from the nice-try dept
We’ve talked surprisingly little about Whole Foods here at Techdirt. I suppose that the hipster’s grocery paradise has somehow evaded most of the trappings of intellectual property concerns. Good on them for that. Less good is the company’s recent simultaneous attempts to expand internationally while also applying for a trademark with the USPTO for “World’s Healthiest Grocery Store.” Neither are going very well, it seems, and it turns out they’re interrelated.
The international push has not been as lucrative as executives hoped. That’s in part thanks to efforts bycheaper options such as Walmart to expand its organic sections and preexisting upscale grocers that have claimed what might be Whole Food’s clientele, such as the United Kingdom’s Waitrose. Whole Foods co-chief executive Walter Robb told The Wall Street Journal that his company would open more than 80 new storefronts in Canada in 2015 and 2016. The current tally, though, is three; 2015 brought the opening of one location in British Columbia, with another slated to open in the fall. It will also open a location in Alberta this fall, Whole Foods said last year. That would bring its total store count to 13.
So, Whole Foods is a mostly US-based chain, with a handful of stores in the UK and Canada. I mentioned that this slow, barely-expanding growth through the rest of the world had an impact on its application to trademark “World’s Healthiest Grocery Store.” How? Well, it turns out the USPTO actually bothered to think about whether the claim in the mark was, you know, true.
Unfortunately for the grocer’s efforts, the U.S. Patent and Trademark Office recently rejected its application to register that slogan. Whole Foods will have six months to update and refile the case and may choose not to do so, although that seems unlikely. The agency said it rejected the trademark because it makes a “laudatory” claim, or is based on exaggerated praise that can’t be proven or has not been proved true. For instance, Papa John’s slogan “Better Ingredients, Better Pizza” was initially struck down by a court in 2000 because it could not substantiate that it indeed had better ingredients than all of its competitors.
Papa John’s ended up getting its trademark on the basis of its continued use of the slogan, which eventually became associated with the Papa John’s brand, building an association worthy of the trademark. Whole Foods itself did the very same thing with another trademark, “America’s Healthiest Grocery Store.” But since it barely has any presence in the world outside of the US, the USPTO has said that there is no such association with “the world” yet, nor is there evidence that the claim is in any way true or widely believed by the international market.
But Whole Foods isn’t really recognized as the world’s healthiest grocery store. It functions only in the United States, England and Canada, which is hardly the entire globe. On top of that, few probably associate the phrase “World’s Healthiest Grocery Store” with Whole Foods; it has never used the slogan.
Companies attempt to get these kinds of superlative marks all the time, but it’s nice to see the USPTO think past the end of its own “Approved!” stamp once in a while.