Controversial Registration of a Common Name for South African Herb Ends with Trademark Invalidation
by Rakesh Amin, RPh, Esq, Mark Blumenthal, and Wayne Silverman, PhD
A recent settlement of a trademark dispute between various importers and marketers of rooibos tea and Virginia Burke-Watkins and her company Burke International of Dallas, Texas, provides a persuasive illustration of the importance of the trademark selection process and the pitfalls of attempting to proprietize the recognized common name for an herb in international commerce. Burke International and its principal owner, Ms. Virginia Burke-Watkins, acquired the trademark “rooibos” from Forever Young Ltd., a company in South Africa that had registered the mark in 1994 with the United States Patent and Trademark Office (USPTO) in connection with, among other things, herbal teas. In June 2005, after losing a lawsuit with Republic of Tea1 and after mounting legal costs and several additional pending lawsuits, Burke-Watkins agreed to voluntarily surrender her rights to the trademark.2
Rooibos, otherwise known as red bush (Aspalathus linearis [Burm.f.] Dahlgren, Fabaceae), is a small plant or bush used to make rooibos tea. It is not surprising then that many other companies producing and distributing rooibos teas desire, and in fact require, use of the term rooibos in connection with the sale of their rooibos tea products. For Burke International, conflict over the use of the name was inevitable.
Since acquiring the “rooibos” mark, Burke International reportedly spent over $250,000 attempting to protect it.1 The company’s settlement with Rooibos Ltd., a major South African producer of rooibos tea, came amid a flurry of lawsuits and other actions aimed at invalidating the trademark. Other lawsuits were filed by Seelect Tea Co. of Orange, California,3 and Republic of Tea of Novato, California.1 In a decision that likely impacted the settlement between Burke International and Rooibos Ltd., in January 2005 the Federal Court for the Eastern District of Missouri, Eastern Division, held in the Republic of Tea case that Burke International’s “rooibos” mark was invalid as applied to teas because the mark itself was the generic name of a type of tea.1 As part of that decision the judge in that case reportedly instructed the USPTO to abandon the trademark.
The settlement with Rooibos Ltd. in June 2005 granted Rooibos Ltd. full use of the rooibos name in connection with its tea products. This was likely to be the first of many such settlements for Burke, and the rooibos trademark looked as though it would ultimately prove worthless as applied to herbal teas.
In The Republic of Tea, Inc. v. Burke-Watkins, the District Court in Missouri looked to several sources to determine the meaning of the term “rooibos.”1 The Court found that “‘Rooibos’ is the word which has consistently been used to denote the specific shrub from which [the parties’]… tea is derived.” The Court noted the fact that the term “rooibos” was widely used by numerous other tea producers in describing the ingredients of their products. In reaching its conclusion that “rooibos” was generic, the Court stated, “It is clear that the ordinary producer of tea and consumer thereof recognizes that the particular tea, known as ‘rooibos’ or ‘red tea’ is that made from the ‘rooibos’ plant of South Africa.” As a final devastating conclusion to Burke International’s trademark saga, Burke-Watkins has voluntarily surrendered the rooibos mark with the USPTO, a decision that invalidated the mark, and made all of her previous efforts to protect the mark moot.
Rooibos has been used as a traditional beverage in South Africa by the indigenous peoples of the area for centuries, possibly even millennia. The name rooibos means “red bush,” a term given by the Dutch Afrikaaners to the plant, whose leaves turn a reddish color upon drying and fermentation. Rooibos tea has been marketed in the United States intermittently since at least 19614 when Worthington Foods introduced a beverage named Kaffree® containing rooibos.
