–Susan Perera, Attorney
You see it quite often, phrases like “The Best Car in America” or “America’s Favorite Restaurant” used in advertising. The Trademark Office does not consider the truth of these statements when considering an application for such a trademark (which could possibly run afoul with false advertising); instead it focuses on the laudatory nature of these taglines. The Trademark Office routinely refuses registration of similar taglines on the basis that they are descriptive claims of superiority not registerable on the Principal Register without further evidence that the tagline has acquired distinctiveness in the minds of consumers (i.e. consumers will recognize the tagline and its source).
Dunkin’ Donuts is currently battling this exact issue in connection with its application to register BEST COFFEE IN AMERICA. When filing its application Dunkin’ Donuts claimed its mark had acquired distinctiveness based on its substantially exclusive and continuous use for at least the last five years. However, the Trademark Office recently issued an Office Action rejecting this claim as insufficient and mere puffery. Dunkin’ Donuts can take another bite at registration by submitting evidence in support of its claim. The Trademark Office will then have to determine whether this phrase can serve as a source of Dunkin’ Donuts’ goods in addition to touting the quality of its coffee.
So, is it possible for taglines like these to ever amount to more than “puffery” – here’s the test, can you identify the source of these taglines:
A . The Best Beer in America
B. America’s Favorite Fries
C. World’s Greatest Gourmet Sandwiches
D. America’s Favorite Ketchup
(A. Sam Adams, B. McDonald’s, C. Jimmy John’s, and D. Heinz)