Dunkin’ Donuts application to register the mark BEST COFFEE IN AMERICA has been initially rejected by the USPTO because it “is merely laudatory and descriptive of the alleged merit of applicant’s services and the goods featured therein.” Moreover, Dunkin’ Donuts’ “slogan is nothing more than a claim of superiority and is so highly laudatory and descriptive of the 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.” On this point, the USPTO cited In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) which held that the mark THE BEST BEER IN AMERICA was “so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness.”
Notably, the examining attorney’s comments relate to the fact that this mark had previously been rejected in 2005, at which time Dunkin’ Donuts amended its application and obtained registration for this mark on the Supplemental Registry in 2007. Presumably, Dunkin’ Donuts sought to use the mark’s five years on the Supplemental Registry as a means to bolster the argument that this slogan had acquired distinctiveness through extensive use and association with Dunkin’ Donuts. For the moment, the USPTO is not buying that argument. That said, this was an initial rejection and it will be interesting to see what arguments Dunkin’ Donuts brings to bear in its efforts to overcome this hurdle.
On February 10th, Frito-Lay filed suit in the Eastern District of Texas against private-label specialist Ralcorp and accused it of infringing Frito-Lay’s federally-registered trademark for bowl-shaped tortilla chips (below) by manufacturing, on behalf of Wal-Mart, MEDALLION BOWLZ tortilla chips.
In this regard, Frito-Lay contends that its design mark (U.S. Reg. No. 2,766,278) is embodied in its TOSTITOS SCOOP! tortilla chips (on left) and that the MEDALLION BOWLZ chips (on right) are confusingly similar.
Frito-Lay further alleges, “on information and belief,” that Ralcorp infringed three utility patents relating to the manufacture of such chips.
On the same day Frito-Lay filed its suit, Ralcorp counter-sued in the Eastern District of Arkansas for declaratory judgment of non-infringement and cancellation of Frito-Lay’s design mark based on assertions that (a) the “bowl-shaped configuration” of the chip is “functional” by allowing the user to use the chip as a bowl for salsa, dip, etc., and thus not allowed as a trademark, and (b) the design mark has been abandoned because TOSTITOS SCOOP! chips do not, according to Ralcorp, incorporate the particular aspects of the mark. Not surprisingly, the parties are presently engaged in motion practice with regard to the proper forum for the litigation.
Ralcorp’s attacks on Frito-Lay’s design mark — especially the “functional” claim — have some heft. That said, if Frito-Lay obtains evidence of actual consumer confusion then its claims will gain strength. All in all, this will be an interesting case to follow and epitomizes the battle between established, national brands and private label / house brands that have increased since the 2008 economic downturn.
In an article titled Trademarks Take on New Importance in the Internet Era, the New York Times highlights a dispute in which Frito-Lay is contesting registration of the mark PRETZEL CRISPS with the USPTO’s Trademark Trial and Appeal Board (TTAB). As noted in the article:
Frito-Lay contends that Pretzel Crisps cannot be registered as a trademark because it is a generic term. “Like ‘milk chocolate bar,’ the combination of ‘pretzel’ and ‘crisp’ gains no meaning as a phrase over and above the generic meaning of its constituent terms,” the company wrote in a 2010 motion.
The dispute will ultimately come down to whether the public views this term as being “generic” or as having trademark significance, i.e., as identifying the source of the goods. Notably, PRETZEL CRISPS have been on sale since 2004 and it appears there is evidence supporting each side’s position.
See full article here.