Many experts in the herb community believe that the trademark on the name “rooibos” that was previously granted by the USPTO was made in error. The American Herbal Products Association (AHPA), the only trade association dedicated exclusively to herbal products in the United States, filed a petition to USPTO that the trademark should be cancelled. In February 2004 the USPTO’s Trademark Trial and Appeal Board notified Jay Geller, AHPA’s attorney in this case, and Ms. Burke-Watkins that it would review the case.5
Also in February 2004 the American Botanical Council (ABC) issued an “Expert Opinion” on the subject, concluding that rooibos is a generic and common name for the plant material found in international commerce since at least 1962 and sold in the United States for at least four decades.6
In South Africa there was further support for cancellation of the US trademark. The South African Department of Trade and Industry fully supports the efforts in the United States to “deregister” the trademark. The department said it “regarded the restriction of the trademark rooibos in a very serious light” because it believed rooibos is a generic name for an indigenous herbal plant.7
Individuals involved in the herbal movement, including trade associations, industry leaders, and attorneys contacted by the second and third authors of this article for the preparation of the ABC “Expert Opinion,”6 generally agreed that the term rooibos is generic and merely descriptive, based on the relatively long history of traditional use of the plant, and the name by which it is widely known in its native region (since shortly after the arrival of the Dutch in South Africa in the 17th century) and other countries to which it is exported. Rooibos is the accepted common name used in the herb, botanical, and tea trade worldwide for processed aerial parts of A. linearis used for making a water-infused beverage (tea).
The ABC Rooibos Expert Statement cited 11 references to published academic and US government (USDA) literature in which the term rooibos is used as a common name for A. linearis published in the years 1962 to 1983.8-18
Reflecting this widespread and historic use, rooibos is the Standardized Common Name in AHPA’s Herbs of Commerce, 2nd edition.19 Both the first edition, published in 1992,20 and the second edition (2000) were assembled by AHPA as the industry’s officially recognized list of common names for herbs sold in US commerce. These publications were compiled and edited by some of America’s leading experts in botanical nomenclature and taxonomy. Currently, the US Food and Drug Administration (FDA) officially acknowledges the first edition, published in 1992, as one of the two standard references for common names for herbs sold in the United States. In August 2003, the FDA published labeling regulations that recognized the second edition of this book to be the standard for common names for the labeling of herb preparations as of January 2006.21
Therefore, the first edition of Herbs of Commerce is not only the industry standard for herb names, it is also the government standard requiring that the common or usual name of botanical ingredients in dietary supplements be consistent with the names standardized in the first edition of Herbs of Commerce.20 The current rules also allow dietary supplement products to omit the Latin name of those herbal ingredients that are included in this document, whereas the Latin name is required on the label to identify all such other herbal ingredients (i.e., those herbs that are not listed in the AHPA book). The applicability of this rule for herbal dietary supplements is unclear for teas and other herb-based beverages that contain rooibos, as these are usually sold as conventional foods, not dietary supplements.
There are several lessons to be learned from the Burke International case-study. The first is that mere registration does not a valid trademark make. The trademark registration process is not foolproof. The attorneys who review trademark applications are not infallible. The reviewing attorney at the USPTO clearly erred when “rooibos” registration was approved in connection with teas. Although simple human error is a fact of life, such oversight need not result in the kind of senseless waste and expense seen in Burke International’s case.
Forever Young, Burke International, and their attorneys must take responsibility for the majority of needless expenses incurred while attempting to protect the rooibos trademark. While the USPTO made a mistake in granting trademark registration to “rooibos” in connection with the sale of teas, Forever Young had a responsibility, and its attorney had a duty to diligently and realistically evaluate the strength of the “rooibos” mark before registering it. A cursory search of the use of the name rooibos as a common name would have revealed that “rooibos” was the historically and widely used name of the shrub used (by many) to make “rooibos” tea. Furthermore, the record indicates that Forever Young and its attorney knew that “rooibos” was, in fact, a common and generic name as applied to teas.1
Additionally, once put on notice of the possible registration error, Burke-Watkins had a responsibility, and her attorney had a duty, to diligently and realistically evaluate the strength of the “rooibos” mark before litigating it. Burke-Watkins and her attorney wasted hundreds of thousands of dollars, countless hours, and valuable taxpayer resources protecting and litigating the validity of a generic trademark. Whether they turned a blind eye, or attempted to trick the trademark system, anyone attempting to register a trademark in the future should take note: a generic term cannot be owned by one; it is owned by all.
The final lesson from the Burke case is that generic terms are not “off limits” per se in commercial use. To the contrary, the need for their use in trade or business is the primary reason why generic terms cannot become trademarks in the first place. Burke International, along with every other tea producer, is free to use the term rooibos in connection with the sale of their teas. However, businesses and their attorneys must, at the very least, be aware of which terms are generic, and which are not. Burke International learned the hard (and expensive) way that it is useless to build a brand and good will around a trademark based on a generic name.
