In Re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001). · Go Syfert
In Re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001). Cases Citing This Book View Copy Cite
72 citation events (72 in the last 25 years) across 9 distinct courts.
Strongest positive: Misty Everson and Christine Maynard (ttab, 2026-03-31)
Treatment trajectory · 2001 → 2026 · click a year to view as-of
2001 2013 2026
Top citers, strongest first. 35 distinct citers. How cited ↗
examined Cited as authority (verbatim quote) Misty Everson and Christine Maynard
ttab · 2026 · quote attribution · 1 verbatim quote · confidence high
even if some prior registrations had some 42 id. at 6-7. 22 serial no. 97104306 characteristics similar to application, the allowance of such prior registrations does not bind the board or this court.
examined Cited as authority (verbatim quote) In Re BRUNETTI (3×) also: Cited as authority (rule), Cited "see"
Fed. Cir. · 2025 · signal: see also · quote attribution · 1 verbatim quote · confidence high
even if some prior registrations had some characteristics similar to , the pto's allowance of such prior registrations does not bind the board or this court.
discussed Cited as authority (verbatim quote) In Re R.S. LIPMAN BREWING COMPANY, LLC
Fed. Cir. · 2025 · signal: see · quote attribution · 1 verbatim quote · confidence high
the board must decide each case on its own merits.
discussed Cited as authority (verbatim quote) Moke America LLC v. American Custom Golf Cars, Inc.
E.D. Va. · 2023 · quote attribution · 1 verbatim quote · confidence high
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 or this court.
discussed Cited as authority (verbatim quote) In Re Stereotaxis, Inc. (2×) also: Cited "see"
Fed. Cir. · 2005 · signal: see · quote attribution · 1 verbatim quote · confidence high
any competent source suffices to show the relevant purchasing public's understanding of a contested term or phrase.
discussed Cited as authority (verbatim quote) In Re Stereotaxis, Inc. (2×) also: Cited "see"
Fed. Cir. · 2005 · signal: see · quote attribution · 1 verbatim quote · confidence high
any competent source suffices to show the relevant purchasing public's understanding of a contested term or phrase.
discussed Cited as authority (rule) Tuong Nguyen v. Smartervitamins Corporation
C.D. Cal. · 2023 · confidence medium
“Laudatory 8 marks” are marks “that describe the alleged merit of the good” and “are descriptive 9 because they simply describe the characteristics or quality of the goods in a 10 condensed form.” In re Nett Designs, 236 F.3d 1339, 1341 (Fed.
discussed Cited as authority (rule) Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC
Fed. Cir. · 2021 · confidence medium
Descriptiveness is not evaluated “in the abstract,” or broadly as to the class of goods that the applicant sells (brewing supplies), but rather it must be evaluated “in re- lation to the particular goods for which registration is 6 “A suggestive mark qualifies for registration with- out secondary meaning.” In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.
discussed Cited as authority (rule) In Re: North Carolina Lottery (2×) also: Cited "see, e.g."
Fed. Cir. · 2017 · confidence medium
As . the PTO argues, the:- T.TAB “must consider a mark in .its commercial context to determine the public’s - perception.” Appellee’s Br. 9-10 (citing In re Nett Designs, 236 F.3d 1339, 1342 (Fed.
discussed Cited as authority (rule) In Re: Cordua Restaurants, Inc.
Fed. Cir. · 2016 · confidence medium
See, e.g., In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174 (Fed.Cir.2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed.Cir.2001) (“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.”).
discussed Cited as authority (rule) UBER Promotions, Inc. v. UBER Technologies, Inc.
N.D. Fla. · 2016 · confidence medium
A term such as “uber” “may slide along the continuum between suggestiveness and descriptiveness depending on usage, context, and other factors that affect the relevant public’s perception of the term.” In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001) (discussing the term “ultimate”).
cited Cited as authority (rule) Juice Generation, Inc. v. Gs Enterprises LLC
Fed. Cir. · 2015 · confidence medium
In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001) (“Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a question of fact.”).
cited Cited as authority (rule) In Re: Trivita, Inc.
Fed. Cir. · 2015 · confidence medium
“A merely descriptive mark qualifies for registration only if the applicant shows that it has acquired secondary meaning.” In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001).
discussed Cited as authority (rule) In Re: The Newbridge Cutlery Company
Fed. Cir. · 2015 · confidence medium
On the other hand, the fact that the PTO has registered “newbridge” in contexts where the goods did not originate *864 from Newbridge is not particularly probative since the PTO may have found no goods/place association in those contexts and, in any event, “decisions regarding other registrations do not bind either the agency or this court.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed.Cir.2003) (citing In re Nett Designs, 236 F.3d 1339, 1342 (Fed.Cir.2001)).
examined Cited as authority (rule) Dalton v. Honda Motor Co., Ltd. (3×) also: Cited "see"
Fed. Cir. · 2011 · confidence medium
