On June 23rd, Whole Foods Markets IP, L.P. (which I assume is a limited partnership holding Whole Food's intellectual property assets) filed a federal trademark application for the phrase WORLD'S HEALTHIEST GROCERY STORE.
The grocery store filed this application in Class 035 on an intent-to-use basis for "[r]etail grocery stores; [r]etail and on-line grocery store services featuring home delivery service; [and] [s]upermarkets[.]" If Whole Foods is successful in registering this trademark, it will have the exclusive, nationwide right to use the phrase in conjunction with services related to those listed above.
However, registration of this phrase is far from guaranteed. For one, the store filed this application on an intent-to-use basis. This means the store will need to actually start using the mark in commerce, and provide sufficient proof of such use to the Trademark Office, before the mark will register. See TMEP 902.
Additionally, there is a significant risk that the Trademark Office will deem this phrase to be a common laudatory phrase that is too descriptive or generic to serve as a trademark. See TMEP 1209.03(s). Descriptive and generic phrases are prohibited from registration on the Principal Register under Section 2(e)(1) of the Trademark Act until they acquire distinctiveness.
For example, in In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) the phrase THE BEST BEER IN AMERICA, as applied to beer and ale, was found to be "so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." This decision was based, in part, on the fact "that 'The Best Beer in America' is a common phrase used descriptively by others before and concurrently with Boston Beer's use, and is nothing more than a claim of superiority."
So is the phrase WORLD'S HEALTHIEST GROCERY STORE, as applied to retail grocery stores and supermarkets, so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark, much like THE BEST BEER IN AMERICA? Are other grocery stores using a similar phrase? Is it nothing more than a claim of superiority? I think so. In approximately three months when this application is assigned to an Examining Attorney at the Trademark Office, we will find out if I am right.
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