Rotstein, Fiona; Christie, Andrew --- "Blood, Toil, Tears and Sweat: The Battle of Sidamo" [2010] UMelbLRS 9

Last Updated: 14 March 2011

Blood, Toil, Tears and Sweat: the Battle of Sidamo

FIONA ROTSTEIN AND ANDREW F. CHRISTIE[*]

Fiona Rotstein, Research Fellow, Melbourne Law School and Intellectual Property Research Institute of Australia, University of Melbourne; Andrew F. Christie, Davies Collison Cave Professor of Intellectual Property, Melbourne Law School and Research Associate, Intellectual Property Research Institute of Australia, University of Melbourne

This article was first published in the European Intellectual Property Review, Volume 32, Issue 9, 2010

ABSTRACT

This article tells the story of the battle between a US multi-national corporation and one of the world’s poorest countries over control of the name of a premium coffee growing region. The story illustrates the supremacy of trade marks over geographical indications, the strategic importance of licence agreements, and the potential for the intellectual property system to be used to benefit the citizens of least developed countries.

INTRODUCTION

Customers of the ubiquitous coffee chain Starbucks ordering their daily ‘double-choc Java latte’ or ‘decaf mocca vanilla expresso’ may have little thought for how their coffee ends up in the company’s cups branded with the familiar Starbucks trade mark of the mythological twin-tailed siren. Instead, their concern may be whether the coffee is hot enough, the froth high enough, or the taste sweet enough. As customers queue for their frappuccinos or macchiatos amid the stylish interior of the world’s most famous ‘coffee house’, they are removed from the realities of life on the vast coffee plantations scattered across Ethiopia. Past the dense mat of reeds and tall grass, local coffee farmers toil long hours for little pay to ensure that Starbucks customers get their daily caffeine hit. With the sun beating against their backs, the farmers move quickly to collect the coffee beans ripened in the arid heat. They pause momentarily to wipe the sweat from their brows, a long way from the air-conditioned comfort of Starbucks’ stores.

In 2005 these two worlds collided, in a battle to obtain control of the name of the premium coffee region in Ethiopia – Sidamo. The battle was fought over a two-year period, drew 100,000 people worldwide to demand Starbucks change its branding strategy, and resulted in Ethiopian farmers extracting a higher price for their coffee beans. This article tells the story of that battle. In doing so, it illustrates the supremacy of trade marks over geographical indications, the strategic importance of licence agreements, and the potential for the intellectual property system to be used to benefit the citizens of least developed countries.

THE PLAYERS

Often referred to as the ‘birthplace of coffee’, Ethiopia is Africa’s largest coffee producer, and coffee is its largest source of foreign exchange.[1] The country exports more than 177,000 tons of coffee a year, representing 54% of the nation’s exports and 15 percent of the world’s total coffee production.[2]

Starbucks is a multi-national coffee and coffee house chain based in the US. The first Starbucks store opened in Seattle in 1971. In 1983, the director of retail operations and marketing, Mr. Howard Schultz, traveled to Italy where he was impressed with the popularity of espresso bars in Milan. He saw the potential to develop similar coffee houses serving specialty coffee, and the following year he convinced the founders of Starbucks to test the concept in downtown Seattle. That successful experiment was the genesis for a company that Mr. Schultz developed and of which he is presently the Chairman and Chief Executive Officer.[3]

In the ensuing years, ‘Starbucks’ became one of the world’s best-known brands. As at April 2009, the company had 234 trade mark applications under prosecution within the United States Patent and Trade Marks Office (USPTO).[4] According to its website, Starbucks employs more than 170,000 people worldwide, has 7,087 company-operated stores and 4,081 licensed stores in 50 US states, and more than 16,000 stores in 44 countries.[5]

THE FIGHT FOR OWNERSHIP OF ‘SIDAMO’

Starbucks’ trade mark application

On 8 June 2004, Starbucks filed with the USPTO an application to register as a trade mark SHIRKINA SUN-DRIED SIDAMO in respect of ‘Ground and whole bean coffee; prepared coffee based beverages’.[6] The Government of Ethiopia was notified of Starbucks’ application on 8 October 2005, when the USPTO responded to the Government’s own application of 17 March 2005, to register SIDAMO as a trade mark. The USPTO stated that it would suspend consideration of the Government’s application pending disposition of Starbucks’ application. This was because the USPTO considered that the Government’s trade mark was ‘substantially identical or deceptively similar’ to the Starbucks’ trade mark, and that the goods in respect of which the Government sought registration were ‘the same or similar goods’ as in respect of which Starbucks sought registration.[7]

