Thursday,  Jun 17, 2021,15:35 (GMT+7) 0 0
A notice of opposition requested
By Dr. Le Thien Huong
Sunday,  May 9, 2021,14:55 (GMT+7)

A notice of opposition requested

By Dr. Le Thien Huong

Rice in the Mekong Delta for export - PHOTO: LE HOANG VU

Over the past two weeks, the story that the ST25 rice trademark has been registered for protection at the United States Patent and Trademark Office (USPTO) has caused quite a stir. Remarkably, the applicant for the protection is wise enough to make their request accepted. Without immediate action, Vietnam may lose the ST25 rice trademark to a foreign party.

ST 25 is the name of a rice strain which has been granted a plant variety protection certificate coded 21.VN.2020 in Vietnam. The owner of the strain is Ho Quang Cua and his associates who made research of it and created the hybrid. ST25 won the highest prize for the world’s best rice in 2019 and the second prize in 2020 to become a pride of Vietnamese farmers. However, recently, it has been found out that there have been five applications for protection of ST25 submitted to the USPTO waiting for appraisal. These applications have also stoked fears from the Vietnamese side that ST25 rice produced in Vietnam will not be allowed to be exported stateside under the “ST25 rice” indication.

First, it is necessary to emphasize that applications for the protection of the ST25 trademark are in the appraisal phase and have not been given a certificate yet. More precisely, the legality of application 90009521 for the character and number marks of “ST25” (lodged at the USPTO on June 18, 2020) has been accepted and it was to be announced in the Trademark Official Gazette (TMOG) on May 4, 2021. Other applications are either suspended, refused or requested by the USPTO to supplement more files, and thus are unlikely to achieve the exclusive protection of the ST25 mark (see box).

It can therefore be concluded that at this point in time, only application 90009521 will be able to hinder Vietnamese rice exporters in this regard. Please bear in mind that the application aims at the protection of standard character mark and, if a certificate is granted, may attain a high level of protection. This means that the holder of the protection certificate is free to express the ST25 mark in many ways of different designs and colors, which can be accompanied by a logo or appears independently on products. Consequently, Vietnamese rice products, when in packages with the ST25 mark, are more likely to be considered violating the copyright of the above trademark.

ST25 rice in Vietnam

Currently, some have said that ST25 is the name of a plant variety and cannot therefore be registered as a trademark in the U.S. However, the ST25 rice strain has been registered for protection only in Vietnam, not in the U.S. According to the USPTO’s procedures for the trademark appraisal, during the assessing process, the appraiser needs to verify sources of evidences, such as data from the U.S. Department of Agriculture, USTPO information on patents for inventions of plant varieties, or checks on government websites for reaching plant varieties under U.S. protection. It can be understood that the name ST25 is protected only in Vietnam and does not exist in the above-mentioned sources of evidences, which means that the legality of the applicant in question has been accepted. Moreover, the application has been revised to be included in the announcement that “ST25 or ST 25 is meaningless in foreign languages and is meaningless when applied to related products.” Apparently, this misleading piece of information has contributed to the approval of application 90009521.

Contrarily, the application for the trademark “NO. 1 VIETNAM’s ST25 RICE THE WORLD’S BEST RICE” has been rejected on the ground that ST25 is the name of a rice strain in Vietnam, and according to the appraiser, “NO. 1 VIETNAM’S ST25 RICE THE WORLD’S BEST RICE” is only the description of the geographical origin of rice products and fails to meet the requirements of difference of trademarks.

Currently, U.S. trademark rules dictate that within 30 days as of the date of announcement, May 4, 2021, in the absence of a notice of opposition or a request of extending the time for opposition, application 90009521 of the ST25 trademark will be approved and the trademark owner entitled to the exclusive use of the ST25 trademark on his/her products. That means Vietnamese businesses will have roughly one month to lodge a notice of opposition to the protection of the ST25 trademark.

In the immediate future, the Vietnamese side’s notice of opposition can rely on some key points. For instance, ST25 is the name of a rice strain which has been registered for protection in Vietnam and favored by rice consumers worldwide, including American consumers, or ST25 is meaningful in the Vietnamese language contrary to the announcement in the application. Or the argument can take into account trademark regulations relevant to dishonesty in trademark registration, here a trademark registration aiming at taking advantage of the prestige of a product which is already famous.

Without doubt, the Vietnamese side should take action immediately to prevent the ST25 trademark from being granted to a foreign business because the procedures for opposing a trademark certificate are much less complicated and less costly than those for nullifying an approved trademark. Again, please bear in mind that the Vietnamese side has only 30 days since the announcement to submit a notice of opposition. Otherwise, Vietnam will lose forever the ST25 trademark to a foreign player.

Four applications which are either suspended or refused by the USPTO, or requested to supplement more files

Application 90103840 for the “ST25” trademark for rice, rice paper, rice vermicelli and rice noodles submitted on August 10, 2020. Currently, this application has been suspended because its trademark is identical with application 90009521.

Application 90085988 for the trademark design of two stalks of rice with the words “NO. 1 VIETNAM’S ST25 RICE THE WORLD’S BEST RICE” submitted on July 31, 2020 for rice products. Currently, this application has received a request of supplementing files because the character mark fails to meet the requirements of trademarks (the character mark simply describes the geographical origin of a product). According to the USPTO, a trademark can be granted to a design, and nobody can be given the exclusive right to the words “NO. 1 VIETNAM’S ST25 RICE THE WORLD’S BEST RICE” for rice products.

Application 90151727 for the character trademark “VIETNAM’S ST25 RICE, DAC SAN SOC TRANG” submitted on September 1, 2020. This application has been rejected because the character trademark fails to meet the requirements of trademarks as it only describes the geographical origin of a product.

Application 90270383 for image trademark accompanied by the words “THE WORLD’S BEST RICE GAO THOM ST25 DAC SAN SOC TRANG NGON NHAT THE GIOI 100% TU NHIEN KHONG BEO PHI – KHONG TIEU DUONG NEW CROP 2020 NET WT. 25 LBS (11.3 KG) submitted on October 2, 2020. Currently, the application has received a request of revision and supplementation because the character mark is not accepted.

 

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