This morning I met my brother in Metropolitan Bakery in West Philly, which is a cute little bakery and cafe, one of the few cafes of its type that does not have wireless internet. I actually really like the lack of wireless internet, as it keeps the cafe focused on people actually connecting with each other (although smartphones, unfortunately, throw a wrench in this). But I digress.
In this cafe, I drank a cup of Chinese Breakfast™ Yunnan Black Tea from Numi Tea, which I enjoyed and wrote a review of in case you're curious...but this post isn't about the tea, it's about the fact that the name of this tea is marked by a trademark symbol. This wasn't just any chinese breakfast tea, it was Chinese Breakfast™. This got me thinking about trademarks.
What is a a trademark?
The trademark symbol (™) is used by companies to denote the fact that they are using a symbol as a trademark. There are two types of trademarks, registered and unregistered. Registered trademarks are denoted by the (®) symbol. Trademarking a name or symbol, even if the trademarks are unregistered, provides a degree of legal protection for a company, in the case that other businesses use the same name.
What is the purpose of trademarking?
The idea of trademarking is simple: a company invests money, time, and resources establishing a reputation, and this reputation becomes associated with the name of that company and its products. If another company is able to come on the scene and name its products in the same way as the original company, it is able to "steal" the hard-earned positive reputation of the first company without having done the work to build up its own reputation. Furthermore, new companies on the scene could offer a lower-quality product, thus riding off the established company's reputation and tarnishing their image. If you want to read more on this topic, there's an extensive, fairly technical Wikipedia page on trademarks.
I'm a firm believer in the general validity of trademark law. I think that in general, it is a good thing. However, I also think it can be taken too far.
Taking trademarks too far:
Some companies unfortunately abuse the system of trademarks and trademark law by trying to register trademarks that are already in use as common phrases. Trademark abuse refers to a company inappropriately registering trademarks, as well as using their trademarks to legally threaten other companies, either to force them to rename their products or to extract royalties.
An example of a trademark of a common phrase is the company Life is Good, which has registered the phrase "Life is Good" as a trademark. This is, in my opinion, an overzealous use of trademarking. If I were a judge and I heard a case in which someone challenged this trademark, I would probably strike it down. The issue, as I see it, is that "Life is Good" is a very common phrase, and the company Life is Good seems to base their whole business model on selling merchandise based on the "Life is Good" slogan, which was in existence long before the company trademarked this phrase. I don't know when they registered the trademark, but according to the company's website, their first shirts with this slogan were presented in 1994. I do not know if this brand has actually sued anyone, but even if it has not and does not ever sue anyone, I still get a weird feeling whenever I see the registered trademark(®) symbol after the phrase "Life is Good". It does not give me good feelings about the company.
There are numerous examples of companies actually suing people over extremely vague trademarks. There's a long list of trademark abuse cases on Tabber's Temptations page on Trademark Abuse, which includes such absurdities as attempts to trademark the phrase Love Potion, or the word stealth. For a particularly nasty case, a cable company actually started suing all sorts of companies with the term "monster" in their names, including a mini golf company.
Because of the issue of trademark abuse, and the negative connotations it evokes, I think it is very important that companies tread lightly in their use of registering trademarks or marking names or symbols as trademarks. For example, my company Merit Exchange LLC (which owns RateTea) has a trademark (unregistered) for its name and the merit symbol used to represent it, which I explain on the Merit Exchange copyright notice. I would not even think of trying to trademark a general name like "community economy". Similarly, RateTea (as well as the domain name RateTea.com as well as the former name RateTea.net) is a trademark, but I would not try to trademark more general terms like "tea ratings". Even though RateTea was the first site to offer online tea ratings open to the general public, there were prior sites (like Teaviews, and many individual bloggers) which already published numerical ratings of teas. Even if there were no prior examples of tea ratings anywhere, I still think it would be unethical and probably legally inappropriate to try to trademark a general phrase like that. And if I were to attempt an overzealous trademark, I would just alienate others and generate hostility towards my site and my company. I'd make myself and the company or website look bad.
And this is exactly what happens when companies overreach in their use of trademarks.
Back to Numi Tea and the Chinese Breakfast Trademark:
I personally believe that the term Chinese Breakfast is too general to trademark. The name, and similar names, are already in use by a number of different tea companies. For example, Rishi tea sells a "China Breakfast". I do not know which company created their tea first though, because I have not researched this topic. The way trademark law works, the name "China Breakfast" is similar enough to "Chinese Breakfast" that if the Chinese Breakfast trademark were ruled valid, the name "China Breakfast" would likely be infringing upon it--especially since both teas are Yunnan red (Dian hong) teas of a similar style and from the same region.
