US coffee distributor accused of trademark theft

In the legal battle between the owner of a Vietnamese coffee company and his US distributor over the registration of the coffee company's famous TRUNG NGUYEN trademarks, the US Patent and Trademark Office (PTO) has issued a refusal order concerning one of the trademarks the US distributor sought to register and approved the publication of the second mark for opposition.

The TRUNG NGUYEN mark has been used in Vietnam since 1966 and was branded by the coffee company's owner, Dang Le Nguyen Vu, in 1998 for use in connection with a major coffee shop franchise throughout that country. In 2000 Vu decided to market the brand in the United States and contacted Rice Field Corporation to distribute his product. Two years later, Vu applied to register the TRUNG NGUYEN and CA PHE HANG DAU BAN ME THUOT TRUNG NGUYEN trademarks in the United States, only to discover that Rice Field had already filed applications for the two marks in its own name. The PTO therefore suspended Vu's applications pending further inquiries.

In view of the evidence of the fame of Vu's mark CA PHE HANG DAU BAN ME THUOT TRUNG NGUYEN in Vietnam, the PTO subsequently issued a final refusal order preventing Rice Field from registering it. However, it approved the publication of the TRUNG NGUYEN mark, allowing opposing parties (including Vu) the opportunity to contest its registration.

This case demonstrates that before foreign retailers begin negotiating with US distributors, they should register their marks with the PTO.

Ethan Horwitz and Rachelle A Kagan, Goodwin Procter LLP, New York

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