a mark merely descriptive, not less so."

Finding cases like yours

GleanMark's Office Action research (Professional and Max plans) lets you select the "§2(e)(1) Descriptive" refusal and open files like the ones above, each with its Office Action, response and outcome; tick "Won by argument alone" to narrow to files like GOOD GOOD, SUPERMOTOCROSS and TOPSERV.

This article describes public USPTO records. It is not legal advice; each refusal turns on its own mark, goods and evidence.