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What is the supremacy legal strategy for taking back the rice brand name ST25 in the US?
(Ngày đăng: 2021-05-24)

What is the supremacy legal strategy for taking back the rice brand name ST25 in the US?

 

Email: vinh@bross.vn

Attorney Le Quang Vinh – Bross & Partners

 

Background of the case[1]

 

Ho Quang Tri Private Enterprise is the owner of the rice variety ST25, which is currently protected in Vietnam under the Plant Variety Protection Certificate No. 21.VN.2020 issued by the Department of Crop Production on April 6, 2020. The ST25 rice variety has never been applied for and/or granted a patent in any country other than Vietnam. Currently, there are also no trademarks containing the term ST25 under the name of Ho Quang Tri Private Enterprise protected in Vietnam. Likewise, no trademarks containing the term ST25 under the name of Ho Quang Tri Private Enterprise have been filed/registered in any foreign countries including the US.

 

According to many sources in the Vietnamese press, there are now rampant counterfeit goods, spurious goods, imitative products impersonating the genuine rice ST25 in the Vietnamese market and the US market. In the meantime, there appeared 5 trademark applications containing the term ST25 filed with USPTO, of which the most notable is trademark #2 seeking for registration of the word ST25 (standard character) was approved and published since May 4, 2021:

 

#

Applied-for Marks

Class/Products

US Serial/

Filing date

Applicant

Status as of

May 19, 2021

Filing Basis[2]

 

5 applied-for marks containing the term ST25 for rice submitted with the USPTO

 

1

30

Rice

90270383

22/10/2020

Ngon Fish Sauce, Inc.

Provisionally rejected on April 14, 2021 due to, amongst other things, a likelihood of confusion with trademark #5

1B

2

30

Rice

90009521

18/6/2020

I&T ENTER-PRISE, INC.

April 14, 2021 accepted by USPTO and already published on May 4, 2021

1A

01/07/2020

3

29

Oval rice, vermicelli, rice paper and rice vermicelli. Rice noodle and Pho noodle

90103840

10/8/2020

TTM Internati-onal Inc

Provisionally rejected on Dec. 9, 2020 due to a likelihood of confusion with trademark #2 and a suspension letter issued pending the final fate of

trademark #2

1A

01/01/2020

4

30

Gạo

90151727

1/9/2020

Transwo-rld Foods, Inc.

Provisionally rejected on Nov. 20, 2020 due to, amongst other things, a likelihood of confusion with trademark #2 and #3

1A

11/08/2020

5

30

Rice

90085988

31/7/2020

Transwo-rld Foods, Inc.

Provisionally rejected on Nov. 20, 2020 due to, amongst other things, a likelihood of confusion with trademark #2 and #6

1A

29/07/2020

Less relevant applied-for mark Gạo thơm Sóc Trăng

(Soc Trang fragrant rice) without the term ST25

(trademark #5 will be probably refused if trademark #6 gets registered)

 

6

30

Rice

 

90069357

23/07/2020

GREAT WEALTH LLC

Provisionally rejected on Nov. 10, 2020 due to, amongst other things, a digitally created or altered image or mockup is not an acceptable specimen

1A

21/07/2020

 

Legal Significance of “Published Mark” under the US Trademark Law

 

According to the US law, a published trademark[3] means that it has been completely examined as to both formality and substance, or in other words, the USPTO has concluded that the mark is eligible for protection. However, also under US law, anyone who believes that a published trademark may cause damage to his or her rights and interests has the right to file an opposition with the The Trademark Trial and Appeal Board (TTAB) under the USPTO within 30 days from the date of publication, or filing a TTAB first 90-day request for extension of time to file a notice of opposition against a fee of $200.

 

For the reason, by the end of June 4, 2021, or August 4, 2021 (if no TTAB first 90-day extension is submitted), if neither opposition nor filed opposition is approved, a trademark registration will be issued by the USPTO. As a result, only I&T ENTERPRISE, INC becomes the right holder having the exclusive right to use the word ST25 for rice products in the US territory. The immediate dangerous legal consequences are that real ST25 rice produced and distributed by Ho Quang Tri Private Enterprise into the US territory may be blocked by the US Customs at the border gate due to trademark infringement, which can be handled by legal measures along with damages. But the most dangerous thing is that if ST25 rice is sold and marketed by I&T ENTERPRISE, INC, that is neither originated from Vietnam, nor grown and processed from ST25 rice variety, it is duly impersonating the ST25 rice of Vietnam, and the US purchasers are deceived into believing that ST25 branded rice is the world’s best rice in 2019.

 

4 Legal Scenarios May Happen

 

It would be insufficient if the public and press merely pay their attention to trademark #2. Kindly keep in mind that there are 5 trademark applications seeking protection of the term ST25 at the USPTO, 4 of which are trademarks #1, 3, 4 & 5 were provisionally rejected the USPTO, and their applicants have chance to likely overcome the rejection if their well-reasoned responses are submitted within 6-month time limit. In other words, it is required to wait for the expiry of 6-month time limit which falls on October 14, 2021, June 9, 2021, and May 20, 2021 (applicable for trademarks #4 & 5) respectively then we can determine what we have to do or we would do nothing like “the art of fighting without fighting”. In my opinion, there will be basically 4 legal scenarios as presented below.