The Government of Ethiopia was not pleased about Starbuck’s earlier-filed trade mark application. Mr. Kassahun Ayele, the Ethiopian Ambassador to the US at the time, made efforts to engage Starbucks in discussions to resolve the matter. Mr. Ayele’s letter to the chairman of Starbucks went unanswered for over a month. According to the Ethiopian Embassy, what Mr. Ayele did receive was a dismissive reply from a Starbucks lawyer and, a short time later, a note from a Corporate Vice President of the company inviting him to attend an award event for Mr. Shultz and to contribute $US600 for the ‘privilege’.[8]

Not surprisingly, the Government of Ethiopia decided to object to the registration of SHIRKINA SUN-DRIED SIDAMO. On 22 June 2006, the Government filed a formal opposition before the USPTO Trademark Trial and Appeal Board.[9] The Government put its case against Starbucks on two grounds. The first ground of opposition was that there exists a ‘likelihood of confusion’ between the two marks. The Government argued that the two marks were ‘virtually identical’ because they were ‘closely similar in sight, sound and appearance’, the dominant part of the Starbucks mark was ‘SIDAMO’, and ‘SUNDRIED’ is a generic or descriptive term. In addition, the Government argued that the relevant goods for each mark were identical or virtually identical, that the trade channels for each goods were identical or similar, and that the consumers for these goods were of the same type. The second ground of opposition was that registration of Starbucks’ mark would ‘damage’ the Government of Ethiopia and hinder its ability to protect its own SIDAMO mark.[10]

The opposition ended in the Government of Ethiopia’s favor. On 5 July 2006, Starbucks filed a submission with the USPTO that it ‘hereby abandons’ its SHIRKINA SUN-DRIED SIDAMO trade mark application. The Government of Ethiopia was, naturally, pleased that its opposition to the registration of Starbucks’ trade mark application achieved the desired result. With Starbucks’ trade mark application abandoned, the Government of Ethiopia could now focus its energies on having SIDAMO registered as a trade mark in the US.

Government of Ethiopia’s trade mark application

Although Starbucks’ mark was no longer an obstacle to registration, the Government of Ethiopia encountered various difficulties in securing registration of SIDAMO as a US trade mark. On 17 July 2006, the Government of Ethiopia’s trade mark application was refused by the USPTO. The USPTO considered that the mark was descriptive of the goods identified and therefore not eligible for registration under US trade mark law. The USPTO Examining Attorney’s report stated:

The attached evidence from Google shows that the proposed mark SIDAMO is incapable as used in connection with coffee because it is a recognized type of coffee and coffee bean.[11]

The evidence cited by the Examining Attorney included print-outs from websites with the following headings: ‘Ethiopia Sidamo: coffee that tastes like strawberries and cream’, ‘Great deals on Ethiopian Sidamo, shop on eBay and Save!’, and ‘Ethiopia 100% Organic Fair Trade Sidamo’.

Almost a month later, on 18 August 2006, the USPTO received a ‘Letter of Protest’ by the Specialty Coffee Association of America (SCAA) that objected to the registration of SIDAMO as a trade mark on the ground that it is descriptive of a variety of coffee and other traders should be entitled to use it. Like the Examining Attorney’s report, print-outs of websites which used the term ‘Sidamo’ as a description of a type of coffee were presented as evidence against trade mark registration. According to the USPTO, the evidence presented ‘established a clear case which supports a refusal, requirement or suspension’ in the SIDAMO trade mark application.[12]

The SCAA was of the view that, rather than apply for trade mark registration, the Government of Ethiopia should set up a national system of certification marks to enable Ethiopia to protect its coffees as geographical indications. The scheme had worked well for Jamaica, which had successfully registered a certification mark in the US for its premium Jamaica Blue Mountain Coffee. According to the SCAA:

The World Trade Organization recommends using “certification marks” for the protection of geographical indications of origin as a means of protecting the intellectual property rights of agricultural producers. This is also the position adopted by SCAA.[13]

