A Peek at Ethiopia’s Coffee Trademark Legal Documents

As reported in this commentary, Ethiopia wants to achieve recognition for its trademark rights through either voluntary acceptance or federal registrations. [New comers to the story, visit The Dispute at a Glance on the side bar of this page.]

The voluntary acceptance of Ethiopia’s trademark rights calls for Starbucks and other coffee importers to first acknowledge the country’s ownership of the coffee names Harar, Sidamo, and Yirgacheffe and then sign a Licensing Agreement. This is the least expensive option for a poor country as Ethiopia. Despite the high hopes by many that international corporations who have been advertising themselves as development partners for such countries as Ethiopia would cheer the voluntary Licensing Agreement, this option faced a blow when Starbucks, the world’s coffee giant, opposed to it.

Starbucks’ opposition came as a surprise as it does not equate with what the company claims to have stood for. This triggered a public call by Oxfam and over 90,000 consumers for Starbucks to honor its commitments to the poor coffee farmers. In response, Starbucks’ high ranking official, Dub Hay, said (here), “For us to do what we've been asked to do, which is to sign a licensing agreement recognizing the trademark name to the geographies is something against the law.”

Oxfam says, "While an owner’s rights to trademarks do not necessarily have to be registered in the US and certain other jurisdictions, it is common practice for a party to seek legal recognition of its trademark rights through registration in countries where those rights are to be asserted. Evenwhere it is not required, registration facilitates the enforcement, defense, and licensing of trademark rights."

Starbucks and the National Coffee Association (NCA) would not buy this. Rather, they suggest that Ethiopia’s application should be rejected and the names registered as geographic certification or appellation. This has confused the public as it is not clear as to who has the mandate to choose the type of patent right protection for Ethiopia's coffee names.

Now, we learn that the federal registration process is, in fact, being properly addressed at the USPTO where arguments from both sides - Ethiopia and NCA – are being heard. The NCA argues that the names Harar and Sidamo are generic (Yirgacheffe is already registered as a trademark.) Ethiopia, on the other hand, says that the names are not generic because the consumer only associates quality with Harar and Sidamo – not just ‘coffee’. Further, consumers recognize these names as names in Ethiopia (of course, there is no Guatemalan Harar or Sidamo Jamaica .) The argument by Ethiopia lies on the premise that Harar and Sidamo have achieved a "secondary meaning" status as demonstrated by the consumers' willingness to pay higher prices for these coffees, thus making the names registrable.

In an effort to put the certification vs. trademark confusion to rest and also to provide those curious readers with a hands on access to the actual trademark registration process and pertinent information, all documents made available through USPTO’s website are linked to hereunder. These documents include everything from the applications (separate for each trademark) to the latest scanned legal correspondences. Anyone who has the Serial Number of each application may access both Trademark Applications and Registrations Retrieval (TARR) for a summarized outline of the case and Trademark Document Retrieval (TDR) to retrieve all documents associated to the case.

Click on the library system (TARR or TDR) to be redirected to the appropriate USPTO document site for each specialty coffee name. Note that most of the TDR documents are in PDF format and some of them contain over 600 pages.

Harar TARR TDR (Serial Number: 78589319)

Sidamo TARR TDR (Serial Number: 78589307)

Yirgacheffe TARR TDR (Serial Number: 78589325)

We shall now resume scrutinizing the two most important elements: 1) Starbucks’ stance against Ethiopia’s plan in view of the company’s touted commitment to the poor coffee farmers 2) the project's implementation plan to ensure a fair market share for individual coffee farmers and also their representation in the stakeholders’ group.