Introduction
1. Well-known Vietnamese brands registered by overseas competitors are largely seen nowadays. Some typical cases such as Trung Nguyen coffee, Vinataba tobacco, Vifon instant noodles, Ben Tre coconut candy, Duy Loi foldable hammock, Sa Giang shrimp chips, Phu Quoc fish sauce, etc. … all of which were illegally registered in foreign countries are unforgetable in the mind of Vietnamese people. Recently, the sign “ST25”, the name of a Vietnamese rice variety, produced a delectable and premium rice product that garnered international recognition and received the “World’s Best Rice” award, but it has been registered as a trademark by four US companies and one Australian. This has sparkled up a warning bell for a strategy for brand protection for Vietnamese business. Although this is an old story, the lesson is always fresh and relevant: You will pay a high price sooner or later if you do not have a proper brand protection strategy in place. Though government assistance is critical, Vietnamese companies must raise awareness and strengthen their capacity to defend themselves in order to survive and thrive.
The sign “ST25” for rice product applied to register by the businesses in the US and Australia
2. For thousands of years, Vietnam has been the homeland of agriculture. Thanks to favorable weather and fertile soil, rice has been planted in all fields in the North, Central and South of Vietnam. Rice grain is considered the primary food source of the people.Vietnam has always been ranked as one of the world’s leading rice exporting countries.In 2020 alone, Vietnam exports 6.15 million tons of rice to the rest of the world, with a value of $ 3.07 billion.
3. The rice variety with the name “ST25”, which was developed and successfully bred by Mr. Ho Quang Cua and his associates, a group of agricultural engineers in Soc Trang province, has produced rice with long grain, no chalkiness, when cooked, the rice is fragrant, sticky and has a very appealing sweet taste, the aroma of pineapple leaves, and the rice retains its fragrance when cooled. Unfortunately, the name “ST25” of his rice variety has recently been applied for registration as a “trademark” by four companies in California, the United States and one company in Australia while Mr. Ho Quang Cua did not have time to do so.
4. While the “ST25” mark is still pending in Australia, substantive examination for the said mark has been completed by the United States Patent and TrademarkOffice (“USPTO”). It is worth mentioning here that the trademark examination outcomes for marks containing the same element “ST25” provided by USPTO examiners appear to be inconsistent.
5. Under Nonfinal Office Actions against two marks “” and “” for “rice” in Class 30 in the name of Transworld Foods, Inc., the USPTO concluded that [Further attached evidence shows that “ST25” refers to a particular strain or varietal of rice. Varietal or cultivar names are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds. They are generic and cannot be registered as trademarks because they are the common descriptive names of plants or seeds by which such varieties are known to the U.S. consumer]. As such, the USPTO requested Transworld Foods, Inc. that “No claim is made to the exclusive right to use “ST25 RICE” apart from the mark as shown”.
6. Similarly, in a Nonfinal Office Action against the mark “” for “rice’ in Class 30 in the name of Ngon Fish Sauce, Inc., the USPTO concluded that [The applicant must disclaim the wording “GAO THOM ST25” which translates to “fragrant rice ST25. The attached evidence from neconomictimes.com shows that the wording “fragrant rice” is used to describe a characteristic of Vietnamese rice and “ST25” is a variety of rice]. No claim is made to the exclusive right to use “THE WORLD’S BEST RICE GAO THOM ST25 DAC SAN SOC TRANG NGON NHAT THE GIOI 100% TU NHIEN KHONG BEO PHI – KHONG TIEU DUONG NEW CROP 2020 NET WT. 25LBS (11.3 KG)”.
7. In the above Office Actions, the USPTO’s examiners cited various documents in the Internet as a ground to determine “ST25” is a name of a rice variety in Vietnam or a plant variety originating from Vietnam for a refusal of exclusive protection to the element “ST25” contained in the above marks based on Trademark Manual of Examining Procedure (TMEP) 1202.12. Further, if the examiner determines that wording sought to be registered as a mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables comprises a varietal or cultivar name, then the examiner must refuse registration, or require a disclaimer, on the ground that the matter is the varietal name of the goods and does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
8. From the foregoing, the element “ST25” in the above three marks is deemed a designation of a particular strain or varietal of rice, such a designation is generic and is not eligible for registration as a mark because it is the common descriptive name of a plant or a seed by which consumers in the United States are familiar therewith.
9. However, the trademark examination search results based on the USPTO trademark database indicate that the USPTO’s examiners did not adopt a unanimous examination principle as they did for the above three mentioned trademark applications. In detail, the “” mark applied for rice products in Class 30 in the name of I&T ENTERPRISE, INC. did not face similar rejection for the reason that it is the designation of a variety of rice selected and bred in Vietnam. Accordingly, the “ST25” mark was published on the US Trademark Official Gazette (TMOG) on 04/05/2021. If no opposition is filed by a third party, the “ST25” mark will statutorily proceed to registration in the name of I&T ENTERPRISE, INC.
