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How to Protect Vietnamese Agricultural Brand Names as Certification Trademark in the United States of America
(Ngày đăng: 2021-05-24)

How to Protect Vietnamese Agricultural Brand Names as

Certification Trademark in the United States of America?

 

Email: vinh@bross.vn

 

Difference about Forms of Protection of Geographical-Origin Based Agricultural Brand Names under the Laws of US and Vietnam

 

Vietnam is the country famous for agricultural products, namely Phu Quoc for fish sauce, Buon Ma Thuot for coffee, Binh Thuan for dragon fruit, Luc Ngan for lychee, etc.,. Most agricultural brand names have collective characteristic as being originated from a particular geographical locality. From a legal perspective, most of these geographical-origin based brand names have been registered in Vietnam in the form of Geographical Indications (GIs), Collective Trademarks and Certification Trademarks. Below are some examples:

 

Geographical Indication

Certification Trademark

Collective Trademark

 

 

National register no. 001

Protected goods: fish sauce

Vietnamese Reg. No. 170039

Classes 29, 31 and 35, namely including processed chicken, food made from chicken, etc.

Vietnamese Reg. No. 221701

Class 30: Pepper

 

 

The US law does not have any statutory provisions on protection of GIs. It justifies that it still complies with the TRIPs Agreement regarding member’s obligation with regard to protection of GIs by its granting GIs as a special type of mark, that is, a certification mark.

 

Legal Nature of Certification Mark under the US Trademark Law

 

A certification mark is a type of mark that is used by person or entity other than registrant to certify to purchasers that a particular product or service has met certain standards. For instance, below are 3 certification marks currently protected in the US.

 

US Reg. No. 3,658,929

US Reg. No. 4,061,583

US Reg. No. 2,816,123

 

 

The purpose of certification mark is to certify, not to indicate a source, meaning that dragon fruit bearing the certification mark under US Reg. No. 4,061,583 as shown above conveys a message that dragon fruit is grown in the province of Binh Thuan (Vietnam) having the specific geographical conditions as defined by the certifier, and such dragon fruit is planted, cared of, harvested and preserved in accordance with Good Agricultural Practices (GAPs), and conforms to standards of appearance, pulp, nutritious ingredients promulgated by the certifier. The certifier in this case is the owner/registrant of US Reg. No. 4,061,583 being the Department of Science and Technology of Binh Thuan Province.

 

Required Documents

 

A complete dossier for registration of a certification mark before the USPTO comprises 10 items:

(1) the legal name and physical address of the applicant

(2) the applicant’s legal entity type

(3) the applicant’s citizenship or the jurisdiction under whose laws the applicant is organized, and if the applicant is a domestic partnership or joint venture, the names and citizenship of the general partners or active members of the joint venture

(4) a description of the mark if the mark is not in standard characters

(5) a translation/transliteration of any foreign wording in the mark;

(6) a drawing of the mark sought to be registered;

(7) a filing fee of 250US$ or 350US$ per class subject to a TEAS plus or standard application

(8) a filing basis, including: (a) verification of certain statements signed by the applicant or a person properly authorized to sign on behalf of the applicant; (b) a statement specifying what the applicant is (or will be) certifying about the goods or services; (c) a copy of the certification standards governing use of the certification mark on or in connection with the goods or services (required for Section 1(a) applicants only); and (d) a statement that the applicant is not engaged (or will not engage) in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant

(9) a list of the particular goods or services on or in connection with which the applicant’s authorized users use or intend to use the mark

(10) classification in U.S. Class A for goods or U.S. Class B for services

 

Examination of Certification Mark

 

Vietnamese associations or cooperatives can choose one of two ways to apply for geographically originated agricultural brand names in the US. The first is to apply directly (also known as “national registration”) to the USPTO through a US law firm alleging a filing basis pursuant to each of Sections 1(a), 1(b), 44(e) or 44(d), or apply indirectly (also known as “international registration”) extending to the US territory by using the Madrid Protocol alleging only one filing basis as Section 66(a).[1]

 

A certification mark filed with the USPTO shall be examined as if it is an ordinary mark, specifically the certification mark as filed shall be evaluated as to both absolute refusal grounds and relative refusal grounds. In 3-4 months, if the USPTO finds no grounds for refusal, it approves and publishes your certification trademark on the gazette for opposition purpose in a 30-day period of time. Subject to which the filing basis was chosen, and in the absent of opposition, a certificate of trademark registration will be issued by the USPO in approximately 2 months after the expiry of opposition time limit.

 

Warning: a Registered Certification Mark Will Be Cancelled if You Fail to Submit Twice Evidence of Use within the First 10-year Validity

 

The US Trademark Act or also known as the Lanham Act strictly regulates that the owner of any marks including certification mark registered with the USPTO must timely submit evidence of use in the form of Declaration of Use, otherwise the US registration will be cancelled. Such strict requirement may be summarized as follows:

  1. Between the fifth and sixth years after the registration date, a Section 8 declaration applicable for all trademarks registered under any of Sections 1(a), 1(b), 44(d) and 44(e), or a Section 71 declaration applicable for those registered under the Madrid Protocol-based international registration, must be filed with the USPTO against a fee of 225US$ per class.
  2. Between the ninth and tenth years after the registration date for the non-Madrid based certification mark, Section 8 declaration combined with a Section 9 renewal application must be submitted with the USPTO against a fee of 525US$ per class.
  3. Between the ninth and tenth years after the registration date for the Madrid Protocol-based certification mark, you must both submit (a) a Section 71 declaration with the USPTO, and (b) a request for renewal of international registration with the WIPO.

 

A picture taken from the USPTO depicting a validly

registered certification mark Binh Thuan dragon fruit

under the US Reg. No. 4,061,583

 

 

Bross & Partners, a law firm ranked as Tier 1 by the Legal 500 Asia Pacific, specializes in Patent, Design, Trademark and Copyright.

 

Bross & Partners had experience in trademark litigation in the United States, for instance, we won the case Pho Thin 13 Lo Duc squatted by a Korean individual in early 2021. Should you have any query, please contact us at email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.

 

 



[1] To understand filing basis under the US trademark law, see more “The hoops to jump through for global brand protectionat the link: https://www.vir.com.vn/the-hoops-to-jump-through-for-global-brand-protection-84020.html%C2%A0

 

 

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