May 29, 2007
March 15, 2007
Starbucks/Ethiopia Trademark Dispute - on YouTube
The botom video was made by a Starbucks representative and the top video is from Arnold and Porter, which represents the Ethiopian government.
A Law.com article discussing the dispute is here.
The trademark issue (as opposed to the overall business issue) is that Ethiopia filed for standard trademark, as opposed to certification mark, protection for the names of several coffee-growing regions in Ethiopia. Here's the most recent office action in Ethiopia's HARRAR application.
If a region's name has commercial value, as is the case here, then it is to the benefit of the merchants in that region that a single entity is motivated to protect that name - so some sort of protection is needed.
However, as the Law.com article states, the general consensus is that GIs are preferable to standard trademarks. I agree with both parts of that statement - GIs are preferable and it is the general consensus that they are preferable.
Ethiopia's U.S. lawyer states that the Ethiopian government does not prefer GIs because it would have less control over the marketing and sale of the coffee, and that would result in lower prices for the producers. It's true that Ethiopia would have less control and the speculation that that would result in lower prices for growers is plausible. But that might not be the only consideration.
In the U.S., a merchant that complies with the articulated standards for a certification mark, can use the mark. Thus, in theory, different growers from a region can use the name to indicate origin, and act independently of each other and cut its own deals.
As for a standard trademark, the trademark owner can prohibit any third party from using the mark. Thus the growers can be cartilized by the trademark owner, which can be a good or bad thing (probably both). In this case, growers in a particular region could lose the right to accurately indicate where their product comes from, if they do not have authorization from the trademark owner. This is scenario contravenes the policy behind the prohibition of the registration of geographical names as trademarks.
Again, this post deliberately does not address the 'fairness' issue of Starbucks' economic relationship with Ethiopian coffee growers.
Background (with link to PTO materials on geographical indicators) here.
December 13, 2006
I Can't Believe It's Not Crustacean
The Food and Drug Administration will now allow vendors of surimi, imitation crab, to call their product 'crab-flavored seafood, upsetting crab fishermen.
Restaurant chains are using langostino, which some believe are a form of hermit crab or prawn, and calling it lobster, upsetting Maine lobstermen.
Plankton is trying to steal the formula for the Krabby Patty, upsetting Mr. Krabs.
November 06, 2006
Ethiopia v Starbucks (SIDAMO and HARAR Coffee)
SIDAMO and HARAR are coffee growing regions in Ethiopia. It appears that those terms are widely used to refer to the beans grown in those regions. The Government of Ethiopia filed U.S. trademark applications for those terms. As far as I can discern from the PTO website, these are registrations for 'regular' registrations on the principal register and not for certification marks.
The applications have met descriptiveness objections (as the examiner turned up ample evidence of the terms being used not as trademarks but as descriptive terms). Additionally, Letters of Protest have been accepted by the PTO and communicated to the examiner, providing evidence that the terms are generic. As a procedural aside, a Letter of Protest is not an inter partes proceeding. It is an ex parte communication from a third party that is examined by the PTO before the information in it is provided to the Examining Attorney. I had trouble opening these massive (600+ pages) PDF documents on the PTO site, but they appear to contain evidentiary material about generic use of these terms.
Oxfam has now criticized Starbucks, alleging that Starbucks influenced a coffee trade association to obstruct the applications, and that the loss of these trademarks will cost poor Ethiopian farmers tens of millions of dollars. Some articles claim that Starbucks or the trade association has opposed the applications, which is not correct. I assume that it was the trade association that filed the Letters of Protest.
Starbucks has responded to Oxfam's allegations.
One thing that is not clear to me from the printed reports is why these applications are for conventional trademarks and not for certification marks.
I think we would need to understand the economics of the SIDAMO and HARAR bean markets to appreciate precisely what is going on. The proposition that opposing trademark protection hurts the Ethiopian farmers would be supported by two different arguments. The first is that the existence of the trademarks (any type of trademarks) for these names, would benefit the farmers because it would allow the trademark owner to police against beans grown outside of Ethiopia from using those names.
The second argument is a two-edged sword. Anyone who owns these marks will be able to cartelize the growers, for better or worse. If the names are owned as trademarks by the Ethiopian government, or, if the names became certification marks where the certifying procedure was controlled by the Ethiopian government, then the government would be able to control which growers in those regions could use the terms. The Ethiopian government might be able to prevent certain growers from using the terms, even if they grow beans in those regions.
Ownership of geographical terms as conventional trademarks have resulted in attempts to prohibit truthful (but competitive) use of the term as a geographic indicator, so the fear that growers within the regions may not be allowed to use the terms, would not be unfounded (see disputes relating to CHIHUAHUA cheese and TILLAMOOK cheese).
Here is the US PTO's discussion of geographical indicators and certification marks.
October 23, 2006
They Grow Currants In New York?
October 18, 2006
Cachacha in Your Caipirinha?
Trade and Environment Database Study 721: Brazilian Cachaca. HT Brad deLong.
May 30, 2006
Chinese Catfish Can Be CAJUN For Now
Lousiana has statutes that seek to prevent misleading usages of the terms CATFISH and CAJUN. An importer of what it viewed as Chinese catfish (clearly labeled as orginating in China) sold under the CAJUN BOY trademark, ran afoul of the law. Fifth Circuit struck down the Catfish Statute as unconstitutional and held that the Cajun statute had been erroneously applied to plaintiff.
Piazza's Seafood World v. Odom, 05-30098 (May 4, 2006).
UPDATE: 43(B)log analysis here.
May 16, 2006
Geographical Indications Used on Wines and Spirits
Trademark Office Exam Guide 1-06: Geographical Indications Used on Wines and Spirits.
February 20, 2006
'Whose Sari Now?'
Counterfeit Chic: 'Whose Sari Now?' on the protection of indigenous textile design under India's Geographical Indications Act.
Yes, blogging software does indeed include a pun generator.