"No Confusion": Judge rejects Wal-Mart claims in trademark parody case [US]

A Conyers, Ga., man has won a two-year legal battle with Wal-Mart, which has demanded he stop making and selling T-shirts, beer steins and other items that sport slogans such as "Wal-ocaust" and "Wal-Qaeda." U.S. District Judge Timothy C. Batten Sr. rejected Wal-Mart's claims that Charles Smith, a 50-year-old computer store owner who thinks the retailing giant is "taking over the world," violated the company's trademark.

Judge Batten also noted that the yellow smiley face that adorns Wal-Mart signs is not entitled to common-law trademark protection, a decision that one of Smith's lawyers said could hurt Wal-Mart in an unrelated, pending trademark action over the right to the sunny symbol of happiness.
Smith said he came up with the Wal-ocaust slogan while reading a book about the history of the Nazi party. "I read that some of the first groups that were persecuted by the Nazis were unions and liberals," he said. "I thought, 'Wow. Taking over the world, persecuting unions and liberals. Sounds like Wal-Mart.'"

He started producing his Wal-ocaust-themed products and offering them for sale at the Web site www.cafepress.com, which allows sellers to create their own home pages to market their items.
One design shows a bird resembling a Nazi eagle grasping the yellow smiley face in its talons, similar to depictions of the Nazi eagle clutching a swastika. Another reads, I ♥ WALHOCAUST. They have FAMILY VALUES, and their ALCOHOL, TOBACCO and FIREARMS are 20% OFF. A third proclaims, WALHOCAUST: Come in for the LOW prices, stay for the KNIFE fights.

The first letter from Wal-Mart, received Dec. 28, 2005, demanded that he cease selling the Wal-ocaust products.
On New Year's Day 2006, Smith said, he posted the Wal-Mart missive on a Yahoo! message board and got a response from activist filmmaker Robert Greenwald, who has made "Wal-Mart: The High Cost of Low Price."
Greenwald, Smith said, connected him to Stanford law professor Lawrence Lessig, a constitutional and Internet law expert and a proponent of reduced restrictions on copyright, trademark and other forms of intellectual property.
In February 2006, Wal-Mart's outside counsel, Robert L. Raskopf of Quinn Emanuel, wrote a letter to Lessig, again demanding that Smith stop producing and selling his Wal-ocaust merchandise.
Smith said Lessig helped him find a legal team -- lead counsel Paul E. Levy at Public Citizen in Washington and Gerald R. "Gerry" Weber Jr., then of the local chapter of the American Civil Liberties Union. In March 2006 they brought a declaratory judgment action against Wal-Mart, asking that a judge find that Smith was entitled to sell his anti-Wal-Mart products and maintain his related domain names.

Wal-Mart filed counterclaims, alleging trademark infringement and dilution by tarnishment, unfair competition and cybersquatting, a reference to Smith's ownership of www.walocaust.com.
Batten's order, issued March 20, gave Smith a complete victory.

Wal-Mart claimed that as a merchandiser, Smith was diluting its marks and tarnishing them via negative connotations with the Nazi regime and later with al-Qaida. But Batten wrote that tarnishment caused by a parody which satirizes a product or image is not actionable under anti-dilution statutes because of the free speech protections of the First Amendment.

"A claim of dilution applies only to purely commercial speech," Batten wrote. Even if speech benefits the speaker economically, it is noncommercial so long as it consists primarily of noncommercial elements -- such as religious or political commentary, he continued.

Batten wrote that a reasonable juror could find only that Smith's primary intent was to express himself and that commercial success was a secondary motive at best.

Although Smith sold his items on CafePress for a 30 percent markup, Batten added, Smith never advertised or marketed his goods beyond notifying family, friends and a few Internet discussion groups. He did not claim an exclusive right to his designs and offered free, downloadable copies so people could print their own bumper stickers with his slogans.

Levy, Smith's attorney from Public Citizen, said "This is one of the first cases since the new Trademark Dilution Revision Act was handed down where a judge has looked at the noncommercial use defense."

To prove its claim that Smith's products were causing consumer confusion, Wal-Mart hired New York survey expert Dr. Jacob Jacoby to conduct two studies on the issue. Data for the studies was collected by intercepting shoppers at malls around the country and showing them, among other things, a Wal-ocaust T-shirt or a simulation of Smith's Wal-Qaeda CafePress homepage.
According to the order, the Jacoby studies interviewed about 650 consumers and ended up using the responses of roughly 500 of them. His conclusions: 48 percent of respondents suffered point-of-sale confusion; nearly 41 percent indicated Web site confusion; and almost 12 percent were less likely to shop at Wal-Mart after seeing Smith's designs.

