Seattle Trademark Lawyer

Champagne sparkling wine only comes from the Champagne region of France, right? Until the Champagne region of France moves, that is. The Institut national de l’origine et de la qualite, which governs the Appellation d’Origine Controlee designation for Champagne, is set to expand the appellation’s boundaries, which currently spans 319 villages in north-eastern France. What wasn’t “true” Champagne will soon be the real McCoy.

In other words, vineyards that arbitrarily got the stamp of approval soon will be joined by new vineyards that also arbitrarily get the stamp of approval.

The reason behind the move? Increased demand for Champagne in Russia and China.

Of course, this is great news for neighboring viticulturalists. A French official was quoted as saying: “If your vines fall on the wrong side of the divide, they will be worth 5,000 euros a hectare. On the other side they will be worth one million euros.”

I’m not saying that any vintner should be able to call its sparkling white wine “Champagne.” But this move emphasizes that economics, not distinctiveness, influences (or even drives) what’s approved and what’s not. That would seem to undermine why geographic indications exist in the first place.

As STL readers know, Champagne only comes from the Champagne region of France (STL post here). And Wild American Shrimp only come from “their native habitat in the coastal waters of the Gulf and East Coasts of the United States” (STL post here). 

As I suspect Italians have long known, true Parmesan cheese only comes from Italy. The five regions around Parma, in northern Italy, to be exact, and is made only from raw milk, with no additives, and is aged at least one year. At least that’s what the European Court of Justice ruled today.

Billboard at the border of Parma and Piacenza announcing
the home of Parmigiano-Reggiano cheee. Photo credit: J.P. Lon

The ruling was a setback for German producers whose “Parmesan” cheese was deemed to be imitation. In so ruling, the court rejected Germany’s argument that the name was generic for a type of hard, crumbly cheese that is often grated over food. On that issue, the court found:

“When assessing the generic character of a name, the Court has held that it is necessary, under Article 3(1) of Regulation 2081/92, to take into account the places of production of the product concerned both inside and outside the Member State which obtained the registration of the name at issue, the consumption of that product and how it is perceived by consumers inside and outside that Member State, the existence of national legislation specifically relating to that product, and the way in which the name has been used in Community law.

“As indicated by the Advocate General in points 63 and 64 of his Opinion, the Federal Republic of Germany restricted itself to providing quotations from dictionaries and specialist literature which do not provide any comprehensive view of how the word ‘Parmesan’ is perceived by consumers in Germany and other Member States, and failed even to give any figures as to the production or consumption of the cheese marketed under the name ‘Parmesan’ in Germany or in other Member States.

“According to the documents in the case, in Germany, certain producers of cheese called ‘Parmesan’ market that product with labels referring to Italian cultural traditions and landscapes. It is legitimate to infer from this that consumers in that Member State perceive ‘Parmesan’ cheese as a cheese associated with Italy, even if in reality it was produced in another Member State.

“Finally, at the hearing, the Federal Republic of Germany was also unable to provide information on the quantity of cheese produced in Italy under the PDO ‘Parmigiano Reggiano’ and imported into Germany, making it impossible for the Court to use the factors relating to the consumption of that cheese as indicators of the generic character of the name ‘Parmesan’.

“Since the Federal Republic of Germany has therefore failed to show that the name ‘Parmesan’ has become generic, use of the word ‘Parmesan’ for cheese which does not comply with the specification for the PDO ‘Parmigiano Reggiano’ must be regarded for the purposes of the present proceedings as infringing the protection provided for that PDO under Article 13(1)(b) of Regulation No 2081/92.”

“U.S. foodmaker Kraft Foods Inc. has used the name Parmesan for grated hard cheese since the mid-1940s, according to its Web site. ‘Kraft Grated Parmesan’ was introduced in green and red canisters in 1945. Donna Hrinak, a company spokeswoman in Zurich, Switzerland, said Kraft doesn’t sell Parmesan cheese in Europe.”

The case cite is Commission v. Germany, C-132/05 (European Court of Justice, Feb. 26, 2007).

Africa News reports today that Starbucks Chairman Howard Schultz is in Africa recognizing the company’s settlement with Ethiopian coffee farmers over the rights to three coffee names: SIDAMO, HARAR, and YIRGACHEFFE. In the last few months, STL has discussed the settlement here and here.

Mr. Schultz summarized the dispute by saying: “The Ethiopian government wanted to potentially trade mark pieces of geography that stand for where the coffee is from, whether it is Harar or Sidamo or any other place and that is their privilege and their right. Starbucks as a company, we can’t tell any government what to do or what not to do, we are just customers.”

