Whole Foods has marketed itself as a healthy and organic grocer and claims that it is “America’s Healthiest Grocery Store”. This branding effort has paid off as consumers tend to view the brand as a fresh alternative to big box grocery stores. But the Trademark Office recently put a damper on the grocery chain’s health hype when it rejected the company’s attempt to trademark “World’s Healthiest Grocery Store” because the mark is “self-laudatory” or a “puffing mark.”
Whole Foods attempt to obtain trademark registration on the “World’s Healthiest Grocery Store” appears to be part of its efforts to expand its brand internationally. It currently operates in only two countries outside the United States – Canada and England. The problem with the mark is that ““[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services]” and descriptive marks cannot be registered without first acquiring distinctiveness or secondary meaning. In this case, the mark was filed as intent-to-use application under Section 1(b) of the Trademark Act apparently because the mark had not yet been used in commerce at the time of filing. In order to demonstrate acquired distinctiveness, evidence of the marks long standing use or extensive use and how it is perceived by consumers is usually required. This is hard to do if the mark hasn’t been used in commerce yet.
As part of its domestic branding, Whole Foods previously filed a trademark application for “America’s Healthiest Grocery Store” in 2010. The application received the same “laudatory” Trademark Office rejection. The rejection stated that “laudatory words or terms that attribute quality or excellence to goods and/or services are considered merely descriptive.” Since trademarks that are merely descriptive are not registrable as trademarks unless the applicant can show that the mark acquired secondary meaning, Whole Foods had to provide or should have provided evidence of this. If an applicant can quantitatively show that evidence backs up its claim that consumers recognize the laudatory words as source identifiers, there is a better chance of receiving a trademark registration. While Whole Foods certainly markets itself as a healthy choice, it hasn’t put forth actual data to establish that consumers would associate “World’s Healthiest Grocery Store” as a trademark or source identifier for Whole Foods.
With previous experience dealing with this type of rejection, we’ll see how Whole Foods responds. Perhaps with additional international expansion and continued use over time, it will establish secondary meaning with consumers. At that point the Trademark Office may consider “World’s Healthiest Grocery Store” no longer merely descriptive.
There are lots of variables to consider with branding and the trademark process. If you have questions about filing a trademark, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.