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Boston has the best beer, but does it have the best trademarks?

Posted by Chad O'Connor  November 27, 2012 11:00 AM

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It may be a no brainer for any Bostonian that the best beer in the country originates in Boston. Now Dunkin’ Donuts is laying claim to the best coffee. Last month, Dunkin’ Donuts filed a trademark application for the mark BEST COFFEE IN AMERICA. In an article that ran in the Boston Globe on October 4, 2012, several commentators expressed skepticism that this application would be successful, largely because the phrase is laudatory and not something that consumers would think was connected to a single source.

As it happens, the trademark case almost directly on point involves an application filed by another Boston heavy, Boston Beer Company, in 1993 for THE BEST BEER IN AMERICA. The Trademark Office refused to register this mark to the makers of Samuel Adams because it found the mark merely descriptive of and laudatory for the goods at issue. The Boston Beer Company appealed this decision, but the appellate court rather severely stated that the mark was “so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as an indication of origin.” (emphasis added). This decision means that Dunkin’ Donuts is fighting an uphill battle in its attempt to register BEST COFFEE IN AMERICA.

But Dunkin’ Donuts has adopted an interesting strategy with respect to this trademark application. To understand the strategy, a little background is necessary.

First, the core purpose of a trademark is consumer protection. A trademark tells consumers that a certain product originates from a certain source. Trademarks enable consumers to recognize and distinguish between goods quickly and efficiently.

With this in mind, merely descriptive and laudatory terms typically do not function as source identifiers because the consuming public perceives these marks as describing the goods at issue rather than indicating the source of the goods. If the Trademark Office allowed one company to register THE BEST BEER IN AMERICA, other beer companies would arguably be at a disadvantage if they could not use THE BEST BEER IN AMERICA to describe their own beers. But merely descriptive terms may sometimes eventually qualify for trademark protection on the Principal Register.

Trademarks may be registered on the Principal or the Supplemental Registers. While a registration on the Principal Register confers greater rights on the trademark owner, the Supplemental Register confers some rights and often serves as a sort of purgatory for marks that the Trademark Office found too descriptive for the Principal Register but still capable of serving as a source-identifier. The idea is that if a company continuously used THE BEST BEER IN AMERICA in such a way that consumers began to associate the slogan solely with that company, the mark could eventually be registered on the Principal Register.

Some marks, however, are so descriptive of the goods at issue, that they are deemed generic and cannot be registered even on the Supplemental Register. For example, you likely could not obtain a registration for DINER for a diner because that is the generic name of such an establishment.

The problem that The Boston Beer Company ran into with its trademark application was the court’s harsh ruling, which stated that the proposed mark could not function as a source identifier, much like DINER could not serve as a source identifier for a diner. With that language, the court effectively banished the mark from even the Supplemental Register.

Dunkin’ Donuts apparently learned from this experience and, rather than appeal the refusal of an application for BEST COFFEE IN AMERICA back in 2005, amended its application to the Supplemental Register and allowed its mark to sit in trademark purgatory until now. Presumably, this Supplemental Registration will be used to support its current application for BEST COFFEE IN AMERICA on the Principal Register, although it remains to be seen whether this strategy will be successful.

What This Battle for BEST Means For You
While your marketing people may favor trademarks that indicate to consumers what your company’s goods or services are, such trademarks are usually weak and are often rejected by the Trademark Office as seen above. Much stronger marks are arbitrary with respect to the goods or services at issue or, even better, coined by the company. APPLE for computers is a great example of an arbitrary mark, and POLAROID, which originated in Boston, is an example of a coined trademark. If, however, you are determined to obtain a registration for a term or phrase that may describe your goods or services in some way, or that serves as a laudatory phrase, it may be best to accept a registration on the Supplemental Register and use the mark as much as possible for five years, at which point you stand a much better chance of obtaining a registration on the Principal Register.

Anderson J. Duff is an intellectual property attorney at Wolf Greenfield.

This blog is not written or edited by Boston.com or the Boston Globe.
The author is solely responsible for the content.

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