Monday, September 05, 2005 7:23 PM
The Chinese Gadfly, Part 2
By posting the entirety our email exchange in a comment on my blog, The Chinese Gadfly has implicitly granted permission for open publication of our email exchanges; accordingly, I will indulge him, although I will remove the email addresses and names of my supplier and those of my attorney’s office.
Since he published his email address on my blog, you’re welcome to email The Chinese Gadfly.
The Chinese Gadfly uses multiple identities. The first email came from a domain which is cloaked to a pseudo-trade directory. Most of the company’s online presence seems to be search engine spamming. Their message came by way of the online contact form on my YuzuMura.com site.
From: [YuzuMura.com Online Contact Form]
Sent: Friday, September 02, 2005 3:11 PM
To: [Jason Truesdell]
Subject: Contact Inquiry From Website
Subject=Dragon Beard Candy
S1=Dear Sirs, I wish to inform you that "Dragon Beard" word has been registered with ipos "Trade Mark" under the nutra swiss plc. To avoid any legal action gainst your company, Please remove all the above marks from your website immidialy. I has been sent the report to China Industry Commerce for future actions if you not proceed our request. Thank you Shanghai Wan Pan International Nutra Swiss Representative in China
Note that The Chinese Gadfly has not yet explained the class of trademark, the nature of the claimed infringement, or the relevance to the U.S. market. The claim that “’dragon beard’ word” is a trademark is ambiguous, since it’s not possible to trademark without a context. For example, Dragon Beard is an established shoe and sportwear brand in Japan. But no reference of “dragon beard candy” would likely be confused with shoes. More importantly, it’s a novel use of the phrase, and not naturally associated with shoes, so in such a case, it would be a fairly strong mark in that context.
About a year ago, I noticed a strange web site popping up in searches for “dragon beard candy”; it was basically a packaged version of American cotton candy, with the typical artificial coloring, sold in plastic translucent tubs. I didn’t think much of it at the time, because it was so obviously unrelated to what I import. But it rode on the coattails of the name for this traditional confection. I remembered the domain names associated with this, and one of them referenced a company name “Nutra Swiss.” So I chose to infer that they were referring to this product, in spite of the fact that they didn’t provide that information.
Dragon beard candy has existed in Asia for ages… the legend says it’s been nearly 2000 years, although some sources say it originates later in the Ming Dynasty. Certainly it has evolved over time; peanuts weren’t readily accessible until relatively recently in China, and so the typical filling must certainly have evolved over time. Immigrants in Montreal, New York, Vancouver, BC, and occasionally in San Francisco and Los Angeles have used the English phrase “dragon beard candy” to describe the type of candy for at least 20 years. Trademark law doesn’t generally allow for phrases that have a history of non-branded usage to gain protection as a trademark. I did a quick search in the U.S. Patent and Trademark Office’s web site and saw only the apparel-maker’s registration.
My supplier told me I should direct The Chinese Gadfly to their legal office, so I wrote Mr. Chinese Gadfly back:
From: Jason Truesdell
Sent: Saturday, September 03, 2005 1:55 PM
Cc: [Bamboo Garden’s Hong Kong Office]; [Bamboo Garden’s Singapore Office]; [Attorneys with whose firm I have placed a retainer]
Subject: RE: Contact Inquiry From Website
You’ll have to take that up with the Hong Kong based maker of the candy. I am merely a distributor within the United States, and the term whose use you are disputing is merely a translation of a 2000-year old common name for the candy; it is not a brand name. I conduct no trade under the name “Bamboo Garden Icy-Crispy Dragon Beard Candy” in China, and I do not use “dragon beard” as a brand name. We use the phrase [dragon beard candy] as a common name for a class of candy, and common names may not be used as a trademark in the United States.
You may direct your concerns to the legal office of Bamboo Garden in Hong Kong. Please direct any such inquiries to [Bamboo Garden Hong Kong Office Email Address].
To the best of my knowledge, within the United States, in order for trademark protection to apply.
1) The protected trademark or service mark must function as adjective, not as a noun.
2) The phrase must be applied to a specific product category or categories.
3) You must have actually conducted substantial trade in the United States market under the brand name. You cannot simply protect a phrase that you intend to use. We have seen no evidence of actual trade in the United States under the trade name you refer to, and you have not demonstrated any.
The only evidence of your claimed brand identity I have seen is in online export directory listings and in a no longer extant web page.
Were the name not already in common use, “Dragon Beard brand Cotton Candy” could possibly have been trademarked. The applicable trademark in this case, however, is “Bamboo Garden Icy-Crispy Dragon Beard Candy.” Bamboo Garden is the brand, and the mark applies to the common class of candy Dragon Beard Candy. I also understand Icy-Crispy is also a trademark of Bamboo Garden when applied to the common name dragon beard candy.
Other criteria for enforceability include whether the usage of a mark is “well known.” Because I have seen no substantial evidence of a market presence in the United States, I doubt that you would have a claim on that end. Your usage is not inherently distinctive, it is not arbitrary (due to prior usage as a common phrase), and due to the common usage is not suggestive. Our perspective is that “dragon beard candy” is merely a translation of a common term.
To the best of our knowledge, “Dragon Beard Candy” has been used as a common name for a type of handmade candy originally served some 2000 years ago in China. We believe that the common name for this type of candy has at least 20 years of prior usage in the United States and Canada among immigrant candymakers.