Even if there are third-party registrations using similar words, the Board “must decide each case on its own merits.” In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed.
discussed Cited as authority (rule) Rexel, Inc. v. Rexel International Trading Corp.
C.D. Cal. · 2008 · confidence medium
(See Pls.’ Resp. to Separate Stmt, of Undisputed Material Facts ¶ 11.) Specifically, Defendant maintains that, because the meaning which can be ultimately extrapolated *1165 from this combination is “King of Electrical Suppliers,” the marks are “laudatory.” See, e.g., In re Nett Designs, 236 F.3d 1339, 1341 (Fed.Cir.2001) (“Laudatory marks that describe the alleged merit of the goods are descriptive because they simply describe the characteristics or quality of the goods in a condensed form.”); see also Murphy v. Provident Mut.
discussed Cited as authority (rule) In Re Dss Environmental, Inc. (2×)
Fed. Cir. · 2004 · confidence medium
In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001), citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir.1983).
cited Cited as authority (rule) Malaco Leaf, AB v. Promotion in Motion, Inc.
S.D.N.Y. · 2003 · confidence medium
In re Nett Designs, Inc., 236 F.3d 1339, 1341-42 (Fed.Cir.2001); In re Boston Beer Co., 198 F.3d 1370, 1373-74 (Fed.Cir.1999); 1 J.
discussed Cited as authority (rule) In Re MBNA America Bank, N.A. (2×)
Fed. Cir. · 2003 · confidence medium
In re Nett Designs, 236 F.3d 1339, 1341 (Fed.Cir.2001).
cited Cited as authority (rule) In Re the Boulevard Entertainment, Inc
Fed. Cir. · 2003 · confidence medium
In re Nett Designs, 236 F.3d 1339, 1342 (Fed.Cir.2001).
examined Cited as authority (rule) In re Anylens Acquisition, LLC (4×) also: Cited "see"
Fed. Cir. · 2003 · confidence medium
In re Nett Designs, Inc., 236 F.3d 1339, 1341 , 57 USPQ2d 1564, 1566 (Fed.Cir.2001).
cited Cited as authority (rule) In re Dayan
Fed. Cir. · 2003 · confidence medium
In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001).
cited Cited as authority (rule) In re Galbreath
Fed. Cir. · 2002 · confidence medium
In re Nett Designs, Inc., 236 F.3d 1339, 1341 , 57 USPQ2d 1564, 1566 (Fed.Cir.2001).
cited Cited as authority (rule) In re Watts
Fed. Cir. · 2001 · confidence medium
In re Nett Designs Inc., 236 F.3d 1339, 1341 , 57 USPQ2d 1564, 1565 (Fed.Cir.2001).
discussed Cited "see" In Re A. ZETA S.R.L.
Fed. Cir. · 2022 · signal: see · confidence high
See In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed.
discussed Cited "see" In Re A. ZETA S.R.L.
Fed. Cir. · 2022 · signal: see · confidence high
See In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed.
discussed Cited "see" The Corps Group v. Afterburner, Inc.
Ga. Ct. App. · 2015 · signal: see · confidence high
See Qualitex Co. v. Jacobson Products Co., 514 U. S. 159, 163-164 (II) ( 115 SCt 1300 , 131 LE2d 248) (1995). 10 For examples of descriptive marks, see In re Nett Designs, Inc., 236 F3d 1339, 1342 (II) (Fed.
discussed Cited "see" Best Chairs Inc. v. Factory Direct Wholesale, LLC (2×)
S.D. Ind. · 2015 · signal: see · confidence high
See In re Nett Designs, Inc., 236 F.3d 1339 , 57 USPQ2d 1564 (Fed.Cir.2001) (THE ULTIMATE BIKE RACK unprotectable); In re Best Software Inc., 58 U.S.P.Q.2d 1314 (TTAB 2001) (BEST and PREMIER in mark BEST!
cited Cited "see" In re STEELBUILDING.COM
Fed. Cir. · 2005 · signal: see · confidence high
See In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001).
cited Cited "see" In Re steelbuilding.com
Fed. Cir. · 2005 · signal: see · confidence high
See In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001).
cited Cited "see" In Re Oppedahl & Larson LLP
Fed. Cir. · 2004 · signal: see · confidence high
See In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001).
cited Cited "see" In re Savin Corp.
Fed. Cir. · 2003 · signal: see · confidence high
See In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001).
cited Cited "see, e.g." In Re: Driven Innovations, Inc.
Fed. Cir. · 2017 · signal: see, e.g. · confidence medium
See, e.g., In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed.
discussed Cited "see, e.g." Classic Liquor Importers, Ltd. v. Spirits International B.V.
S.D.N.Y. · 2016 · signal: see also · confidence medium
See id.; see also In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001) (“Laudatory marks that describe the alleged merit of the goods are descriptive because they simply describe the characteristics or quality of the goods in a condensed form.”); In re Quality Trans Parts Inc., 2005 WL 3316567 , at *2 (T.T.A.B.
discussed Cited "see, e.g." In Re Joanne Slokevage
Fed. Cir. · 2006 · signal: see also · confidence medium
Co., 238 F.3d 1357, 1359 (Fed.Cir.2001) (“The issue of inherent distinctiveness is a factual determination made by the board”); see also In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.2001) (“Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a *960 question of fact”).
Retrieving the full opinion text from the archive…
In Re NETT DESIGNS, INC.
74,677,635, 00-1075.
Court of Appeals for the Federal Circuit.
Jan 9, 2001.
236 F.3d 1339
Paul M. Craig, Jr., of Silver Spring, MD, argued for appellant., Mark Nagumo, Associate Solicitor, Office of the Solicitor, of Arlington, VA, argued for appellee. With him on the brief were Albín F. Drost, Acting Solicitor; Nancy C. Slutter, Acting Deputy Solicitor; and Eric Grimes, Associate Solicitor. Of counsel was Henry G. Sawtelle, Attorney.
Mayer, Rader, Bryson.
Cited by 36 opinions  |  Published
RADER, Circuit Judge.

