The Seattle-based Coffee Politics blog continues to analyze the deal Ethiopia and Starbucks struck in June over the marketing and licensing of Ethiopia’s specialty coffee designations. In particular, it explores the meaning of common law trademark rights and the effect of the parties’ decision to define their rights in terms of “designations” rather than “trademarks.” The officials who negotiated the deal for Ethiopia told the blog last month that the term “designation” offered the country broader rights than “trademark” because it encompassed common law marks. (STL’s recent discussion of the issue here.)
Based on that statement, Coffee Politics polled some intellectual property attorneys for an explanation. Here’s the consensus as to what it found those rights mean in practice:
“In the United States, trademark rights arise through use. Meaning, if a mark is used in connection with goods or services as an indicator of source (i.e., if it’s used as a trademark), then the holder has trademark rights. Those trademark rights can stop a late-comer from using a confusingly similar mark in connection with goods or services. To that extent, the owner of a common law mark has the exact same rights as the owner of a federally-registered mark.
“The main differences between rights stemming from registration and those stemming from common law are that federal registration: (1) gives the beholder presumption of being the exclusive owner of the mark in the United States, (2) the mark will be cited by the United States Patent and Trademark Office (USPTO) against future applicants wishing to register a confusingly similar mark, thereby preventing some confusingly similar marks from becoming registered, and (3) the presumed owner can use the ‘circle-R’ (®) designation to indicate to third parties that they should not adopt a mark that’s too close.
“Depending on the terms of agreement, therefore, common law rights might give Ethiopia, at least in the U.S., not only the temporary protection during the contract period, but also may lead to developing a viable brand in the long run. That is, assuming that all (or most) US distributors recognize Ethiopia as the sole owner of the marks and continue to work with Ethiopia in promoting the names for a longer period of time — long enough to distinctly identify the product ‘coffee’ and acknowledge that ‘Sidamo’ [one of the subject indications] is the only source of that distinct brand, the prospects for Ethiopia to tap into the benefits of branding are real.”
This is a nice discussion of basic trademark principles. Glad to see them being put to good and practical use!