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.