Both sides in the case moved to exclude the other's experts only to be denied by Batten. But in an analysis of Jacoby and his methodology that accounts for more than 30 pages of the order, Batten gave Jacoby's reports virtually no evidentiary weight.

Batten found that Jacoby's survey was of "dubious value as proof of consumer confusion," and that it contained "numerous substantial flaws."

In addressing the issue of the yellow smiley face, Batten said that trademark protection is available only to distinctive marks, and to establish a common-law right in the smiley face, Wal-Mart must show it has imbued the mark with secondary meaning.

Simley said he did not know how the current ruling would affect his company's other trademark action.

The case, decided by Batten in the Northern District of Georgia, is Smith v. Wal-Mart, No. 1:06-cv-526.

Intellectual Property in Second Life [Use, Licensing and Protection]

Virtual intellectual property owners are facing increasing licensing and infringement issues – the same issues, in fact, that are faced by intellectual property owners in the real world. The virtual world has recently become a popular place for business transactions. But before companies prepare to reap the benefits of participating in this world, they must first understand the differences – and similarities – regarding licensing and infringement issues in the virtual world versus the physical world.

Originators of these virtual worlds have provided a platform on which users can create characters and objects for interaction with other users. Linden Lab is the creator of Second Life which, like most of the others, is free to join. It claims nearly 10 million “residents” with as many as 35,000 online at any given time. It also includes active businesses that are both reality-based and virtual-only.

In these virtual worlds, residents create and sell images (objects) for “virtual currency” which can be converted into real-life currency. Millions of dollars are spent on a daily basis in these worlds. The currency used in Second Life is called “Linden dollars.” The ability to convert Linden dollars into real money is the linchpin to this economy for residents.

Linden Lab requires that all copyrights and trademarks in the images created by its users remain with the users. Linden Lab permits transfer and copying of those objects only with permission of the creator.
This becomes one of the important drivers to the Second Life economy. The residents can create objects and be certain they are not copied while they are transferred. Buying and selling become commonplace.
In Second Life, there are many real world companies sell or promote goods and services. These range from several official apparel stores, (Nike, American Apparel, etc.) to promotional television and movies clips that are available from the studios. It includes law firms as well, which have virtual offices providing real life advice.

Toyota made headlines when it launched its Scion model in Second Life first. Live online meetings also take place. The anonymity of Second Life allows prospects to ask questions without concern of identity. Chat, instant messaging, and voice are all available. Teleporting from office to office (or store to store) takes seconds, and finding someone to answer a question is relatively easy.

Trademarks
Even though Second Life has been around for a few years and has seen tremendous growth and recognition recently, usage of real-life trademarks by residents who are not the real-life owners is becoming a problem. There is a “black market” in Second Life where graphics are sold with little or no advertising, but rather through word-of-mouth among the residents. While this may seem like the early days of virtual worlds, establishing boundaries is critical to avoid a future problem trying to rein in infringers.

For some companies not yet ready to build their own stores and devote the resources to this other media, licensing intellectual property has real benefits. Not only could there be some revenue generation, but if the right organization is licensed, their intellectual property can be protected in-world and preserved for when they are ready to enter the field.
Companies should start with the standard license arrangement since the intellectual property rights and concepts overlap whether it is real world or virtual world. However, some of the agreement will need to be modified or considered more carefully due to the medium.

Licenses [and licensees]
As more companies create an online presence, control of the brand and image becomes more important. Getting to know your licensee (as you would any other licensee of your intellectual property) is critical.

You need to trust that person or organization and be sure he/she is committed to the brand. Remember they are delivering product information to potential customers, and their interaction could be the first impression made on that customer.

Graphics [and logos]
Be sure to provide the quality and type of graphics you want the licensee to have. This will allow you to spot infringements more readily, but you can also ensure a quality image is being used. Moreover, if your real-world products are subject to other licenses, such as from third-party graphic artists, controlling what is used by the licensee protects the rights of these other parties.

Exclusivity
The question of exclusivity is always dependent on the negotiations. While you may have a desire to license the whole project out, there are many ways to divide up Second Life. Do not assume that a resident/licensee is all things for your whole line. There are different channels of trade even within a virtual world

Jurisdiction
Pick a favourable and reasonable jurisdiction. It is important, particularly for U.S. property owners, that your licensee has some ties to the U.S. so it is an effective method to enforce rights.