 

Scenario 1: Trademark #2 gets registered by the USPTO because neither opposition nor opposition filed with the TTAB by June 4, 2021, or August 4, 2021 is approved. The worst consequences would be that Ho Quang Tri Private Enterprise cannot export its rice ST25 into the US market, and in the meantime trademarks #3, 4 & 5 will be continuously rejected by the USPTO with a Section 2(d) likelihood of confusion new refusal ground under the Lanham Act

 

Scenario 2: Successful opposition against trademark #2 on the ground that ST25 is the common name (generic) of a commodity (the varietal and cultivar names, which are designations given to cultivated varieties or subspecies of live plants or agricultural seeds, are not generally registrable as a trademark). The worst consequence where this Scenario happens is that TTM International Inc is entitled to enjoy the exclusive right to use trademark #3 for the standard character word ST25 used for oval rice, vermicelli, rice paper, vermicelli, and noodle products in class 29. This is because the USPTO's current refusal of trademark #3 must be withdrawn due to the fact that the cited trademark #2 is rejected. The next consequence is that the word ST25 for rice products in the US market would be legally used or named by any competitors, meaning that ST25 becomes officially generic. In other words, the brand name ST25 becomes a common name similar to the India’s rice Basmati and Thailand's Thai Jasmine Rice.

 

Scenario 3: Successful opposition against trademark #2 on the basis of Section 2(a) providing for that the use of ST25 by I&T ENTERPRISE, INC. is likely to make a false suggestion of a connection with Ho Quang Tri Private Enterprise. As a result, trademark #2 is rejected, trademark #3 is granted, and trademarks #1, 4 & 5 are unknown. However, since Ho Quang Tri Private Enterprise has not yet filed any application for registration of ST25 with the USPTO, this scenario does not bring about any exclusive rights to use ST25 for the sake of Ho Quang Tri Private Enterprise. If he attempts to pursue Scenario 3, an applied-for mark ST25 shall be filed with the USPTO immediately.

 

Scenario 4: Successful opposition against trademark #2 on the ground the same as that of Scenario 3 but plus the amicable negotiation and settlement for the assignment contract of published mark ST25 under US Serial No. 90009521 from I&T ENTERPRISE, INC to Ho Quang Tri Private Enterprise. As a result, Ho Quang Tri Private Enterprise would be the legal owner of US trademark registration for ST25 for rice while trademarks #3, 4 & 5 would be continuously refused by the USPTO with a Section 2(d) likelihood of confusion new refusal ground.

 

What is the legal supremacy strategy?

 

It is agreed that as a general rule, a plant variety name cannot be granted a trademark. However, in the United States, the USPTO is obligated to demonstrate when, under what conditions, and what substantiated evidence is sufficient to affirm that an applied-for mark is regarded as a generic name to be unregistrable as a trademark. Specifically, a two-part inquiry shall be examined by the USPTO: (a) What is the genus of rice ST25 at issue?, and (b) Does the relevant public (US consumers) understand the designation primarily to refer to that genus of ST25 rice?

 

The US trademark law is very distinct from the world, ie. the Lanham Act states that only the purchasers is the king who determines when a name is generic or descriptive. That’s why in the amazing case Booking.com initially rejected by the USPTO due to genericness (initially refused by reason of descriptiveness) was upheld by the US Supreme Court with majority consensus 8-1, stating that Booking.com is not a common name for a booking service, it should be treated as a proprietary trademark.[4]

 

In our opinion, the fact that ST25 rice won the title of the world’s best rice in 2019 is not only a great event for Vietnam's agriculture but also a rare opportunity to build up and develop the rice brand name ST25 in the US market. In accordance with the US trademark law, Ho Quang Tri Private Enterprise can utilize one or several amongst 16 different legal bases to bar the published mark ST25 from registration. Which legal basis, nevertheless, is to choose and establish would be the most important and difficult task by lawyers because the same would result in which one of four scenarios happens. It can be concluded that the occurrence of Scenario 1 or 2 would be considered a failure, or Scenario 3 is not good, while only Scenario 4 is the supremacy – a real legal victory for ST25 rice in the US market.

 

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] The Vietnamese version of this article was published by the Saigon Times Online (Thoi Bao Kinh Te Sai Gon Online) on May 19, 2021. See more: Đâu là chiến lược thượng sách giành lại thương hiệu gạo ST25 ở Mỹ? (thesaigontimes.vn)

[2] You must choose at least one filing basis amongst 4 filing bases under Sections 1(a), 1(b), 44(e) and 44(d) when you register your trademark via national registration with the USPTO. See: http://bross.vn/newsletter/ip-news-update/Understanding-of-US-Trademark-Law-to-Avoid-Losing-Brand-Name-in-the-US-Market

[4] See the US Supreme Court’s ruling in the Booking.com case: https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf

 

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