But I think that a case based on trademarking the term "Chinese breakfast" could and would break down in court. Prior use of the phrase is one factor, and I think if this could be established then the case would be sealed. But even if it were not in prior use, I still think it might be too vague and general to trademark. The name is similar to English breakfast and Irish breakfast teas, which are styles of tea that are not trademarked or owned by any particular brand, and which are defined by their character, not by association with a particular company or even particular origin of tea. "Chinese breakfast tea" is a very general term which evokes a strong traditional breakfast tea, with a simple modifier implying that the tea either originates in China or is a style consumed in China. I also think that if a trademark of a general term like "Chinese breakfast" were upheld in court, it would set a bad legal precedent that would lead to a rush for companies to register other names like "Turkish Breakfast", "Kenyan Breakfast", or possibly more esoteric terms. This rush would favor big companies with more resources for advertising and legal teams, and it would do nothing to reward companies for investing long-term resources in development of quality products, and it would ultimately create an anti-competitive environment that was not productive or beneficial to the tea industry as a whole, especially to tea drinkers.
Numi Tea is a company that prides itself on its ethics: it is a leader in sustainability, with a high portion of teas that are certified organic and also fair-trade certified as well. When I see the trademark symbol after the name Chinese breakfast, it doesn't give me a good feeling. Like my reaction when I see the ® symbol after the phrase "Life is Good", my immediate association is with frivolous lawsuits in which larger companies use their wealth and legal teams to bully individuals and smaller companies. I have no idea if Numi has ever done this, or would ever do this (I certainly hope that they would not), but the point is, by writing the ™ symbol after the generic name "Chinese Breakfast", they open the door to this sort of abuse. If they were to quietly remove that symbol, they would be sending a signal to people like me and to the world that they considered themselves above this sort of petty behavior, and instead wanted to focus on the quality of their product speaking for itself. And they can still benefit, legally and ethically, from the protection of trademark law, protecting their brand name.
(Numi, incidentally, is a registered trademark, and I would assert that this is proper and ethical use of trademark to protect brand name and reputation.)
What do you think?
Where do you draw the line between trademark abuse and legitimate use of trademarks? Do you think that this particular case of Numi trademarking (albeit not registering) the name "Chinese Breakfast" is going too far? Or is it within the range of what you think is acceptable?
I agree with you about the absurdity of trademarks for names/products that are not specific enough to merit them, "Chinese Breakfast" being a perfect example. It's important to note that Rishi does not have a trademark symbol on "China Breakfast," which I take to mean that they recognize how little the name really means, and how little it has to do with their own intellectual property.
ReplyDeleteThere is a valid place for protection of a company's brand and identity, but this kind of overly enthusiastic application of "ownership" to broadly defined products just makes the company look self-important and greedy.
I agree with you on the abuse of some common names for trademarks! As someone growing up before the "trademark era", the first time I've learned something like "life is good" or "skin so soft" could be trademarked, I was shocked. I think some of the laws of trademarks and patents are made unfair.
ReplyDeleteSimilarly, in China, the trademark of Bamboo Leaf Green caused a lot of debates. I wrote about it here: http://gingkobay.blogspot.com/2011/04/bamboo-leaf-green-trademarks-and.html
Similarly, I don't like "monkey pick" or "Wu Yi" being trademarks. But this kind of things just happen.
But I still like "life is good". Sometimes it's hard to tell whether a person/company register trademark to monopoly or just to defend themselves. For example, a friend of mine spent thousands of dollars to register the title of her recent book. She said she wouldn't mind at all if there is another book using a similar title. But the problem is, if she hadn't trademarked her title, there is always a possibility (although not a large possibility, but the risk is big) that somebody might register it in the future and force her original book off shelf. Although we don't think it's that simple, at this point, we both feel the law was made to give lawyers more opportunities to make money :-p
ReplyDeletetrademarking a name is a touchy business, and your argument in the latter part of your article highlights the importance of prior use. In fact, if Rishi was selling China Breakfast before Numi trademarked Chinese Breakfast than it would seem that Numi wasted money on filing fees.
ReplyDeleteJust because the Trademark Office approves a trademark, doesn't make it valid. There is an element of due diligence on the part of the individual or entity registering the trademark and it is generally assumed that they are doing so without infringing on someone else's right to use the name.
Either way, this is something that has come up in conversation more than once in our business development for Tea Trade. We are operating under a common term and as such have no real right to trademark the name. However, extended use of the name and well-defined use of the presented (both T's capitalized) gives us strength over time. However, the official name of the business is Tea Trade Network,llc anyhow, which is in turn owned by House Davenport Holdings, llc. It is sufficient to file a dba (doing-business-as) for the name Tea Trade in our local municipality. It does not offer the same level of protections of a trademark, but it does legally identify us on a certain date and we are currently in operation. It does not give us civil control over the phrase tea trade, but it does give us an ability to legally use Tea Trade provided that in all of our official publication (web, print) we maintain that typeset standard.
Can we still be sued? Probably, there is a man in San Fransisco who used to run a magazine called Tea Trade. It has been out of print for over 15 years and no longer exists. In that light, we have a defense.
This is a very fascinating topic and I look forward to what other thoughts people have.
