Seattle Trademark Lawyer

The Seattle-based Coffee Politics blog has an interesting interview with Ethiopian officials about the June settlement of Ethiopia’s dispute with Starbucks Corp. over the marketing and licensing of three of Ethiopia’s specialty coffee designations. The blog interviewed Samuel Assefa, Ethiopia’s ambassador to the United States, and Getachew Mengistie, director of Ethiopia’s Intellectual Property Office, who negotiated the deal with Howard Schultz and Dub Hay from Starbucks. Background on the pact from The Seattle Times is available here.  

Of particular interest to trademark practitioners is why Ethiopia pushed for terms in the parties’ agreement that defined Ethiopia’s rights in terms of its coffee “designations” rather than its “trademarks.” Here’s an excerpt from the interview:

”Coffee Politics: The joint press release between you and Starbucks states that you ‘have concluded an agreement regarding distribution, marketing and licensing that recognizes the importance and integrity of Ethiopia’s speciality coffee designations.’

What’s the difference between this agreement and the one that was announced in February 2007? What does ‘designation’ refer to here? Is it related to ‘certification’ or ‘Geographic Indication’? We learned from your letter published on Addis Fortune that there is a signed agreement with Starbucks, is that true?

Getachew Mengistie: Yes, a signed document is in place. ‘Designation’ is a term broader than ‘trademark’ and protects Ethiopia’s benefits as it encompasses some of the trademarks that are still pending registration. ‘Designation’ is not related to certification.

Samuel Assefa: ‘Designation was preferred for a variety of reasons. The term covers both speciality coffees which are trademarked and the ones that have not been trademarked. If we said ‘trademark,’ we would have left out the ones that are not registered as a trademark. We got more in ‘designation.’

Getachew Mengistie: Ethiopia has at least the rights in Common Law.

Samuel Assefa: The term ‘designation’ is broadening the scope for Ethiopia — broaden the horizon that is. Starbucks [on its part,] wanted to ensure all specialty coffees are covered. So, the choice of ‘designation’ was mutually agreed upon.

Coffee Politics: Getachew, you mentioned Common Law. Could you explain what it has to do with the agreement?

Getachew Mengistie: There are some countries where Common Law is recognized. For example, in Canada trademarks, not Common Law, is recognized. Common Law is recognized in Japan but not in France. So, the recognition of Ethiopia’s Common Law rights enhances the position of Ethiopia [where the trademarks are pending.]

Samuel Assefa: Starbucks is global, operating in different legal systems. We didn’t want to lose the advantages in all continents. Common Law applies in countries where it is recognized.”