However, this option was not what the Government of Ethiopia and its advisors had in mind. On 12 October 2006, the Director General of the Ethiopian Intellectual Property Office, Mr. Getachew Mengistie, wrote to the SCAA:

Trade mark registration confers rights that go beyond the scope of rights associated with certification marks – the two do not establish the same goals...With all due respect, it is for Ethiopia to determine which form of ownership – trade mark or certification mark – it wishes to pursue.[14]

Government of Ethiopia’s trade mark licence

In addition to applying for registration of SIDAMO as a trade mark in the US, the Government of Ethiopia began entering written contractual agreements with US coffee retailers. Under these agreements, the Government licensed retailers to use the trade mark SIDAMO in relation to Ethiopian coffee. In early 2005, the Government invited Starbucks to enter into this license agreement. Starbucks declined.

Starbucks refusal to enter the license agreement attracted criticism. In October 2006, Oxfam International and other development organizations launched a global campaign to ensure that Starbucks followed the lead of other US coffee retailers and signed the licence agreement. Oxfam International declared 16 December 2006 as ‘Starbucks Day of Action’ and encouraged people to ‘Tell Starbucks that you stand by Ethiopian coffee farmers and you want the company to honor its commitments.’ It distributed a ‘Starbucks Day of Action Toolkit’ which consisted of a poster displaying a black and white photograph of a traditional Ethiopian farmer and various ‘myths’ that were dispelled by ‘facts’ concerning the trade mark dispute. For example, the poster read: ‘Myth: Geographic certification will be better for Ethiopians than a trademark agreement. Fact: Only the trademark licensing agreement would give Ethiopia the control it demands.’ The Toolkit urged campaigners to ‘visit www.oxfamamerica.org/starbucks to help’.[15] By the end of the public campaign, Oxfam International claimed that more than 96,000 people had contacted Starbucks by email, fax, and phone, and by visiting local stores, requesting Starbucks to sign the licence agreement.[16]

Starbucks attempted to counter the negative publicity it was attracting. In November 2006, Starbucks President Mr Jim Donaldson announced that company executives had met with the Ethiopian Prime Minister ‘to talk about how we can work together on initiatives that will benefit coffee farmers’.[17] In February 2007, Starbucks announced that it had donated $US500,000 to CARE, a US-based international humanitarian and development organization, ‘to help fund a three-year program that will improve economic and educational prospects for more than 6,000 people in rural Ethiopia’s coffee growing regions.’[18]

After public pressure and long negotiations, on 20 June 2007, Starbucks and the Government of Ethiopia released a ‘Joint Statement’ announcing that Starbucks had signed the US trade mark licence agreement. Ethiopia’s ambassador to the US, Dr Samuel Assefa, praised Starbucks for its corporate citizenship. ‘This alliance,’ he said, ‘highlights the significance of visionary entrepreneurs in creating space for win-win engagements between corporations that operate globally and developing countries such as ours.’[19] For the non-government organizations who intervened, the release of the ‘Joint Statement’ was excellent news. Oxfam International proudly celebrated the ‘Campaign victory’ against Starbucks on its website.[20]

Registration of the SIDAMO trade mark

Though Starbucks had signed the licence agreement, the Government of Ethiopia was still fighting to have the USPTO register SIDAMO as a trade mark. In three separate Office Actions, the USPTO refused registration of SIDAMO.[21] On each occasion, the USPTO held that the proposed trade mark is a recognized type of coffee and coffee bean and is therefore descriptive of the goods identified.[22]

The Government of Ethiopia responded to the USPTO. It argued that the SIDAMO mark is not descriptive, and that the evidence presented by the Examining Attorney did not support this ground of refusal. In particular, it argued that SIDAMO is a geographic term that has acquired distinctiveness, and that the SIDAMO mark is widely recognized. In support of this argument the Government relied on the US trade mark licence agreement signed by numerous third parties ‘including major industry participants’, and on the Joint Statement recently issued with Starbucks. The Government submitted that:

This evidence demonstrates that the relevant consuming public – whether professionals in the coffee industry or coffee consumers – understand and recognize that the SIDAMO mark identifies coffee from Ethiopia offerred through the Applicant.[23]

The Government of Ethiopia’s argument was ultimately accepted by the USPTO. The trade mark application was approved for publication on 22 October 2007. Finally, on 12 February 2008 – nearly three years after the application was originally filed – SIDAMO was registered as a trade mark by the USPTO.

