The United States Patent and Trademark Office has rejected Whole Foods’ application for the trademark WORLD’S HEALTHIEST GROCERY STORE. Whole Foods filed its initial application on June 23, 2016. In its application, Whole Foods disclaimed any exclusive right to the use of the term “grocery store.”
In the Office Action refusing registration, the trademark examining attorney issued a § 2(e)(1) refusal on the basis that the mark was merely descriptive. In determining the merely descriptive refusal, the examining attorney referred to Federal Circuit precedent which holds that marks which are merely laudatory and descriptive of the alleged merit of the product or service are regarded as descriptive marks. This is because “self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.” See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)).
This is not the end of the road for Whole Foods in its plight to secure trademark registration for the WORLD’S HEALTHIEST GROCERY STORE mark. Whole Foods has an opportunity to respond to the USPTO’s office action. Even if the mark is refused refusal, Whole Foods need only use the mark in commerce and demonstrate at a later date that consumers associate the WORLD’S HEALTHIEST GROCERY STORE mark with its brand to secure registration of the mark. This level of consumer association is referred to as “acquired distinctiveness,” which we previously discussed on the blog.
Chelsie Spencer is a Senior Associate with the Dallas office of Kennedy Law, PC. She may be reached at 214-716-4345.