Here is an Ethiopian opinion on the matter…

CONTACT: Mike Ferguson, Chief of Staff

Specialty coffee does not come from just anywhere. Our ability to identify,
with ever-increasing specificity, the source of coffee we import, roast, and
brew is a hallmark of the specialty coffee industry. This, as much as any
quality variable, is one of the many things that distinguish specialty coffee
from coffee that is something less. Specialty coffee is not anonymous. Even
when blended, the origins are often identified, and consumers have come to
associate meaning and expectations with the names of coffee lands, coffee
regions, coffee farms, and even coffee plants. All coffee has a story but the
specialty coffee industry has stories worth telling. And while each story
culminates in the experience of the cup, they all begin where the coffee was
born. The names of these birthplaces of coffee have value, and should be
properly protected.

Geographical Indications
identify a good as originating
in the territory, region, or
locality where a given quality,
reputation or other
characteristic of the good is
essentially attributable to its
geographic origin, such as
“Florida oranges.”

One hundred years ago the U.S. government recognized the value in a name
when it became illegal, as part of the Food and Drug Purity Act of 1906, to
“misbrand” a product as being from somewhere it wasn’t. At the time the
law was written, mislabeling of coffees as originating from Java, in
particular, was epidemic. More Java was sold to consumers than was ever
grown and exported from that region of the world. This contributed to the
word “Java” becoming one of the many synonyms for coffee. When a brand
is so ubiquitous that it becomes generic, it is no longer a brand.

To protect the “brands” that are the origins of coffee, some coffee
producing regions have over time sought international protection for
proper use of recognized regional and geographic coffee areas, also known
as Geographic Indications. According to the U.S. Patent and Trademark
Office, “Geographical Indications serve the same functions as trademarks,
because like trademarks they are source identifiers, guarantees of quality,
and are valuable business interests.”

Geographical terms can be protected as certification marks. A geographical
term may be used, either alone or as a portion of a composite mark, to
certify that good originate in a particular geographical region. There is a
prohibition in U.S. trademark law against registration of names that are
primarily geographically descriptive, but The U.S. Trademark Act makes an
exception to this prohibition for indications of regional origin. Therefore,
a geographical name may be registered as a certification mark even though it
may not qualify as a trademark.

The U.S. Trademark Act
differentiates certification
marks from trademarks.
Certification marks are
source-identifying in that
they indicate the nature and
quality of the goods and
affirm that these goods have
met certain defined
standards.

Examples of origin
certification marks in the
coffee industry are:

“100% Colombian”
“100% Kona”
“Jamaican Blue Mountain”
“Genuine Antigua”

Application for a certification
mark must be made by a
government or other official
organization within the
producing country which will
own and control use of the
mark by others. This control
consists of taking steps to
ensure the mark is applied
only to coffee that meets the
specified requirements that
the certifier/owner has
established.

A trademark or certification mark registration does not necessarily prevent
someone from using the term to fairly describe where their product
originated if it is the same as those identified in the registration. Such use
may be considered a “fair use” of descriptive terms.

Ethiopia
In Ethiopia there are a number of terms customarily used by the coffee
trade based on the various districts where the coffee is grown, such as
Harrar (or Harar), Sidamo, Limu, Yirgacheffe (or Yrga Cheffe), Kaffa,
Gimbi (or Lekempti), and Djimmah. For the past 100 years both coffee
exporters and roasters have used these words on their bags and packages to
connote the districts in Ethiopia where the coffees originated, as many of
these coffees show distinct differences in their flavor profiles. Harrar,
Sidamo, Yirgacheffe and Limu have become more widely known to
consumers in the last 20 years, largely due to the growth of the specialty
coffee industry.