Tarnishment [and dilution]
Consider the environment in which the products are sold. There are large tracts of areas within Second Life, so it is important the licensee not sell your product in a location with unsuitable material. You may not want your product sold in a store where the store next door (in easy viewing) is selling objectionable material. Certain areas are also hot spots for counterfeit images. That must be balanced with the potential goal of being in a high traffic neighbourhood.

Enforcement
The licensee should have a responsibility to the property owner to make the licensor aware of any infringement. An additional obligation of periodic, proactive searching should also be considered as a requirement. Active residents are far better than real-life property owners periodically searching for infringements.

Marking products [appropriately]
While the product for sale probably has the brand already on it, additional marking of the object’s Second Life profile may be worthwhile. Since names are unique in Second Life, it is possible to label something as “Genuine” or “Real” in combination with the name of the authorized dealer.
Similarly, the reporting of the licensee may be checked to confirm that all sales are being reported. In addition to marking, the images sold should not be available for resale.

Royalty rates
Unauthorized residents often argue that use of the graphics is merely advertising for the company and royalty rates should not be charged. Whether this is true depends on strategy, as well as money earned by the retailer using your brands.

There is no question that many companies consider virtual worlds as great alternative advertising media, but that does not mean someone else should get a revenue stream. It’s critical to an intellectual property owner to get a termination clause enabling it to start requiring a royalty payment if circumstances and attitude change. A detailed conversation with your future licensee can establish an appropriate royalty rate.

Minimum pricing should also be a consideration, as well as the number of units the licensee may create and/or sell. Particularly if the license is non-exclusive, setting pricing is important to avoid complaints from other licensees.

Payment reports
If payment is part of the license arrangement, detailed reports should be provided and include information about any purchase, the name of the purchasing resident, the date and time of the purchase, and pricing. This will enable review of surreptitious purchases as a check on the licensee.
While all transactions are in Linden dollars, there is consideration of the conversion rates, conversion process, and transfer of money in Second Life. On top of these logistics and economic issues, the question of real-life tax implications is also present. If the licensor is paid in Linden dollars and Linden dollars have a value, taxes become relevant. As a practical matter, all royalty payments must be in a real life currency and conversion should be the full responsibility of the licensee.

Afterword
Keeping up with the number of issues in virtual worlds is mind-boggling. Resources are available. There are law libraries, lawyers, bar associations, and business groups online all the time. There are blogs and sites discussing these issues. Among the particular sites of interest are virtuallyblind.com and virtualworldnews.com. In the end, addressing these virtual world issues is best done sooner rather than later. As these worlds continue to grow, infringements and other intellectual property matters are also moving at a rapid pace. Getting protection under control at the earlier stages will help prevent cleaning up problems later on.

Brand Wars in India [Update]

A sight, soccer star David Beckham, retailers Wal-Mart and GAP, food giant Kraft Food, automaker DaimlerChrysler, French bank BNP Paribas, media biggies Disney and Time Inc may not have much in common. Except that they are at loggerheads with small Indian entrepreneurs.

The dispute, curiously, is not playing out in their respective business areas, but in the country’s trademark office. These international business icons are opposing Indian entrepreneurs’ applications for trademark as they fear infringement of their intellectual property rights.

England soccer star David Beckham is miffed at one Jaiprakash Chamaria, who runs readymade garments firm Aayush Creations. Mr Chamaria has filed an application in Indian trademark office for the allotment of Beckon Shirts. As the proposed trademark sounds similar to Beckham, the soccer star is worried that the Mumbai-based firm might take undue advantage of his goodwill among consumers.

And to prevent that, Beckham has filed opposition to Mr Chamaria’s plea in India’s trademark office. Wal-Mart, meanwhile, is involved in at least two such cases: Puducherry-based apparel maker Walmart Textile’s Karkouzhali Panchtcharam’s request for ‘Wallmant’ and Delhi-based Malhotra Retail’s Ashok K Malhotra’s plea for ‘Mal-Mart’ have caught the world’s biggest retailer’s attention.

Similarly, the owner of Lee jeans, The HD Lee Company, is contesting New Delhi-based BNK Intrade’s application for the award of ‘Lee Mei’ trademark. BNK deals in synthetic leather. Another Mumbai-based readymade garment maker Mexico Clothing Company’s Dinesh Agarwal’s request for ‘GAB’ has made American retailer GAP uneasy.