THE STRATEGY BEHIND THE CAMPAIGN

The dispute with Starbucks was the major, and most visible, battle in a broader campaign by the Government of Ethiopia to achieve wider recognition of its coffee internationally and to maximize the commercial returns from its coffee. That campaign adopted a two-limbed strategy. Both limbs operated in parallel to, and complemented, each other. The combined effect of the two limbs proved to be very powerful.

Trade mark rather certification mark protection

The first limb of the strategy was to seek a registered intellectual property (IP) right in respect of the name of the region in which its premium coffee is grown.[24] At the outset, the Government faced the critical choice of which IP protection to seek: registration of SIDAMO as a trade mark, or registration of SIDAMO as a geographical indication in the form of a certification mark.[25] A trade mark is a sign that indicates a connection between the trade mark owner and the goods or services supplied under that mark.[26] In contrast, a geographical indication is a sign that indicates both the geographical origin of a product as well as certain qualities of a product attributable to that origin. Geographical indications are functionally similar to trade marks but, as geographical names, they are descriptive and therefore unable to be registered as trade marks unless they have acquired distinctiveness.[27]

Acquired distinctiveness – or, as it is also called in the US, ‘secondary meaning’ – is distinctiveness that results from sustained use of the mark in commerce. Through that use, the mark comes in the mind of consumers to identify not only the type of goods or services supplied under the mark, but also the commercial source of those goods or services.[28] To prove that a trade mark has acquired distinctiveness, an applicant may, in support of registrability, submit evidence showing the mark’s duration, extent and nature of use in commerce, and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and declarations from the trade and/or public tending to show that the mark distinguishes such goods or services of the applicant from the goods or services of other suppliers.[29]

Given that ‘Sidamo’ is the name of the geographical region in which Ethiopian coffee is grown, it might be thought that the Ethiopian Government’s choice of IP protection for the name was straightforward: registration as a geographical indication in the form of a certification mark. However, the Government recognised that such a choice would create serious practical difficulties. Developing and implementing a national geographical indication certification system can be expensive and time-consuming. Once registration has been achieved, the certification mark owner (usually a governmental body or a body operating with governmental authorisation) has to control the use of the mark. Such control usually consists of the owner ensuring that the mark is applied only to goods or services that comprise the requisite characteristics or adhere to the requirements that the certifier or owner has approved for the certification.[30] While seeking and enforcing trade mark registrations can be costly – there are application and renewal fees to be paid, and possible infringement actions to pursue – establishing a geographical indication certification regime requires significant additional expenditures and upkeep.

In this case, every bag of coffee to which the SIDAMO mark was applied would have to be produced, processed or prepared in the Sidamo region, and would have to exhibit a special quality that was dependent on that place of origin. Such certification would be very difficult. As Holt explains:

Certification requires that the government oversee producers and distributors to guarantee that the coffees sold belong to a particular style or region. An estimated 600,000 farmers spread throughout Ethiopia in remote areas now grow specialty coffees. And distribution is done informally, by hauling bags on foot for many kilometers. It is simply not possible to oversee these producers; and even if it were, it would require an onerous surcharge on farmers who are already often living below subsistence level.[31]

However, none of the above mechanisms would be necessary for a trade mark registration. Unlike a geographical indication registered as a certification mark, a trade mark does not operate as a badge of geographical origin. Rather, a trade mark serves as an indicator of commercial origin – it is a way of communicating a connection between a product and the supplier of the product.

This difference has important practical consequences. If SIDAMO was registered as a trade mark, there would be no need for the coffee to which the mark was applied to exhibit a particular quality connected with the Sidamo region, or even to be produced in the Sidamo region. Therefore, the Ethiopian Government may produce greater quantities of coffee using the trade mark SIDAMO as the coffee may be sourced from all over Ethiopia and need not have a characteristic that is specific to the location of Sidamo. Trade mark registration would avoid the costs of implementing a certification scheme and, at the same time, would allow the mark to be applied to more coffee – resulting in increased revenue to farmers.