The Trademark Trial and Appeals Board sustained an examiner’s disclaimer requirement in Nett Designs, Inc.’s application for the mark LOAD LLAMA THE ULTIMATE BIKE RACK and design. In re Nett Designs, Inc., Ser. No. 74/677, 635, slip op. (TTAB June 3, 1999), recons, denied Ser. No. 74/677,635 (TTAB Aug. 6, 1999). Because substantial evidence supports the Board’s determination that the phrase THE ULTIMATE BIKE RACK is descriptive, this court affirms.

I.

Nett Designs applied to register LOAD LLAMA THE ULTIMATE BIKE RACK and design (shown below) for “carrying racks for mounting on bicycles, accessories for bicycle racks, namely attachments for expanding the carrying capacity of a carrying rack for mounting on bicycles, and bungee cords sold together as a unit with such carrying racks.”

[[Image here]]

An examiner required Nett Designs to disclaim the phrase THE ULTIMATE BIKE RACK as descriptive of Nett Designs’ goods. During prosecution, Nett Designs submitted a number of third-party registrations that included the term ULTIMATE, arguing that those registrations were evidence that the term ULTIMATE was not descriptive. The examiner maintained that the phrase was descriptive and rejected the application when Nett Designs refused to disclaim the phrase.

Nett Designs appealed to the Board. The Board considered several dictionary definitions of the term ULTIMATE, and the applicant’s use of the mark in its submitted specimen. In re Nett Designs, Inc., Ser. No. 74/677, 635, slip op. at 2-4, 7-8 (TTAB June 3, 1999). The Board considered the prior third-party registrations[*1341] submitted by Nett Designs to the examiner, but decided that' those registrations were not persuasive. Id. at 8-9. The Board concluded that the phrase THE ULTIMATE BIKE RACK described Nett Designs’ goods in a laudatory manner. Id. In requesting reconsideration, Nett Designs attempted to enter into evidence a list of 158 registered marks that included the term ULTIMATE, but the Board refused to consider the list and denied Nett Designs’ request for reconsideration. In re Nett Designs, Inc., Ser. No. 74/677,635, slip op. at 3 (TTAB Aug. 6, 1999).

II.