Any combination of letters or numerals, images or colours can be claimed as trademark by an individual or a company to distinguish its goods and services from other similar goods. So, a trademark that comes close to any other established mark in appearance or pronunciation may be challenged. And most companies today are pretty vigilant in this arena.

“MNCs have a strong intellectual property department, which scrutinises journals from trademark and patent offices across the globe. Some of them have tie-ups with law firms who are assigned the responsibility. Even if there is a slight possibility of infringement, these companies spring into action,” says trademark lawyer Siddharth Bambha.

The Indian trademark office invites opposition to an application after its publication in the office journal. An application is published only after it has satisfied the examiners on the basic trademark requirements. The opposition can be filed within three months after the publication.
Every opposition is followed by many rounds of arguments from both sides, culminating in a final decision by the trademark office. The process is usually tedious and may take years. There is also a provision of filing opposition even after the trademark has been granted to a party. In the event of an opponent not being satisfied with the trademark office’s decision, he can move the Intellectual Property Appellate Board and subsequently the High Court. And if the opponent wins the case, it can claim cost of proceedings from the applicant.

In a recent case, the Madras High Court had ruled in favour of French retailer Carrefour, which had moved the court alleging illegal use of its trademark by a Chennai-based firm.

Anil Ambani set to gain from trademarks [India]

Having benefited handsomely from soaring valuations of his stakes in various Reliance Anil Dhirubhai Ambani Group (R-Adag) companies, Anil Ambani now stands to reap a hefty, steady income from letting various companies use the group name and other Reliance trademarks in their businesses.

It turns out that the R-Adag trademark is held by Anil Dhirubhai Ambani Ventures Ltd (Adav), which is part-owned by Ambani. And Adav is set to receive up to Rs160 crore for the use of the R-Adag trademark, along with the use of Reliance Infratel and Reliance Power trademarks, names and logos, according to the public share offer documents of these two firms of the group.
Last month, Reliance Power Ltd mopped up some Rs10,000 crore in India’s largest public offer, which was fully subscribed in the first minute it opened to the public.

Reliance Infratel Ltd, a towers unit of Reliance Communications Ltd, the country’s second biggest mobile phone services firm, has filed documents for an initial public offer to sell 89 million shares.

According to the respective offer documents, Adav has entered into brand licensing agreement with Reliance Power and Reliance Infratel in return for up to Rs80 crore each for a period of 10 years.

“On 19 July 2007, we entered into a brand licensing agreement with Adav, a company owned by our chairman, Mr Anil Dhirubhai Ambani. The agreement allows us to use the trademark and the ‘Reliance Infratel’ trademark, name and logo...for our services and products on a non-exclusive basis, for a period of 10 years. We are required to incur expenditure up to Rs800 million for these rights and the timing and amount of the payment (subject to this limit) will be determined in Adav’s sole discretion,” the Reliance Infratel draft prospectus reads.

In the Reliance Power filing, the trademark referred to in the first instance is Reliance Adag. Mint couldn’t ascertain whether Adav gets paid by other R-Adag group companies for trademarks as well.

It appears that Adav itself doesn’t yet own rights on the Reliance Infratel and Reliance Power trademarks and logos, which have to be given by Registrar of Trademarks in India, according to the offer documents of the two firms.

It is unclear when the registrar will formally approve the trademark and related applications.
Ambani directly owns around 19% in Adav, while Swan Consultants Pvt. Ltd holds nearly 80% stake in the company, according to latest information with the Registrar of Companies on the website of the Union ministry of corporate affairs.

The spokesperson couldn’t immediately explain the discrepancy between his statement and the regulatory filings from both those companies that clearly note the payments are to Adav.
Ambani, the estranged brother of Mukesh Ambani, India’s richest person, is ranked 18 on the Forbes magazine’s list of the global rich published in August last year.
His business interests span telecommunications, power, entertainment and finance.
This is not the first instance of promoters benefiting from the ownership of the brands used by their own units, ensuring income that tops what they earn as directors fees and through dividends on their stakes.

Omaxe Ltd, a New Delhi-based real estate company, gives money to its promoter, Rohtas Goel, who has registered the brand Omaxe and has entered into an agreement with the company for the use of the name. Omaxe has to pay a lump sum of Rs1.2 crore and a royalty of 2% of the real estate turnover every year to Goel. The agreement is valid until March this year. It couldn’t be established how these firms arrive at the value of the brands registered, nor was it immediately clear which other trade names are held by Adav and how much the company earns in such fees every year.

