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Merely Laudatory Trademarks – The Whole Foods Story

Even the biggest brands don’t always get it right in the trademark department. Whole Foods calls itself “The World’s Healthiest Grocery Store.” But their attempt to register that phrase as a trademark didn’t work out quite as they planned.

I wrote about “Merely Laudatory Trademarks” back in 2012, when I covered the similar case of Dunkin’ Donuts’ attempt to register BEST COFFEE IN AMERICA as a trademark. In that blog post, I wrote:

Wording that is merely laudatory doesn’t really function as a trademark at all. Rather, that type of language – THE BEST this, WORLD’S GREATEST that – describes the goods or services in a positive light. While trademarks can be descriptive (proceed with caution, however, as descriptive marks tend to be entitled to a lesser form of trademark protection), this type of language is so common across all types of goods and services that the law regards it as “puffery.” Everybody claims their product is the finest in the land. Consumers have been trained to recognize this as common advertising language, not as a distinct, brand-identifying trademark.

Whole Foods’ trademark application ran into the same issue. The Examining Attorney assigned to the THE WORLD’S HEALTHIEST GROCERY STORE wrote:

…applicant’s services are that of a grocery store. The term HEALTHIEST is a form of the adjective HEALTHY, which describes “conducive to good health; healthful.” The “est” suffix indicates that the subject is the superlative degree of the adjective HEALTHY, or of the highest kind, quality, or order of being “healthy.” As shown from the attached evidence, the term “HEALTHIEST GROCERY STORE” is used to identify the best grocery stores for patrons’ health…“WORLD” means the earth and all the people and things on it and describes the scope of applicant’s services, i.e., as being the best in the world.

Whole Foods has three options at this point:

  1. Reply to the Examining Attorney and argue that their proposed mark is not merely laudatory, but is, in fact, distinctive. I’m not sure they have a strong argument to make, but who knows.
  2. Abandon the trademark application. This means that they can still continue to call themselves “The World’s Healthiest Grocery Store,” and, possibly, to build equity in that brand such that it become distinctive over time and therefore would be eligible for a future trademark registration; or
  3. Amend their trademark application from the Principal Register of Trademarks to the Supplemental Register. Registration on the Supplemental Register of Trademarks provides a more limited set of rights.
The Takeaway

Whenever possible, avoid branding your business with a phrase that could be considered “merely laudatory” – the best this, the healthiest that.

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