Rakesh Amin is an attorney and pharmacist in Chicago specializing in intellectual property law (e.g., patents, trademarks, copyrights, and licensing) as well as safety, labeling, and other regulations concerning herbs and other dietary supplements. Further inquiries or comments can be directed to Mr. Amin at Amin Law, LLC, at (312) 327-3382 or e-mail to Rakesh@amin-law.com.
Mark Blumenthal is Founder and Executive Director of the American Botanical Council and editor of HerbalGram.
Wayne Silverman, PhD, is the Chief Administrative Officer of ABC.
For more information, see the online article, A Guide to Trademarks and the Trademark Process, written by Rakesh Amin at http://www.herbalgram.org/herbalgram/articleview.asp?a=2866.
References
1. The Republic of Tea, Inc. v. Burke-Watkins, Case No. 03-CV 01862 (E.D. Mo. 2005).
2. United States Patent and Trademark Office. Voluntary surrender of registration no. 1,864,122. June 24, 2005.
3. Seelect Inc. v. Burke International, et al., Case No. 2:03-CV-06643 (W.D. Ca. 2003).
4. United States Patent and Trademark Office [Web site]. Kaffree Tea. Available at http://tess2.uspto.gov/bin/showfield?f=doc&state=brqcd.2.4. Accessed September 19, 2005.
5. United States Patent and Trademark Office Trademark Trial and Appeal Board. Notice to V. Burke and J. Geller regarding Cancellation No. 92042858, February 4, 2005.
6. Blumenthal M, Silverman W. American Botanical Council Expert Opinion: Rooibos Tea–An Accepted Common Name. Austin, TX: American Botanical Council, February 24, 2004.
7. African National Congress Daily News Briefing, August 23, 2002. Available at: http://www.anc.org.za/anc/newsbrief/index.htm. Accessed September 19, 2005.
8. Koeppen, BH, Smit JB, Roux DG. The flavone C-glycosides and flavonol O-glycosides of Aspalathus acuminatus (rooibos tea). Biochem J. June 1962;83:507-11.
9. Cheney RH, Scholtz E. Rooibos tea, a South African contribution to world beverages. Econ Bot. 1963;17: 188-196.
10. Dahlgren R. The correct name of the rooibos tea plant. Bot Not. 1964;188-196.
11. Leung, WW, Busson F, Jardin C. Food Composition Table for Use in Africa. Bethesda, MD: Department of Health, Education and Welfare and the Food and Agriculture Organization of the United Nations; 1968.
12. Rooibos rocks the cradle. Cape Town, South Africa. Cape Times. September 9, 1974.
13. Synckers, FO, Salemi G. Quercetin as the major in vitro active component of rooibos tea. Journal of South African Chemical Institute. 1974;27:5-7.
14. Ginsverg B. Rooibosch tea. Herbal Rev. 1977;2:7-12.
15. Hesseling, PB, Klopper JF, van Heerden PD. The effect of rooibos tea on iron absorption [article in Afrikaans]. S Afr Med J. April 1979;55(16):631-632.
16. Hesseling, PB, Joubert JR. The effect of rooibos tea on type I allergic reaction. S Afr Med J. December 1982;52(27):1037-1038.
17. Fox FW. Young MEN. Food from the Veld. Johannesburg: Delta Books (Pty) Ltd; 1982.
18. Morton, JF. Rooibos tea, Aspalathus linearis, a caffeineless, low-tannin beverage. Econ Bot. December 1983;37(2) 164-173.
19. McGuffin M, Kartesz JT, Leung AY, Tucker AO. American Herbal Products Association’s Herbs of Commerce, 2d ed. Silver Spring, MD: American Herbal Products Association; 2000.
20. Foster S. American Herbal Products Association’s Herbs of Commerce. Austin, TX: American Herbal Products Association; 1992.
21. Food Labeling: Ingredient Labeling of Dietary Supplements That Contain Botanicals, 68 Fed. Reg. 51,738 (2003) (to be codified at 21 C.F.R. § 101) (proposed August 28, 2003).