Fiona McBride, partner and trade mark attorney, Withers & Rogers
Fiona McBride, partner and trade mark attorney, Withers & Rogers
A view from Fiona McBride

Think BR: Why Dunkin Donuts' trade mark attempt failed

Was Dunkin Donuts' attempt to claim exclusive rights to the phrase 'Best Coffee in America' destined to fail, asks Fiona McBride, partner and trade mark...

The US Patent and Trademark Office (US PTO) has rejected global fast food chain Dunkin Donuts’ bid to trade mark the phrase ‘Best Coffee in America’, saying that the slogan is not distinctive enough to qualify.

In fact, it was always unlikely that trade mark protection would be granted as the phrase is simply too descriptive and overtly self-congratulatory to qualify.

If you think about it, claiming sole rights to having the best coffee in America is surely a matter of personal taste and therefore, it was always going to be extremely difficult for Dunkin Donuts to substantiate. In dismissing the claim, the US PTO said the "informational slogan is nothing more than a claim of superiority".

If the registration had been granted, the company would almost certainly have seen some counter claims from rival fast food and coffee chains.

If Dunkin Donuts decides to pursue a similar registration in the UK or indeed another EU country, it would be likely to be dismissed on similar grounds. However, there is nothing to stop the company from continuing to use this phrase in Europe or North America, albeit without any exclusive rights.

Previous efforts by Dunkin Donuts to trade mark a phrase too close to that of a well-known supermarket were also rejected earlier this year. While seeking a registration for ‘Bagel Bunchkin’ - as a brand name for its bite-size bagel pieces - the US PTO considered the phrase to be too close to that of a well-known supermarket brand of traditional bagels, ‘The Bagel Bunch’. 

Having failed in these two recent attempts to obtain trade mark registrations, Dunkin Donuts should at least have learned some valuable lessons.

For a company that is recognised as a market leader in its domestic marketplace, it seems strange that Dunkin Donuts should pursue a strategy of attempting to register generic phrases and get closer to competitor brands.

Instead, you would think that the company would seek to differentiate its brand by creating an identity that is unique and distinctive.

Fiona McBride, partner and trade mark attorney, Withers & Rogers