Why Whole Food’s application for a new trademark was rejected

| Aug 25, 2016 | Trademark Law

Whole Foods may very well be a healthy grocery store, but are they the worlds healthiest?

Somebody at Whole Foods must think so, as they recently applied for a trademark of “World’s Healthiest Grocery Store.” The U.S. Patent and Trademark Office rejected the application because it makes a “laudatory” claim. It is based on an exaggeration that cannot possibly be proven with factual information.

While exaggerated claims cannot necessarily be proven, applicants can overcome the Patent and Trademark Office’s initial rejection if the phrase is found to be a distinguishing mark of the company, rather than a factual claim. This was the argument used by Papa John’s in using “Better Ingredients, Better Pizza” since it was already something customers associated with the company. 

Whole Foods was successful in 2010 with a similar argument for their current slogan, “America’s Healthiest Grocery Store.” It is unlikely they will be able to do the same now, as they are only in markets in the U.S., Canada and Britain, not the entire world. They may wish to expand worldwide, but they aren’t there yet. As a result, it is doubtful the company will be able to lay claim to that particular moniker. 

If your trademark application has been rejected by the Patent and Trademark Office, it is important to understand that you have options. It can be beneficial to retain the services of an experienced intellectual property lawyer. Your attorney can provide advice and guidance regarding your trademark at any phase in the application process.

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