Background of the case1
Ho Quang Tri Private Enterprise is the owner of the rice variety ST25, which is currently protected in Vietnam under the Plant Variety Protection Certificate No. 21.VN.2020 issued by the Department of Crop Production on April 6, 2020. The ST25 rice variety has never been applied for and/or granted a patent in any country other than Vietnam. Currently, there are also no trademarks containing the term ST25 under the name of Ho Quang Tri Private Enterprise protected in Vietnam. Likewise, no trademarks containing the term ST25 under the name of Ho Quang Tri Private Enterprise have been filed/registered in any foreign countries including the US.
According to many sources in the Vietnamese press, there are now rampant counterfeit goods, spurious goods, imitative products impersonating the genuine rice ST25 in the Vietnamese market and the US market. In the meantime, there appeared 5 trademark applications containing the term ST25 filed with USPTO, of which the most notable is trademark #2 seeking for registration of the word ST25 (standard character) was approved and published since May 4, 2021:
4 Legal Scenarios May Happen
It would be insufficient if the public and press merely pay their attention to trademark #2. Kindly keep in mind that there are 5 trademark applications seeking protection of the term ST25 at the USPTO, 4 of which are trademarks #1, 3, 4 & 5 were provisionally rejected the USPTO, and their applicants have chance to likely overcome the rejection if their well-reasoned responses are submitted within 6-month time limit. In other words, it is required to wait for the expiry of 6-month time limit which falls on October 14, 2021, June 9, 2021, and May 20, 2021 (applicable for trademarks #4 & 5) respectively then we can determine what we have to do or we would do nothing like “the art of fighting without fighting”. In my opinion, there will be basically 4 legal scenarios as presented below.
Scenario 1: Trademark #2 gets registered by the USPTO because neither opposition nor opposition filed with the TTAB by June 4, 2021, or August 4, 2021 is approved. The worst consequences would be that Ho Quang Tri Private Enterprise cannot export its rice ST25 into the US market, and in the meantime trademarks #3, 4 & 5 will be continuously rejected by the USPTO with a Section 2(d) likelihood of confusion new refusal ground under the Lanham Act
It is agreed that as a general rule, a plant variety name cannot be granted a trademark. However, in the United States, the USPTO is obligated to demonstrate when, under what conditions, and what substantiated evidence is sufficient to affirm that an applied-for mark is regarded as a generic name to be unregistrable as a trademark. Specifically, a two-part inquiry shall be examined by the USPTO: (a) What is the genus of rice ST25 at issue?, and (b) Does the relevant public (US consumers) understand the designation primarily to refer to that genus of ST25 rice?
The US trademark law is very distinct from the world, ie. the Lanham Act states that only the purchasers is the king who determines when a name is generic or descriptive. That’s why in the amazing case Booking.com initially rejected by the USPTO due to genericness (initially refused by reason of descriptiveness) was upheld by the US Supreme Court with majority consensus 8-1, stating that Booking.com is not a common name for a booking service, it should be treated as a proprietary trademark.4
In our opinion, the fact that ST25 rice won the title of the world’s best rice in 2019 is not only a great event for Vietnam's agriculture but also a rare opportunity to build up and develop the rice brand name ST25 in the US market. In accordance with the US trademark law, Ho Quang Tri Private Enterprise can utilize one or several amongst 16 different legal bases to bar the published mark ST25 from registration. Which legal basis, nevertheless, is to choose and establish would be the most important and difficult task by lawyers because the same would result in which one of four scenarios happens. It can be concluded that the occurrence of Scenario 1 or 2 would be considered a failure, or Scenario 3 is not good, while only Scenario 4 is the supremacy – a real legal victory for ST25 rice in the US market.
Bross & Partners had experience in trademark litigation in the United States, for instance, we won the case Pho Thin 13 Lo Duc squatted by a Korean individual in early 2021. Should you have any query, please contact us at email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.
2 You must choose at least one filing basis amongst 4 filing bases under Sections 1(a), 1(b), 44(e) and 44(d) when you register your trademark via national registration with the USPTO. See: http://bross.vn/newsletter/ip-news-update/Understanding-of-US-Trademark-Law-to-Avoid-Losing-Brand-Name-in-the-US-Market
3 See Step 5: https://www.uspto.gov/trademarks/basics/trademark-process#step5 ; or see the Section 1(a) timeline: https://www.uspto.gov/trademarks/trademark-timelines/section-1a-timeline-application-based-use-commerce
4 See the US Supreme Court’s ruling in the Booking.com case: https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf
0+