Downplaying the controversy, he added: “The issue of the trademark was never as contentious as it was reported.”

In the end, he said it made sense for Starbucks to align itself with Ethiopian farmers to promote sustainability and high quality coffee. For that, he said, Starbucks was willing to pay a premium.

Ethiopian Prime Minister Meles Zenawi agreed that ”[a]ll of the disagreements are behind us now….”

He said Mr. Schultz made an “unprecedented decision in favoring our coffee farmers by recognizing their property rights. It has never [been] done before for any other product from a country such as Ethiopia.”

The Seattle Times has more on Mr. Schultz’s visit here.

It’s true. We Seattlites fancy ourselves as living in the center of the coffee universe. After all, this is home to Starbucks, Seattle’s Best Coffee, and Tully’s, among others. Not surprisingly, the association between Seattle and coffee hasn’t been lost on coffee sellers. 

A quick search of U.S. Patent and Trademark Office applications for trademark registration shows many remote coffee sellers want to cash in on Seattle’s coffee cache. For instance, just last week the Mississippi-based Seattle Drip Coffee Company obtained a registration for SEATTLE DRIP COFFEE COMPANY and Design for coffee and retail store services featuring gourmet coffee. In 2002, Michigan-based Kroger Co. registered SEATTLE CAFE ROAST and Design for coffee. Seattle Coffee Company, Inc., of Little Rock, Ark., similarly registered ESPRESSLY SEATTLE COFFEE CO. but lost it after Seattle’s Best Coffee Co. (of Seattle) petitioned to cancel the registration.

Another Arkansas company, William J. Giles Inc., applied in April to register BARISTA’S SEATTLE GRIND for restaurant services featuring coffee and desserts. Iowa’s Java Station, LLC, applied to register JAVA STATION ESPRESSO SIP OF SEATTLE and Design, which remains pending today. An individual residing in Dallas, Texas, also recently applied to register SEATTLE BROTHERS for coffee shops and coffee-house and snack-bar services.

So what about 15 U.S.C. § 1052(e)(2), which bars registration of marks that are “primarily geographically descriptive”? Or Section 2(e)(3), which bars registration of marks that are “primarily geographically deceptively misdescriptive”? The former would seem to apply if the coffee being sold under the mark came from Seattle and the latter would seem to apply if the coffee did not. The Patent and Trademark Office appears to have cited these bars fairly frequently, though not in every case. In one office action, the PTO succinctly stated:

“Registration [of SEATTLE COFFEE COMPANY] is refused because the proposed mark consists of or comprises geographically deceptive and primarily geographically deceptively misdescriptive matter in relation to the identified goods and/or services. …

“The primary significance of the term ‘SEATTLE’ is geographic. The goods do not originate in this geographic location. The public is likely to believe that the applicant’s goods come from this place because Seattle is well-known for coffee. Furthermore, this belief would materially influence consumers to purchase the goods because of the high quality associated with Seattle coffee.”

The PTO’s enforcement of the bar for “primarily geographically deceptively misdescriptive” marks likely played a role in the abandonment of the following applications in connection with coffee:

• SEATTLE SUNRISE (by a Delaware individual),
• SEATTLE COFFEE COMPANY (by a North Carolina individual),
• A CUP OF SEATTLE (by a Colorado company),
• SIP OF SEATTLE (by a Tennessee company),
• HIGHER GROUNDS SEATTLE’S FINE GRIND and Design (By a Virginia company), and
• SEATTLE’S STYLE ESPRESSO (by a Pennsylvania company).

My favorite abandoned SEATTLE coffee application is for DYDO SEATTLE CAFFE and Design by DyDo Drinco, Inc., of Japan. Its mark contains Japanese characters that translate to “Adult’s Milk Coffee Seattle.”

But coffee isn’t just for adults anymore, as Mattel, Inc., illustrates. In 2000, it applied to register SEATTLE LATTE for “doll clothing and doll accessories.” For Seattle coffee drinkers of the future.

The Western District today denied Cascade Financial Corp.’s and Cascade Bank’s motion for preliminary injunction against Issaquah Community Bank, Capital Bancorp, Ltd., and Robert Ittes. (STL coverage of this case here and here.) Plaintiffs had argued that defendants’ use of ISSAQUAH COMMUNITY BANK as a name and trademark infringes plaintiffs’ ISSAQUAH BANK trademark for competing banking services. Judge Thomas Zilly decided the motion without oral argument.

The court stated it will enter an opinion explaining the basis for its ruling at a later date.

The case cite is Cascade Financial Corp. v. Issaquah Community Bank, No. 07-1106 (W.D. Wash.).