As reported by the Boston Globe on Boston.com, Dunkin Donuts has filed an application to register “BEST COFFEE IN AMERICA” as a trademark for “restaurant services.” One may wonder how Dunkin Donuts could claim rights in such a descriptive mark. After all, it is in the business of selling coffee, and the mark clearly describes the services it provides. Several publications covering this story have cited this as an example of trademark law gone awry. Why on earth should anyone have the exclusive right to use this mark?
It is well settled that descriptive marks, that is, marks that merely describe the quality, nature or characteristics of goods and services, are not entitled to full protection as trademarks without a showing of “secondary meaning” (i.e., that the mark has become associated with the goods or services in the mind of consumers). If a mark is truly descriptive, the mark should presumably be available to everyone to describe similar goods or services.
Notably, there are two “registers” on which trademarks can be registered in the United States. The “Principal Register” provides the greatest protection and is reserved for marks that are distinctive (meaning, in general terms, that they are unusual in the context of their use and do not describe their goods or services). The “Supplemental Register,” on the other hand, is available for marks that are descriptive.
Trademarks that are descriptive but have also acquired “secondary meaning” in the minds of consumers may be registered on the Principal Register after five years of exclusive and continuous use in commerce, usually upon a showing of substantial sales and advertising expenses.
It turns out that Dunkin Donuts registered “BEST COFFEE IN AMERICA” on the Supplemental Register in 2006. This step allowed it to (i) obtain a federal registration (albeit a weak one), and (ii) put others on notice of its claim of rights in the mark. Dunkin Donuts then proceeded to use the mark in commerce. More than five years later, Dunkin Donuts now seeks a registration on the Principal Register, claiming that the mark has acquired secondary meaning.
Whether this strategy will be successful is uncertain, although it is clear that Dunkin Donuts will have an uphill battle. The Boston Beer Company (“Boston Beer”), brewers of SAMUEL ADAMS, previously sought to register “THE BEST BEER IN AMERICA” as a trademark. Registration was denied by the U.S. Patent and Trademark Office, and eventually a federal appeals court held that the mark was “so highly laudatory and descriptive as to be incapable of functioning as a trademark.” This was the case even though Boston Beer had submitted evidence of tens of millions of dollars in sales and advertising expenditures. The Court relied heavily on the fact that the same mark had been used by third parties to describe their goods both before and concurrently with the use by Boston Beer. Based on the facts of that particular case, the Court held that Boston Beer had not met its burden of proving secondary meaning. The Court acknowledged, however, that “laudation does not per se prevent a mark from being registrable,” thereby leaving the door open for Dunkin Donuts to make its case for registration.
Whether Dunkin Donuts can convince consumers that it has the “BEST COFFEE IN AMERICA” is another debate.