Ethiopian Coffee Trademark Dispute With Starbucks Runs Hot and Cold [International]

Robert Winter, a senior partner at Arnold & Porter, probably never thought he'd be pushing his client's point of view on YouTube when he agreed to help the government of Ethiopia protect the intellectual property associated with the names of three of its most famous coffee-growing regions.
But last week he defended the country's initiative to trademark and license the coffee names in a video posted on the site. It was a response to a widely viewed video posted in December by Dub Hay, Starbucks Coffee Co. senior vice president, claiming the trademark and licensing scheme was illegal.
"It's plain silly -- there's nothing illegal at all," Winter says in a grainy video of him in his office, responding to questions that flash on the screen. The video's format and typical low-budget YouTube aesthetic mimics Starbucks' offering, but at 5 1/2 minutes comes in at nearly three times the length.
So what prompted this volley of videos expounding on the finer points of U.S. trademark law on a site better known for clips of Britney Spears shaving her head and home-grown karaoke videos? The answer is that basic human staple: coffee. More explicitly, it's a conflict between the ubiquitous Starbucks and Ethiopia over the country's efforts to protect its intellectual property rights, thus obtaining a better price for a commodity that accounts for about half of its export income.
The idea is that producers in developing countries can increase the revenues they derive from the sale of their commodities by asserting control over the intangible value of their exports.
"This is much broader than Ethiopia or coffee," says Ron Layton, the chief executive of Light Years IP, a Washington, D.C.-based nonprofit that is advising Ethiopia on the trademarking and licensing initiative.
LUKEWARM ON LICENSING
Last month the Seattle-based coffee giant's opposition to Ethiopia's initiative seemed to have softened somewhat in the wake of an Oxfam-led campaign, launched last October, questioning the company's commitment to corporate social responsibility. The public-relations push galvanized 90,000 people, including many Starbucks consumers, to call on the company to sign a licensing agreement recognizing the Ethiopian government's rights to the names, says Seth Petchers, who leads the anti-poverty organization's international Make Trade Fair campaign on coffee issues.
In late November, after a meeting with Ethiopian Prime Minister Meles Zenawi, Starbucks chief executive Jim Donald promised to work with the government to help Ethiopian coffee farmers. And in late February, Starbucks issued a press release stating it "respects the right and choice of the Government of Ethiopia to trademark its coffee brands and create a network of licensed distributors ... [and] will not oppose Ethiopia's efforts to obtain trademarks for its specialty coffees." The press release was prompted by a Feb. 14 meeting between Starbucks' Hay and Getachew Mengistie, the director of the Ethiopian Intellectual Property Office.
The meeting took place at the annual Eastern African Fine Coffees Association meeting in the Ethiopian capital city of Addis Ababa. The company also pledged to double its purchases of East African coffee by 2009 and to provide more technical assistance and microcredit facilities to support Ethiopian farmers.
Meanwhile, what exactly Starbucks meant by its pledge to respect Ethiopia's right and choice to trademark its coffee names is murky.
Starbucks has recanted its claim that the intellectual property program was illegal. "When we posted that video, we felt the information was correct, and since, we've learned a lot and realized the information about the legality of the trademark was not accurate," a Starbucks spokesman said last week in response to Winter's video.
The company continues, however, to argue that the coffee names would be better protected by a certification mark -- another form of intellectual-property protection.
Certification guarantees that names can only be used on products originating from that region but doesn't grant anyone ownership in the names. Examples include Florida oranges and Idaho potatoes.
"We believe that certification is the best way to provide economic benefit to coffee farmers while protecting the quality of the coffee," a Starbucks spokesman said in an e-mail last week. "Certification has been recognized globally as the preferred way to protect geographic names of quality agricultural products."
But a certification scheme would not give the Ethiopian government the control over its coffee brands that it is seeking, leaving it with less leverage to try to extract higher prices for its coffee.
The company spokesman also said Starbucks has no plans to sign the licensing agreement the Ethiopian government has been asking it to sign.
The issue is far from settled, Layton says, noting that Starbucks has been "twisting and turning" in response to bad publicity. "They've achieved their goal," he says. "They have confused the press."
A SLICE OF THE PIE
The dispute began brewing in March 2005, when the government of Ethiopia, represented pro bono by Arnold & Porter's Winter along with partner Roberta Horton and counsel Anna Manville, filed an application with the U.S. Patent and Trademark Office to register the names of Yirgacheffe, Harrar, and Sidamo, three of the country's best-known coffee-growing regions.