The Government of Ethiopia and its legal advisors were upfront about the proposed benefits of the country’s trade mark registration strategy. Mr. Bob Winter, a partner at the Washington DC law firm that provided legal advice to the Government of Ethiopia, Arnold & Porter LLP, explained this in a video posted on YouTube:

Ethiopia has approached this issue from the perspective of what is in its best economic interest and a trademark provides Ethiopia with greater control over the distribution system. A trademark gives it much more effective control over the ultimate distribution of its product which is likely to add to its economic benefit. A certification mark provides a much weaker control in the holder of a certification mark.[32]

‘Bootstrapping’ through licence agreements

The second limb of the Government of Ethiopia’s IP strategy was to create a network of licensed distributors who would actively promote SIDAMO-branded specialty coffee to consumers. Major coffee companies were invited to sign an agreement that licensed them to use the SIDAMO mark on Ethiopian coffee. The agreement contained some interesting features.

One feature of the agreement was that the licence was royalty-free. Typically, a trade mark licence agreement provides traders with permission to use the trade mark in relation to specific goods or services, in exchange for payment of a licence fee. However, rather than permitting traders to use the name SIDAMO in return for payment, the Government of Ethiopia’s trade mark licence agreement compelled traders, free of charge, to use SIDAMO on any product that consists wholly of Sidamo coffee.[33]

Another feature of the licence agreement was that the licensee acknowledged the Government of Ethiopia’s ‘ownership’ of the mark – that is, of the name ‘Sidamo’.[34] This acknowledgement was given despite the fact, at the relevant time, no US trade mark registration had yet been obtained by the Government of Ethiopia – and, indeed, despite the fact that another party, Starbucks, was then seeking registration of a mark containing the word ‘Sidamo’.

The combined effect of these two features of the licence agreement was that the Government of Ethiopia could build an evidential basis to support a contentious claim (namely, that the region name ‘Sidamo’ had acquired distinctiveness), while maintaining the moral high ground. By signing up major US coffee retailers, the Government was able to furnish persuasive evidence that ‘Sidamo’ had developed secondary meaning, despite the fact that it was highly descriptive. This evidence was the very fact that licence agreements had been entered by various retailers – the reasoning being: why would a third party enter a trade mark licence agreement in relation to SIDAMO unless SIDAMO was indeed a distinctive trade mark? Furthermore, the Government could furnish persuasive evidence that it was the rightful owner of this trade mark – being the acknowledgement given in the agreement by the licensee that the Government of Ethiopia owned the SIDAMO trade mark.

Additionally, by making the agreement royalty-free, the Government could claim the moral high ground against any recalcitrant retailer – such as Starbucks – who refused to sign up. To the general public, on whom the finer points of trade mark law are no doubt lost, it would seem highly unreasonable for any profit-making corporation to refuse to enter a agreement that would aid poor farmers, when there was ‘no cost’ to do so.

CONCLUSION

Through a savvy use of the trade mark system, licensing agreements and consumer lobbying, the Government of Ethiopia has been able to achieve a better economic return from a commodity product. Prior to its battle with Starbucks, Ethiopian coffee farmers were receiving about $US1 per kilogram of the final retail price for Sidamo coffee sold in the US, with the exporting sector receiving about $US2 per kilogram. With SIDAMO registered as a trade mark in the US and numerous retailers signed up as licensees, it is estimated that Ethiopian farmers could raise their income to around the $US6-$US8 per kilogram level. Ethiopia’s total coffee export return of $US400 million per annum before its battle would then have risen to around $US1.2-$US1.6 billion per annum.[35]

The Government of Ethiopia’s actions therefore illustrate a clever use of the IP system to capture more value from the work undertaken by its coffee farmers. According to various observers, this was a radical plan. As Seth Petchers, director of Oxfam America’s coffee program, notes:

It’s quite innovative for a branding initiative to come out of the developing world. It’s about getting [farmers] to realize the value of what they have. It’s a big deal. Producers from other developing countries are already asking: ‘If Ethiopia can do it, why can’t we? [36]

This case thus demonstrates that there is substance to the claim made by the developed world that the IP system is a valuable tool for the economic development of all countries, rich and poor. It also provides a battle plan for other developing countries wishing to leverage better returns from the export of premium commodity produce to developed countries.

