USPTO Again Refused Sidamo Registration

The United States Patent and Trademark Office (USPTO) refused registration of SIDAMO as a trademark, for a second time, on March 27, 2007.

In an electronic mail sent to Arnold & Porter LLP, a Washington based law firm representing the Ethiopian government (the applicant), the examining attorney said, “the refusal of registration under Section 2(e)(1) is continued, notwithstanding applicant’s claim of acquired distinctiveness under Section 2(f), 15 U.S.C. §1052(f).

In a communication dated January 17, 2007, the Ethiopian government argued against the generic refusal under section 2(e)(1) and also argued that the geographical term is registrable under section 2(f).

Basically, the USPTO is convinced, because it believes the mark is generic, that registering Sidamo “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”

The argument regarding registrability of the mark Sidamo under section 2(f) does not seem to have had much impact.

The Government of Ethiopia filed applications with the USPTO in March, 2005 to trademark Harar, Sidamo and Yirgacheffe. In the meantime, it was learned that Starbucks’ application to register “Shirkina Sun-Dried Sidamo” trademark was pending with the same office. Starbucks was forced by the public uproar to withdraw its application but it did so only after the National Coffee Association (NCA) had filed a letter of protest asking Ethiopia's application to register all the names be denied.

Ethiopia has successfully registered its coffee marks in many countries including in Canada and Japan. In the US, Ethiopia’s application Yirgacheffe has been granted.

The decision on Harar appeal is still pending. The government of Ethiopia can appeal the decision on Sidamo within six months.

For the Timeline of events, click here.

Following is the full text of the decision letter:
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Section 2(e)(1) Refusal Continued—Generic Mark

In the initial application, the applicant submitted the mark, SIDAMO for “coffee,” for registration on the Principal Register under section 2(f). The applicant claims use since December 31, 1928.

In the Office Action of July 17, 2006, the examining attorney refused registration on the Principal Register under section 2(f) because the mark is incapable of serving as a source-identifier for applicant’s goods, namely “coffee.” In support of the refusal, the examining attorney submitted 7 articles from the Google® search engine showing the mark generically used as a type of coffee.

In the response of January 17, 2007, the applicant argues that the mark is a geographical indicator for a type of coffee grown in the Sidamo region of Ethiopia. A term that is primarily geographically descriptive of the goods or services under §2(e)(2) may be registered on the Principal Register if it is shown to have acquired distinctiveness under §2(f). TMEP § 1210.07(b). In this case, the applicant has allege use since 1928, and submits two declarations from Ethiopian officials. One attesting to the amount of coffee exports to the U.S. from 1971 to 2004. The other attesting to the licensing control of the mark and quality of its goods. As to the use dates and the first declaration, the use dates itself provides ample section 2(f) evidence to overcome a geographical refusal, particularly under section 2(e)(2). Thus, this was the reason no section 2(e)(2) was given.

As to the second declaration, it appears that the applicant may want to apply for a certification mark. If the proposed mark is used to certify the goods, the applicant may convert the application to one for a certification mark of regional origin under § 4 of the Trademark Act, 15 USC § 1054. Under certain circumstances the name of the place from which goods or services originate may function as a certification mark. When geographic terms are used to certify regional origin (e.g. "Idaho" used to certify that potatoes are grown in Idaho), registration of certification marks should not be refused and, in applications to register composite certification marks, disclaimers of these geographic terms should not be required on the ground of geographical descriptiveness. See TMEP §§1306.02 et seq. concerning procedures for registration of certification marks that certify regional origin.

In any event and regardless if the geographical term has acquired distinctiveness, when a geographic term in the mark is generic for a type of goods, then a refusal under section 2(e)(1) on the Principal Register is appropriate, because the term is generic. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

A two-part test is used to determine whether a designation is generic:

(1) What is the class or genus of goods at issue?
(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

In this case, sidamo is generally defined as a type of Arabica coffee, lightly fragrant and fruity in flavor. Furthermore, as the articles attest, sidamo coffee is highly prized by coffee drinkers for its distinct flavor and would be asked for by its name, sidamo coffee. The examining attorney attaches 17 more articles showing that the proposed mark SIDAMO is generic in connection with coffee because purchasers would come to recognize sidamo as a type of coffee.

Therefore, the refusal of registration under Section 2(e)(1) is continued, notwithstanding applicant’s claim of acquired distinctiveness under Section 2(f), 15 U.S.C. §1052(f).
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