The Campbell Soup Company (“Campbell’s”) can now tell its competitors, “No CHUNKY soup for you!”  Earlier this month, Campbell’s earned the United States Patent and Trademark Office’s (“USPTO”) approval to trademark the word “CHUNKY.”  Campbell’s has long used the word to describe its more ingredient-filled soups, but now the Camden, New Jersey-based soup giant can officially add CHUNKY to its extensive list of registered trademarks.  Not only is it a major windfall for a soup company to own the rights to a word often used to describe the texture and look of soup, but it is a rare accomplishment, and Campbell’s has pop culture, its lengthy relationship with the National Football League (“NFL”), and years of successful advertising to thank.

Generally, marks considered merely descriptive of the goods for which they are associated cannot be protected until these marks achieve secondary meaning.  A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.   Secondary meaning is accomplished when consumers have come to identify a mark with a specific product over time.  While CHUNKY could be a word used to describe the hodgepodge of extra vegetables, pasta, and meat stuffed into some of Campbell’s soups, Campbell’s successfully demonstrated secondary meaning by citing to “massive unsolicited media coverage” of CHUNKY in its trademark application.  Over the years, CHUNKY has been parodied on Saturday Night Live, Family Guy, The Simpsons, and The Daily Show.  Campbell’s also reportedly spent $1 billion in advertising since 1988, including its NFL sponsorship, and put out commercials featuring NFL players like Reggie White and Donovan McNabb eating the CHUNKY line of Campbell’s soup.    Rapper Ghostface Killah referenced the soup in his lyrics to “Murda Goons” (“Leave your brain all chunky like I’m advertising soup from Campbell’s”) and Pulitzer-Prize winning author Colson Whitehead said in his novel, Sag Harbor, “We were Campbell’s men, had been for years, and nothing took the edge off like the talent in their boutique Chunky line…”  Campbell’s also presented a survey showing that 75 percent of consumers associated the word “chunky” with the soup.  In the end, the USPTO agreed that CHUNKY had achieved secondary meaning in the eyes of consumers, and granted Campbell’s the trademark rights.

But what does this mean for other companies looking to possibly use the word chunky to describe food products?  Campbell’s has reportedly said that the word will be limited in connection with soups – not other food products.  For example, a food product called “Chunky Muffins” would not violate Campbell’s trademark.  Additionally, Campbell’s has said that “non-prominent, descriptive” uses of the word, such as “chunky-style,” that are not a trademark, will not be a violation.  Finally, trademark applicants can learn a thing or two from Campbell’s CHUNKY victory.  Trademark applicants should be reminded of the importance of making meaningful and memorable connections with consumers through multiple avenues for not just products, but words used to describe products.  For it is especially through unique and standout marketing that a mark can achieve the secondary meaning necessary to secure an even stronger position in the marketplace.

Whole Foods recently garnered attention when its trademark application for World’s Healthiest Grocery Store was rejected by the U.S. Patent and Trademark Office.  The trademark examiner focused on the “World’s Healthiest” part of the proposed mark and found the phrase simply described an alleged benefit of Whole Foods’ products, rather than indicating a source of the products.

Descriptive terms, like “healthiest” or “best,” cannot serve as trademarks without some showing that the term has acquired a secondary meaning of being distinctively associated with a particular source.  That is, a term that describes a quality of a product is used on a particular company’s products so much that the term becomes more widely recognized as indicating the source rather than describing the quality.  An example is American Airlines®.  In Whole Foods’ case, the Trademark Office left the door open for the grocery store to try to develop secondary meaning in its proposed mark by registering it on the so-called Supplemental Register.

Some commentary on Whole Foods’ rejection was focused on whether the assertion by Whole Foods – that it was the World’s Healthiest Grocery Store – was true.  The Trademark Office did not analyze the truth of the proposed mark because World’s Healthiest was viewed as a form of “puffery” or a “laudatory” statement.

Sometimes assertions boasting of characteristics like this must be true, other times not.  What is required under the circumstances is largely determined by how consumers are expected to react to it.  A statement will usually not require proof if it is just a broad claim of superiority that can only be interpreted as an opinion.  In contrast, a statement that is deemed “deceptive” will be barred from registration entirely.  The Trademark Office distinguishes between statements that are merely expressions of opinion from, for example, statements that would induce a consumer’s purchasing decision.  Phrases that are viewed as potentially influencing a purchasing decision includes words that indicate a product characteristic like superior quality, better pricing, societal beliefs (an example of which is the term “vegan”) or, as in the case at hand, phrases indicating a health benefit.  One example that falls in a few of these categories is “organik,” which was found to be deceptive when used on clothing made from cotton that was neither organically grown nor free of chemicals.  In re Organik Technologies, Inc., 41 U.S.P.Q.2d 1690 (TTAB 1997).

From the perspective of choosing a mark for use in your business, the characterization of a phrase like “World’s Healthiest Grocery Store” affects more than just whether a trademark can be obtained.  Such phrases can also run afoul of advertising guidelines set industry organizations, or even result in claims by the FTC.  The National Advertising Division of the Better Business Bureaus (NAD) has guidelines for determining whether a statement is acceptable puffery, rather than an improper claim.  In one NAD case, NAD found the claim that a baby food uses “the best ingredients nature has to offer” was acceptable puffery, but claims that implied conventional, non-organic baby food products were less nutritious should stop (such as, “some studies show that organic product contains more antioxidants…”).

With the Whole Foods’ claim to being the “World’s Healthiest,” the Trademark Office apparently was not concerned about what it viewed as general boasting.  Or, as the FTC might say, it’s okay to talk smack, just as long as it is an obvious exaggeration.