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[*] This article is based on research commissioned by the World Intellectual Property Organization (WIPO) Worldwide Academy, for the purposes of producing an IP Management Case Study. A number of IP Management Case Studies are available at http://www.wipo.int/academy/en/teaching.

[1] BBC News, ‘Starbucks in Ethiopia coffee vow’ (June 2007), accessed 23 January 2009, from http://news.bbc.co.uk/1/hi/business/6225514.stm.

[2] See ‘New Coffee Brand to Boost Farmers’ Income’ (8 May 2008) The Daily Monitor (Addis Ababa), accessed 20 May 2008, from http://allafrica.com/stories/200805080621.html; and Oxfam International, Mugged: Poverty in Your Cup (September 2002) 54 quoted in Mihir Mankad, ‘Goats Can’t Dance: Ethiopia’s Battle with Starbucks over Coffee Trade marks’ (2007), n 9, accessed 23 May 2008, from http://www.wcl.american.edu/pijip_static/documents/MihirMankad.pdf?rd=1.

[3] See Starbucks, ‘Company timeline’ (February 2008), accessed 20 May 2008, from http://www.starbucks.com/aboutus/Company_Timeline.pdf.

[4] See the Trademark Electronic Search System available on the USPTO website accessed 13 May 2009, from http://tess2.uspto.gov/bin/gate.exe using the following information: Search Term - ‘(live) [LD] AND (Starbucks) [OW]’ - OW stands for ‘Owner Name and Address’; View Search History - ‘Plural and Singular’ and ‘Live’; Field - ‘ALL’; and Result Must Contain - ‘All Search Terms (AND)’. Examples of Starbucks’ US trade mark applications as at February 2009 include ‘ETHOS’ in relation to ‘Water filters; water filtering units for domestic and commercial use; and water filter cartridges’ filed on 8 April 2005; AFRICA KITAMU’ in relation to ‘Ground and whole bean coffee and coffee-based beverages’ filed on 13 January 2006 and registered on 6 November 2007; and ‘GUATEMALA CASI CIELO’ in relation to ‘Ground and whole bean coffee’ filed on 30 July 2003 and registered on 7 June 2005.

[5] See Starbucks, ‘Company profile’ (February 2008), accessed 20 May 2008, from http://www.starbucks.com/aboutus/Company_Profile.pdf. However in July 2008, the company announced its intention to close 600 stores in the US, reduce approximately 1000 of its staff and shut stores in other countries ‘as a result of rigorous evaluations of the entire business’: Starbucks, ‘Starbucks Takes Significant Actions to Position the Company for 2009 and Reports Third Quarter Fiscal 2008 Results’ (30 July 2008), accessed 27 October 2008, from http://www.starbucks.com/aboutus/transform/earnings.pdf; Starbucks, ‘Full List of U.S. Store Closures’ (17 July 2008), accessed 27 October 2008, from http://www.starbucks.com/aboutus/pressdesc.asp?id=882.

[6] Starbucks, SHIRKINA SUN-DRIED SIDAMO trade mark application, accessed 23 October 2009, from the Trademark Electronic Search System available on the USPTO website, http://tess2.uspto.gov/bin/showfield?f=doc&state=4003:kbcjvo.2.1.

[7] See Government of Ethiopia, SIDAMO trade mark application file, ‘Suspension Letter’ dated 8 October 2005, accessed 23 October 2009, from Trademark Document Retrieval available on the USPTO website, http://tmportal.uspto.gov/external/portal/!ut/p/kcxml/04_Sj9SPykssy0xPLMnMz0vM0Y_QjzKLN4r3CQXJgFieAfqRqCLGpqgiBvGOcAFfj_zcVP0goESkOVDCzUc_Kic1PTG5Uj9Y31s_QL8gNzQ0otzbEQAesCwl/delta/base64xml/L0lJSk03dWlDU1lKSkpKSkovb0d3d0FBTVlnQUNFSVFoQ0VFSWhGS0lZeEhPQS80RkdnZFluS0owRlJvWGZyQ0U5NHZWTjJFQSEhLzdfMF9GTC8xMi9zYS5nb3YudXNwdG8udG93LmFjdGlvbnMuRGV0YWlsVmlld0FjdGlvbg!!?PC_7_0_FL_details=fetchDetails&PC_7_0_FL_downloadErrorMessage=&PC_7_0_FL_showErrorMessage=true&PC_7_0_FL_isSubmitted=true&PC_7_0_FL_TEXT=78589307&PC_7_0_FL_isDownloadSuccess=true&PC_7_0_FL_SearchListPage=SearchListPage&PC_7_0_FL_SELECT=US%20Serial%20No#.