In 2005, the Ethiopian government initiated a program to “register
trademarks for Harrar, Yirgacheffe, and Sidamo in 40 countries – and
eventually four other well-known Ethiopian fine coffees with good
reputations.” According to Light Years IP, an organization assisting the
Ethiopian Intellectual Property Office (EIPO) with this project:

The trademark program will be followed by a licensing
initiative – the EIPO and other ministries will be trained
to negotiate with international importers to recognize
Ethiopian brand ownership of its high quality coffees.
Control of the name brand use through licenses will
allow Ethiopia to play a significant role in determining
export prices for its fine coffees more relevant to the
high world market prices.

In pursuing this trademarking strategy in the United States, the Ethiopian
government ran into several challenges, including the U.S. Trademark
Office denying registration of “Harrar” as a word mark. The Trademark
Office stated:

It appears that the term “Harrar” indicates the generic
name for a blend of coffee that is grown in the Harrar or
Harar region of Ethiopia. Accordingly, registration is
refused under Section 2(e) (1) of the Trademark Act.
Registration is refused because the proposed mark is
merely descriptive of applicant’s goods. Applicant’s claim
of acquired distinctiveness is insufficient to overcome
the refusal.

The examining attorney’s statement is consistent with U.S. trademark law as
well as the International Trade Agreement on Intellectual Property Right
(TRIPS). The World Trade Organization recommends using “certification
marks” for the protection of geographic indications of origin as a means of
protecting the intellectual property rights of agricultural producers. This is
also the position adopted by SCAA.

Ethiopia encountered another challenge when SCAA objected to the U.S.
Trademark Office’s pending registration of a word mark for “Yirgacheffe.”
Apparently, the Yirgacheffe examining attorney had not concluded the word
“Yirgacheffe” was generic and merely descriptive, which had been the case
with the “Harrar” examining attorney. In order to correct what appeared to
be a research error by the Yirgacheffe examining attorney regarding the
meaning and use of the word “Yirgacheffe,” SCAA filed a permitted Letter
of Protest with the Trademark Office, citing evidence that demonstrated the
term “Yirgacheffe” is used and understood by the relevant industry and the
general public as the name of a type of coffee from a district in Ethiopia.
SCAA requested the application be given further review, and the mark be
refused as generic under the appropriate sections of the Trademark Act, as
had been done in the case of “Harrar.”

The matter is now under review by the U.S. Patent and Trademark Office,
and the issue is presumed to be under advisement. SCAA’s board of
directors did consider the further corrective action of filing a Notice of
Opposition regarding the “Yirgacheffe” trademark application, and in
doing so requested an extension of time to review the matter before
proceeding with an Opposition. The filing of a first extension of time
generated a great deal of discussion within the coffee industry, with people
taking both sides of the issue without fully understanding either the facts or
the applicable trademark law. It also led to a meeting between a
representative of the Ethiopian Government, Senior Second Secretary for
Trade and Investment – Fitsum Hailu, and SCAA board President Rob
Stephen at the Ethiopian embassy in Washington, DC. Although the
meeting helped to clarify the issues, the Ethiopian government remained
convinced that they are proceeding correctly in registering their district
names as trademarks rather than certification marks.

During their review of the issues, SCAA’s board consulted with its
International Relations Council and SCAA’s legal Counsel, Stuart Adelson.
Although most agreed that Ethiopia would be better served by certification
marks, the board decided not to file a formal opposition.

Coffee’s Geographic Indicators, the names of the places that coffee is
grown, have the power to invoke expectations and affect consumer behavior.
This power should be properly protected and enhance the participation of
producers in the marketplace. The SCAA believes that this is best
accomplished through certification marks. The SCAA will continue to assist
producer governments and organizations in developing robust certification
programs by teaching producers how the consumer marketplace defines and
rewards quality, facilitating the creation of official coffee appellation
systems, and guiding origin representatives through the process of properly
attaining and enforcing their certification marks within the United States.

In other words, how will we know that bag of “Sidamo” we just bought is not, in fact, Vietnamese Robusta?

Oppose, oppose, oppose. Trademarking Ethiopian origin names could sink growers in that country for good.

At the last stop, I couldn’t get a cup of organic coffee at the nearest Starbucks. Are they greenwashers? Looks like it.