What to do?
10. According to the IP experts at the KENFOX IP & Law Office, who possess extensive experience assisting and effectively advising various Vietnamese businesses in successfully registering their trademarks in the United States, there are still opportunities for Vietnamese “ST25” rice products to be safely commercialized in the United States if the USPTO refuses to refuses protection for the trademark “ST25” in the name of I&T ENTERPRISE, INC. In the context that the USPTO examiner did not rely on the provisions of a conflict between the cultivar name and the mark to refuse protection for the “ST25” mark in the name of I&T ENTERPRISE, INC., at this time, it is required to file a Notice of Opposition under the opposition proceedings to challenge a trademark application in the United States. Since an opposition must be submitted within 30 days of a Trademark Application being published in the TMOG, the urgency of the timing of a trademark opposition in the United States must be given special consideration. Otherwise, the trademark will be matured into registration.
11. Mr. Nguyen Ngoc Cam, a trademark attorney with KENFOX, revealed during a recent discussion that trademark conflicts with varietal or cultivar names are not uncommon. When a breeder selects and breeds a plant variety, the variety is frequently given a name.Varietal names are frequently made-up terms. During commercialization, the varietal designation/name is frequently used as a trademark to imply that the products originated from that variety, thereby making a varietal name be considered as a trademark. This makes it difficult for examiners of intellectual property offices in a number of countries to obtain reliable evidence to determine whether the sign/element sought for registration is a “varietal name” or a “trademark” for the purpose of rejecting or approving protection.
12. Mr. Nguyen Ngoc Cam added that in the above case, establishing that the sign “ST25” is the name of a rice variety selected and bred by Mr. Ho Quang Cua and his associates in Soc Trang province is not difficult. The designation “ST25” denotes rice that has been processed from paddy harvested from the “ST25” variety of rice. The initials “ST” stand for “Soc Trang” province, a Mekong Delta province where the “ST25” rice variety is developed and bred. The sign “ST25” falls within the scope of protection for the plant variety rights. As a result, it is necessary to invoke the plant variety regulations to oppose I&T ENTERPRISE, INC.’s registration of the “ST25” mark.
13. A plant variety is one of three categories of subject matter that are protected by Intellectual Property rights (including (i) Copyright and related rights, (ii) Industrial Property Rights, and (iii) Plant Variety Rights). Vietnam became a member of the International Union for the Protection of New Varieties of Plants (UPOV) on December 24, 2006, and is now one of the organization’s 77 members. The United States has been a member of UPOV since November 8, 1981. Thus, the USPTO’s reliance on the right of a plant variety to reject exclusive protection for the element “ST25” contained in the above three trademark applications filed by Transworld Foods, Inc. and Ngon Fish Sauce Company, Inc. for the rice product of Class 30 is entirely appropriate.
Key Takeaways
14. The central questions in this case may be:
15. The name proposed / given to a plant variety selected and developed by the breeder is referred to as a “varietal name” or a “denomination” or a commodity designation. Common names in any language of goods or services that have been widely and regularly used and known to many people will be deemed indistinguishable, failing to perform the trademark’s distinguishing function, and thus not protected as a trademark. “ST25” is the name given by Mr. Ho Quang Cua for the rice variety that he chooses to create and develops, and thus does not meet the criteria for trademark protection, as it is the name of a variety of rice or a name of a plant variety. But every rule has its exceptions. The USPTO’s examiner refused protection for the element “ST25” contained in the three trademark applications due to the plant variety name in Vietnam, but did not issue a similar notice of refusal to the “ST25” mark in another application was confusing and resulted in the conclusion that the USPTO’s trademark assessment principles were inconsistent. However, this inconsistency is understandable because (i) trademark applications are examined by different examiner and (ii) it is more likely that this examiner has found grounds for refusal while the examiner did not.
16. Whether “ST25” is considered the “designation” of the rice variety, or whether it legally fails to meet the requirements for trademark monopoly protection, the delay in IPR registration in large markets where Vietnamese rice products are heavily exported may may cost IPR holders dearly. Allowing your brand / intellectual property to fall into the hands of a competitor is the equivalent of losing a tool that could protect you effectively. Trademark ownership has evolved into a potent weapon in the hands of competitors.It forces you to sit at the negotiating table, accept to buy back your own brand at whatever price your competitor would offer, or else your branded products will be seized and/or destroyed by the law enforcement authorities and you risk of being sued and ordered to pay damages by a court, etc. Our recommendation is as follows: Along with business development, Vietnamese businesses must place a premium on brand creation, management, and development, all of which must adhere to a miticulous and methodical roadmap. Consult with IP attorneys at each stage, market approach, and legal issue to avoid becoming embroiled in increasingly complex, costly and protracted intellectual property proceedings without knowing what the outcome will be and in some scenarios, spending money and only getting worse.
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