This court upholds the Board’s factual findings if supported by substantial evidence. On Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471 (Fed.Cir.2000). This court exercises plenary review of the Board’s legal conclusions. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1569, 218 USPQ 390, 394 (Fed.Cir.1983). Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a question of fact. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570, 4 USPQ2d 1141, 1143 (Fed.Cir.1987). Accordingly, this court must affirm the Board’s finding that the phrase THE ULTIMATE BIKE RACK is descriptive if substantial evidence supports that finding.

A merely descriptive mark qualifies for registration only if the applicant shows that it has acquired secondary meaning. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2758, 120 L.Ed.2d 615 (1992). During examination, the United States Patent and Trademark Office (PTO) “may require the applicant to disclaim an unregisterable component of a mark otherwise registrable.” 15 U.S.C. § 1056(a) (1994). Thus, the examiner’s disclaimer requirement is proper if the phrase THE ULTIMATE BIKE RACK is merely descriptive and thus not registerable.

A mark is merely descriptive if it immediately conveys qualities or characteristics of the goods. In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed.Cir.1987). However, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods, then the mark is suggestive. Id. A suggestive mark qualifies for registration without secondary meaning. Id. The perception of the relevant purchasing public sets the standard for determining descriptiveness. In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed.Cir.1986). Any competent source suffices to show the relevant purchasing public’s understanding of a contested term or phrase. Id. Laudatory marks that describe the alleged merit of the goods are descriptive because they simply describe the characteristics or quality of the goods in a condensed form. In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed.Cir.1999).

In the complex world of etymology, connotation, syntax, and meaning, a term may possess elements of suggestiveness and descriptiveness at the same time. No clean boundaries separate these legal categories. Rather, a term may slide along the continuum between suggestiveness and descriptiveness depending on usage, context, and other factors that affect the relevant public’s perception of the term. See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir.1983) (“These categories, like the tones in a spectrum, tend to blur at the edges and merge together. The labels are more advisory than definitional, more like guidelines than pigeonholes.”). The term ULTIMATE has some elements of suggestiveness because it does not define any particular characteristic and requires the exercise of some imagination in order to reach a conclusion about the nature of the recited goods. On the other hand, ULTIMATE also has some elements of descriptiveness because it has a laudatory or puffing connotation. The Board, however, has the duty to place this term in its[*1342] proper context within the mark and to determine the public’s perception.

The Board noted that dictionary definitions of ULTIMATE include “[r]epresent-ing or exhibiting the greatest possible development or sophistication: the ultimate bicycle,” In re Nett Designs, Inc., Ser. No. 74/677,635, slip op. at 7-8 (TTAB June 3, 1999) (quoting The American Heritage Dictionai'y of the English Language (3d ed.1992)), and “greatest or highest possible,” id. at 8 (quoting Webster’s New World College Dictionary (3d ed.1997)). The advertising brochure, which Nett Designs submitted as a specimen of use for its application, advances such meanings by stating, “The ‘Load Llama The Ultimate Bike Rack’ allows users of bicycles to enjoy the ride without constant apprehension that carried-along objects may fall off the carrier,” and “this is the rack, a basket without the bulk.” Such statements advance the consumer perception that Nett Designs’ bike racks represent or exhibit the greatest possible development or sophistication. Accordingly, substantial evidence supports the Board’s finding that consumers will immediately regard THE ULTIMATE BIKE RACK as a laudatory descriptive phrase that touts the superiority of Nett Designs’ bike racks.

The record in this case contains many prior registrations of marks including the term ULTIMATE. These prior registrations do not conclusively rebut the Board’s finding that ULTIMATE is descriptive in the context of this mark. As discussed above, the term ULTIMATE may tilt toward suggestiveness or descriptiveness depending on context and any other factor affecting public perception. The Board must decide each case on its own merits. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed.Cir.1985). 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.

Needless to say, this court encourages the PTO to achieve a uniform standard for assessing registrability of marks. Nonetheless, the Board (and this court in its limited review) must assess each mark on the record of public perception submitted with the application. Accordingly, this court finds little persuasive value in the registrations that Nett Designs submitted to the examiner or in the list of registered marks Nett Designs attempted to submit to the Board. This court thus does not reach Nett Designs’ assertion that the Board erred by refusing to consider the list of registered marks submitted to the Board with Nett Designs’ request for reconsideration.

Because substantial evidence supports the Board’s finding that the phrase THE ULTIMATE BIKE RACK is descriptive of Nett Designs’ goods in a laudatory manner, this court affirms.

COSTS

Each party shall bear its own costs.

AFFIRMED.