[8] See Wondwossen Mezlekia, ‘Ethiopia’s loss in the Starbucks affair, Addis Fortune, 19 August 2007, available at http://www.grain.org/bio-ipr/?id=520.

[9] In the US, once all objections of the examining attorney regarding a trade mark application have been addressed, a trade mark application is approved for publication. Any person who believes that he or she would be damaged by the registration of a published mark may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board: 15 United States Code §1063; 37 United States Code of Federal Regulations §2.101; United States Trademark Manual of Examining Procedure §1503.

[10] See ‘Notice of Opposition’ filing date 06/22/2006 in Opposition No. 91171503, Serial No. 78431410, Government of Ethiopia v Starbucks U.S. Brands, LLC, accessed 31 October 2008, from the Trade mark Trial and Appeal Board Electronic Filing System website http://ttabvue.uspto.gov/ttabvue/v?pno=91171503&pty=OPP&eno=1.

[11] See Government of Ethiopia, SIDAMO trade mark application file, ‘Offc Action Outgoing’ dated 17 July 2006, accessed 23 October 2009 from Trademark Document Retrieval available on the USPTO website cited in n 7 above.

[12] See Government of Ethiopia, SIDAMO trade mark application file, ‘Administrative Response’ dated 17 August 2006, accessed 23 October 2009 from Trademark Document Retrieval available on the USPTO website, cited in n 7 above.

[13] Speciality Coffee Association of America, ‘Geographical Indications for the Origin of Coffee’ (8 August 2008), accessed 7 August 2008, from http://www.scaa.org/pdfs/news/SCAA-GI-Ethiopia-Statement0806.pdf.

[14] Letter from Mr Getachew Mengistie to Specialty Coffee Association of America (12 October 2006) accessed 4 August 2008, from www.ethiopianembassy.org/Trade markCampaign/EIPO_to_Specialty_Coffee_Association_of_America.pdf.

[15] See Oxfam America, ‘Starbucks, Ethiopia, and Oxfam: Myths and Facts’ (2006), accessed 23 October 2009, from http://dev.oxfamamerica.org/public_website/en/whatwedo/campaigns/coffee/starbucks/news_publications/mythsfacts/OA_Starbucks_MythFact.pdf.

[16] See Make Trade Fair – Oxfam International website, accessed 23 May 2008, from http://www.maketradefair.com/en/index.php?file=starbucks_main.html.

[17] Starbucks, ‘Starbucks and the Ethiopian Government Agree to Work Together Toward a Solution that Supports the Ethiopian Coffee Farmers’ (29 November 2006), accessed 23 May 2008, from http://www.starbucks.com/aboutus/pressdesc.asp?id=729.

[18] Starbucks, ‘Starbucks Funds New Community Development Programs in Ethiopia with $500,00 Contribution to CARE’ (8 February 2007), accessed 23 May 2008, from http://www.starbucks.com/aboutus/pressdesc.asp?id=746.

[19] Starbucks, ‘Joint Statement: Starbucks and Ethiopian Intellectual Property Office (EIPO) Partner to Promote Ethiopia’s Coffee and Benefit the Country’s Coffee Farmers’ (20 June 2007), accessed 23 May 2008, from http://www.starbucks.com/aboutus/pressdesc.asp?id=779.

[20] See Oxfam International, ‘Campaign victory: Starbucks signs historic agreement with Ethiopia’ (2007), accessed 23 October 2009, from http://www.maketradefair.com/en/index.php?file=starbucks_main.html.

[21] These office actions were dated 17 July 2006, 27 March 2007 and 10 April 2007.

[22] See Government of Ethiopia, SIDAMO trade mark application file, ‘Offc Action Outgoing’ dated 17 July 2006; ‘Offc Action Outgoing’ dated 27 March 2007; and ‘Offc Action Outgoing’ dated 10 April 2007, accessed 23 October 2009 from Trademark Document Retrieval available on the USPTO website cited in n 7 above.