I would actually take a stance on some of these issues. For example, assuming what Gingko wrote in the post on the Bamboo Leaf Green is accurate, I would consider that trademark invalid, because the name has prior use. If the case was really as clear-cut as it looks from that post, I would also recommend a complete boycott of the offending company.
ReplyDeleteIf even a substantial portion of people and companies publicly boycotted companies that engaged in trademark abuse, companies would stop doing it.
Trademark law is one area though where I have a very clear intuitive sense of right and wrong. When the law does not jive with my sense of ethics, I feel strongly about changing the law, not just accepting things as-is.
I think there's nothing wrong with registering a business name that is a common term, such as Tea Trade. Actually, my first business's name was Sustainable Computing, which was a name that was already in use by a number of organizations, such as the Sustainable Computing Consortium. But, it was a term already in widespread use. But there was no risk of confusion between the two organizations; we never interacted at all, actually, and it was pretty evident to both of us that the other existed, as we were both the top 2-3 hits in google searches for that term.
I think that registering your name with the state (which is what I did with Sustainable Computing) is probably the best option in cases like this. I can't imagine you'd ever run into trouble. But I also think that registering with your state would provide very solid legal protection in case someone later tried to trademark your business's name for a new business or product.
Back to Numi, note that Numi's trademark on Chinese Breakfast tea is not registered. My intuition is that a trademark office might not approve this trademark. And again, regardless of the current law, I do not think it would be good for this trademark to be approved. If such a trademark were approved, I would support changing the law.
It's important to anchor our law to ethics. If people are starting to tread into ethical gray territory (Numi's trademark claim, IMHO, is in this gray area, even if it were the first company to use this name) and the law is siding with them, it sends up a red flag to me. But like I said, this isn't the worst case.
I also don't accept "Wu yi" or "monkey picked" being trademarked. These things can be changed. Laws can be changed, and when the laws are in another country like China, companies who abuse patents can be boycotted. I feel strongly about these things. I don't want to spend my money on a product sold by a company that is doing something blatantly unethical to bully or exploit other companies, like the extreme cases in Gingko's post describes. The minute we allow this, we open the door to an economy that has very little integrity. And that's not how I want to live my life.
I too, think it's perfectly fine to use common terms for product names and company names. After all, it will be very odd if many of these names are not familiar terms to people.
ReplyDeleteI think what makes trademark problematic are (1) use of names with profound cultural history or social background shared by general public; (2) trademark advertise contents. For example, it bothers me that terms like "life is good", "just do it", "skin so soft" are not free for people to use in certain text files, just because they are registered to "belong" to certain companies. It wouldn't be decent for other companies to plainly copy their advertising ideas. But I have a hard time seeing certain texts "belonging" to anybody.
This is a bit off track but somewhat related to the trademark topic... Many people in science field feel regretful that some biological subjects (from flies to lab rats) are patented just because they are bred or genetically modified by some company (and sometimes the company didn't even do the work but just somehow grabbed the ownership). It's not like traditional farming in which people sell products but never forbid other people to raise the same thing. The patented subjects are not allowed to be traded by unauthorized parties. It's the law and it's not likely to change soon. I think it's complete disrespect of nature when the Nature (or the God) did 99.99% of the work on a creature while some company claims 100% patent of it.
ReplyDeleteI think these things are likely to change soon because I think more people are upset about it now.
ReplyDeleteIf you say something is unlikely to change soon, you make that outcome likely to come true.
I am more hopeful. There are many segments of American society, including many businesses and business owners, that are quite discontent with intellectual property law. People object to it both on business and economic grounds, and on ethical / ideological grounds.
I also think we can brainstorm creative ways to curb abuse of patent, trademark, copyright, or other forms of intellectual property law too, even when the laws do not change. For example, simply by writing about these issues, we shape people's buying decisions, and we shape them in such a way that will discourage people from spending money at brands that are overly aggressive in their use of intellectual property law.
For an example of a company that drove itself into the ground through extremely aggressive patent lawsuits, look at SCO Group. That company eventually filed for bankruptcy and had a whole other series of problems. It eventually changed its name, probably because of the bad publicity it had generated. The worst offenders are already losing, even in the current legal environment.
Some of the trademark cases that I link to on the page in this blog post also ended up in a bind, losing court cases and/or alienating their customer base.
In the long-run, this sort of over-aggressive, litigous business model never pays off.
Alex, I admire your courage of activism. But I think it's an uphill battle and some large companies would use every possible means to barricade the progress. But I agree that currently a lot of people are outraged by abuse of trademarks and patents. Last month I've learned that the Pirate Party Germany won their first big victory in parliament. One of their major missions is patent reforms. I think it's a very interesting phenomenon that a "pirate party" gets on political stage - although what they really advocate is not exactly "piracy". But still I think it's a long and strenuous way of patent reform while people with the most economic and lobbying power may be against it.
ReplyDelete