The trademark applications were part of a broader initiative devised by the Ethiopian Intellectual Property Office, working with Light Years IP, to build the value of the brands, to enable coffee farmers to capture a greater share of the retail price of Ethiopian coffees in foreign markets, and to gradually increase export revenues from coffee. Currently, coffee shops such as Starbucks sell Sidamo coffee for approximately $26 a pound because of the coffee's reputation as a high-end specialty coffee, while coffee farmers receive about $1.35 per pound for their beans, Layton says.
Coffee is critical to the Ethiopian economy and accounts for about half of the country's export income. But in 2001, global coffee prices plummeted to 100-year lows due to oversupply, according to the London-based International Coffee Organization. Ethiopia is among one of the world's poorest countries, with an average gross domestic product per capita of less than $1,000.
In addition to its applications in the United States, the government has applied to register its trademarks in 30 other countries. So far, registrations have been approved in the European Union, Japan, and Canada, among others, says Arnold & Porter's Horton, who notes that the firm's London office coordinated the international applications.
The second part of Ethiopia's plan involves licensing the use of the names to individual coffee companies. Although Ethiopia is not asking licensees to pay a royalty, the license agreements would give the government leverage over its distributors and eventually allow it to gain a larger share of the retail price of the coffee.
Eleven companies in the United States, including Waterbury, Vt.-based Green Mountain Coffee Roasters Inc., have agreed to the licensing agreement, Horton says.
Ethiopian coffee exports currently account for about $400 million in export income, Layton says. If successful, the IP initiative could eventually boost the government's export revenues by about $100 million, he adds.
And the project may have ramifications beyond Ethiopia's borders, Winter and Layton say. Intellectual property has contributed greatly to wealth creation in the developed world, and Winter and Layton see no reason it can't be harnessed to spur the development of Third World countries' economies.
BUCKING STARBUCKS
In the United States, the applications to register each of the three names went to different examiners. Under U.S. trademark law, terms that are primarily geographically descriptive -- such as Yirgacheffe, Harrar, and Sidamo -- can be registered if they are shown to have acquired distinctiveness in the marketplace.
Yirgacheffe sailed through, but the applications to register Harrar and Sidamo lingered. The first roadblock to the Sidamo application came from the fact that Starbucks had applied to register the name Shirkina Sun-Dried Sidamo in June 2004. The efforts of Ethiopia's then-Ambassador Kassahun Ayele to discuss the problem with Starbucks management were rebuffed for more than a year, says Oxfam's Petchers, who tried to facilitate the discussions. Starbucks did withdraw its application in early July 2006, after Ethiopia filed an action opposing it.
By then, another obstacle to the applications had surfaced. In June, the National Coffee Association, a group that represents coffee roasters, retailers, and importers, among others, had filed a letter of protest with the PTO arguing that the registration of Sidamo and Harrar should be refused and submitting hundreds of pages of Web site printouts it argued showed that the names were used generically. Oxfam claimed that the NCA filed its protest at the behest of Starbucks, which is one of the trade association's leading members, but both Starbucks and the NCA have denied this allegation.
On July 17, 2006, the PTO refused registration for the Sidamo and Harrar applications on the grounds that they were generic. A generic term is one that the relevant purchasing public understands primarily as a common name for goods or services. A prime example in the coffee context is java. Java is a term used for coffee so widely that it has come to refer to all coffee rather than just to coffee from Java, an Indonesian island.
But the office didn't make its decision final, leaving the door open for Ethiopia to submit further arguments as to why the trademarks should be registered.
In documents Ethiopia filed with the PTO on Jan. 17 urging the agency to reconsider its refusal to register the trademarks, it argued that Sidamo wasn't synonymous with a broad category of coffee and proffered its licensing agreements -- which acknowledge that Sidamo is owned and controlled by Ethiopia -- as evidence that the public recognizes it as a mark. "Unlike terms like 'fontina' or 'swiss cheese' that identify cheese that may come from anywhere in the world, SIDAMO coffee is associated with coffee grown exclusively in the Sidamo region of Ethiopia," Arnold & Porter's Manville wrote.
The back-and-forth on the trademark registration between the PTO and the Ethiopian government could go on for some time, says Horton.
Starbucks and Ethiopia have a long way to go to find some kind of mutually acceptable solution. "We have no plans to sign the licensing agreement that was put in front of us," the Starbucks spokesman said. "We will need to find other options."

Alexia Garamfalvi

Legal Times

Courtesy: www.law.com