Dunkin’ Donuts may claim it has
the “Best Coffee in America” but the U.S. Patent and Trademark Office (USPTO) found
the phrase was mere “puffery” and had not acquired a secondary meaning sufficient to be
registered on the principal register.
In 2007, Dunkin’ Donuts registered
the phrase “Best Coffee in America” for restaurant services, snack bar
services, and fast-food restaurant services on the USPTO’s Supplemental
Register. The Supplemental Register
allows a party to use a mark with the symbol ®.
It also prevents subsequent applications for confusingly similar marks
for similar goods or services. However, unlike marks registered on the Principal Register, it does not allow the mark to become uncontestable nor does it include the presumption
of validity. A registration of a mark on
the Supplemental Register sometimes is used until the mark acquires a secondary meaning and becomes distinctive.
In September 2012, Dunkin’
Donuts sought to register the phrase on the USPTO’s Principal Register,
claiming that “Best Coffee in America” has become “distinctive” because of its
continued use by Dunkin’ Donuts at its various locations and in its press
releases.
In an Office Action issued
earlier this month, the Examining Attorney found the “Best Coffee in America” slogan
“is nothing more than a claim of superiority and is so highly laudatory and
descriptive of quality of the coffee featured in applicant’s restaurants, cafes
and snack bars that applicant’s claim of acquired distinctiveness, based on
five years’ use of the mark in commerce, is insufficient and unpersuasive.”
In addition, the Office Action
found that the phrase “fits firmly in the category of marks identified . . . as
being mere ‘puffery’ and incapable of functioning as a trademark. ‘Best Coffee in America’ touts simply that
the coffee featured at applicant’s restaurants are [sic] superior to other coffees in
this country. While applicant may use
this wording in promoting its restaurants and cafes and the coffee sold
therein, the proposed mark does not function to indicate the source of
applicant’s services or distinguish applicant’s services from those of others.”
Dunkin’ Donuts, which applied for
the mark as DD IP Holder LLC, has six months to file a response to the Office
Action to contest the finding. If the
finding is not reversed by the Examining Attorney, then the company may file an
appeal to the Trademark Trial and Appeal Board.