A recently filed US service mark application by Whole Foods Market may not only prove to be a lengthy uphill battle for health-conscious dominance, but it may also be a sign of future global endeavors for the chain. On June 23, Whole Foods filed a federal service mark application with the US Patent and Trademark Office (USPTO) for the mark “WORLD’S HEALTHIEST GROCERY STORE” (Application No. 87081682). The service mark application, filed in International Class 035, for “retail grocery stores, retail and online grocery store services featuring home delivery, and supermarkets,” was filed on an intent-to-use basis, which means that Whole Foods has not used the mark yet, but plans to use it pending approval from the USPTO.
While this registration may seem straightforward to many at first glance, the quest to claim the top spot amongst competing brands through a trademark or service mark registration is often a fruitless one. Words that merely describe a product or a service, or even one of the characteristics of that product or service, are usually too weak to gain the requisite distinctiveness for a successful federal registration application. Included within this category of problematic words are laudatory terms, which attribute quality or excellence to goods or services. Often times, an attempt to claim ownership of a name or slogan with laudatory terms such as “best” or “greatest” ends up in a refusal from the USPTO.
A noteworthy example of how difficult these types of marks are to register is the failed attempt by Dunkin’ Donuts to register the slogan “BEST COFFEE IN AMERICA” (Application No. 85739062). Dunkin’ Donuts filed a service mark application in September of 2012 for “restaurant services; cafe services; snack bar services; [and] fast-food services” based on their use of the slogan since April of 2006. As evidence of their use, they submitted various press releases of theirs, where they describe the brand as having “the best coffee in America” by others. In November of 2012, the USPTO slapped Dunkin’ Donuts with an office action, noting that it was refusing the application because the “BEST COFFEE IN AMERICA” mark constituted “mere puffery” that was incapable of functioning as a trademark. However, they also noted that Dunkin’ Donuts could still use that language without federally registering the mark as part of its promotion of its restaurants, cafes and coffee. Despite being given the option to respond to this office action, Dunkin’ Donuts did not file a response and thus abandoned its efforts to gain federal registration of the slogan.
Given the difficulty in securing federal registrations for these types of marks, why then has Whole Foods even attempted to federally register the “WORLD’S HEALTHIEST GROCERY STORE” service mark? Well, it has already managed to do it once before. In January 2010, Whole Foods filed an application for the “AMERICA’S HEALTHIEST GROCERY STORE” service mark in International Class 035, for “retail grocery store services.” Not surprisingly, the USPTO hit Whole Foods with an office action, citing the laudatory quality of the word “healthiest” both standalone and in use with the other words as one of the reasons the mark was merely descriptive and as a result, refused.
Determined to fight on, Whole Foods filed their response to the office action, requesting that the refusal of the “AMERICA’S HEALTHIEST GROCERY STORE” be withdrawn. Whole Foods challenged the claim that the word “healthiest” was merely descriptive of retail grocery store services, arguing that the word “healthy” did not immediately or directly describe such a service. Pointing to the numerous definitions of the word “Healthy,” Whole Foods claimed that consumers could construe the word “healthiest” to convey the supermarket’s strong financial condition, its extensive offering of products, its clean and sanitary conditions, or even the supermarket’s large size. Because of this, Whole Foods claimed that the slogan did not merely describe service that was suggestive of good health. Whole Foods also pointed to other existing registrations containing the term “America’s Healthiest” in connection with other nouns to show that the term was distinctive enough to be federally registered. Astonishingly, in September 2010, the USPTO responded by withdrawing the refusal, requiring only that Whole Foods disclaim the descriptive nature of the term “GROCERY STORE” in the mark.
This latest filing by Whole Foods for “WORLD’S HEALTHIEST GROCERY STORE” made almost six years later indicates that it’s ready to fight the same battle with the USPTO—but why? The Whole Foods website indicates that it only operates within the US, UK and Canada. Could Whole Foods legitimately claim to be the entire world’s healthiest grocery store if its stores can only be found in three countries? Probably not, unless the company plans to open up more locations in countries it has yet to operate in. In fact, the trademark application could be a sign that Whole Foods could be planning to expand its locations beyond just three countries.
However, this could all just be wishful thinking, as there is no news that the supermarket is on the path to further global expansion. For now, let’s wait and see if Whole Foods can manage to convince the USPTO once more to register its claim as the healthiest grocery store around.
Mike Ortega is an Associate Trademark Consultant for Interbrand in New York.