[23] See Government of Ethiopia, SIDAMO trade mark application file, ‘Response to Office Action’ dated 10 October 2007, accessed 23 October 2009 from Trademark Document Retrieval available on the USPTO website cited in n 7 above.

[24] In fact, the Government of Ethiopia also applied in the US to register as trade marks other Ethiopian coffee region names – ‘Harrar’, ‘Harar’ and ‘Yirgacheffe’: see USPTO trade mark serial numbers 78589312; 78589319; and 78589325 using the Trademark Electronic Search System available on the USPTO website accessed 23 October 2009, from http://tess2.uspto.gov/bin/gate.exe.
[25] In the US, geographical indications are registrable as certification marks: 15 United States Code §§1054; 37 United States Code of Federal Regulations §2.45; United States Trademark Manual of Examining Procedure §1306.02. See Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962) (ROQUEFORT registrable as a certification mark for cheese); State of Florida, Department of Citrus v. Real Juices, Inc., 330 F. Supp. 428, 171 USPQ 66 (M.D. Fla. 1971) (SUNSHINE TREE registrable as a certification mark for citrus from Florida); Bureau Nat’l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC registrable as a certification mark for distilled brandy from a region in France).

[26] See McCarthy on Trademarks and Unfair Competition §3.1 (4th ed.); 74 American Jurisprudence (2nd edition), ‘Trademarks and Tradenames’ §1.

[27] See McCarthy on Trademarks and Unfair Competition §14.1 (4th ed.); Coca-Cola Co. v. State Dep't of Citrus, 406 So. 2d 1079 (Fla. 1981), appeal dismissed, 456 U.S. 1002, 73 L. Ed. 2d 1297, 102 S. Ct. 2288 (1982); Baglin v. Cusenier Co., [1911] USSC 104; 221 U.S. 580, 55 L. Ed. 863, 31 S. Ct. 669 (1911); Columbia Mill Co. v. Alcorn, [1893] USSC 246; 150 U.S. 460, 464[1893] USSC 246; , 37 L. Ed. 1144, 1147[1893] USSC 246; , 14 S. Ct. 151 (1893).

[28] See Restatement (Third) of Unfair Competition §13 (1995); National Shoe Stores Co. v. National Shoes of New York, Inc., 213 Md. 328, 131 A.2d 909, 113 U.S.P.Q. 380 (1957); Carter-Wallace, Inc. v. Procter & Gamble Co.[1970] USCA9 1050; , 434 F.2d 794, 167 U.S.P.Q. 713 (9th Cir. 1970).

[29] 15 United States Code §1052(f); 37 United States Code of Federal Regulations §2.41; United States Trade mark Manual of Examining Procedure §1212.

[30] USPTO, ‘Geographical Indication Protection in the United States’, accessed June 6, 2008, from http://www.uspto.gov/web/offices/dcom/olia/globalip/pdf/gi_system.pdf.

[31] Douglas Holt, ‘Brand Hypocrisy at Starbucks’, Saïd Business School University of Oxford, accessed 20 May 2008, from http://www.sbs.ox.ac.uk/starbucks/.

[32] See YouTube, ‘Ethiopian Coffee Network Legal Issues’, 29 January 2007, accessed 13 May 2009, from http://www.youtube.com/watch?v=2DiWK81j7fg.

[33] See Government of Ethiopia-US Trademark Licence Agreement, Articles 5.1 and 6, accessed 23 October 2009, from http://www.ethiopiancoffeenetwork.com/downloads/US_Trademark_License_Agreement.pdf.

[34] See Government of Ethiopia-US Trademark Licence Agreement, Article 3, accessed 23 October 2009, from http://www.ethiopiancoffeenetwork.com/downloads/US_Trademark_License_Agreement.pdf.

[35] See Light Years IP, ‘Ethiopian Fine Coffee’, accessed 17 February 2009, from http://www.lightyearsip.net/scopingstudy/coffee.html.

[36] Seth Petchers quoted in Matthew Clark, ‘In Trademarking its Coffee, Ethiopia Seeks Fair Trade’ (November 9, 2007), The Christian Science Monitor, accessed November 17, 2008 from http://www.csmonitor.com/2007/1109/p01s06-woaf.html.