If you can demonstrate an international registration which is relevant to the U.S. market (China has no jurisdiction on U.S. trademark protection), and if you can demonstrate conclusively that your use of “dragon beard candy” is novel and exists prior to the common usage of the generic term “dragon beard candy” within the North American market and Hong Kong, I’d be happy to re-evaluate our decision to use the generic term “dragon beard candy.” Until such time, we see no justification for altering our usage of the term.
Jason Truesdell, Principal
Yuzu Trading Co. LLC
Buy online at http://www.yuzumura.com/
Cc: [Names of my attorneys]. Please file only, no action on your part or on the part of Davis Wright Tremaine is required at this time.
Cc: [Names of my contacts at Bamboo Garden]
The Chinese Gadfly did not respond to the issues I raised. Instead, he sent a “Finanl notice” (sic), under a different identity, and chose to invent a new name for me:
From: Wan Pan International [mailto:firstname.lastname@example.org]
Sent: Saturday, September 03, 2005 1:41 AM
To: 'Jason Truesdell'
Cc: [Bamboo Garden Hong Kong Office]
Subject: RE: Contact Inquiry From Website (Final Notice)
With reference to our email on regards to Trade Mark and action on behalf of company in order to fulfill the requirements to make the legal action and Madrid Protocol permit for above product’s brand to China mainland and Islands & all IPOS International members. We have therefore sending you the following information;
Words in Mark : dragon beard cotton candy
Trade Mark Number: T0104527D
Application Type : Trade Mark
Class : 30
Priority Date :
Converted Application : N
Application Date : 04 Apr 2001
Mark Lodged in Colour : N
Mark Status : Registered
Mark Status Date : 04 Apr 2001
Status Update Date :
More Details on Mark Status:-
Cert Issuance Date : 19 Jun 2003
Expiry Date : 04 Apr 2011
Publication of Acceptance Date : 18 Dec 2002
The Chinese Gadfly did not provide any explanation of the authority of this document, so we don’t have any registry that we can search to verify this claim, even if it were relevant. His registration doesn’t exist in WIPO’s Madrid Protocol database, the international trademark registry. I checked both the number and the name.
I’m surprised that he is putting his trademark registration at risk within China by going head-to-head with a mark that predated his registration. It would surely invalidate his claim. The company that owns the trademark “Bamboo Garden Icy-Crispy Dragon Beard Candy” was established over 10 years ago and has been using the trade name since 1999 or 2000.
I apologise if today’s entry is becoming tedious, but in response to his ambigous “Trade Mark Number” email, I sent him another lengthy reply.
From: Jason Truesdell
Sent: 04 September 2005 13:45
CC: [Bamboo Garden Hong Kong Office], [Bamboo Garden Singapore Office], [Attorney’s Office]
Subject: RE: Contact Inquiry From Website (Final Notice)
1) My name is not James. I am also not the relevant party, since my company is merely referencing an existing, established trade name from a Hong Kong based company in the capacity of a distributor and in the capacity of an online retailer. I directed you to the Hong Kong vendor’s legal department so that you may explain to them your claim to the name.
2) The mark “Bamboo Garden Icy-Crispy Dragon Beard Candy” has a continuous trade presence in Hong Kong at least since 2000 under that mark. I’m sure Lavina will fill you in on the details.
3) You have not demonstrated that your mark has any history predating the use of the common name “dragon beard candy.” You have not demonstrated uniqueness of the mark.
4) You indicate that your trademark was registered as “Dragon Beard cotton candy.” This is a different claim than “dragon beard candy.”
5) With regard to my company, we are not referencing the mark “Dragon Beard cotton candy” in any way on our web site. We are not selling any cotton candy products. We do not wish to, because to use the term “cotton candy” to refer to this traditional candy would diminish the value of this traditional, handmade sweet. Cotton candy is recognized as a low-value, generally machine-made class of candy within the United States, and is characterized by artificial flavorings and colorings. The product in question has no such traits.
6) With regard to my company’s commercial web presence, we do not compare our product to your company’s product. We do not imply any relationship to your mark or brand. We only use the common name “dragon beard candy” in reference to a traditional sweet originating in China, predating your company’s mark, as literally translated from the Chinese name for this type of candy.
7) You have yet to demonstrate an infringing use of the name to which you claim to have a trademark. You claim that the phrase “dragon beard candy” is protected, but you have not demonstrated that in any way. Nor have you demonstrated the claim’s relevance to the United States or North American market.
8) You have yet to demonstrate any substantial trade presence within the United States. As I explained before, my company does not sell this product in the P.R.C. and any concerns regarding the name within Asia should be addressed to the manufacturer, to whose legal department I have previously directed you. My company only promotes this product within the United States, and to a lesser extent, Canada. Your trademark claim has no value without a trade presence within the market for which you are making a claim.
9) I suggest using a more unique brand name in future projects. You will find it difficult to protect trademarks built upon common names for a product. U.S. law grants only very limited protection for trademarks using common names.
As I explained previously, for my company to consider taking any action, you must demonstrate to me that your trade name predates usage of the common term “dragon beard candy”. I shall have no problem demonstrating prior usage of the common phrase “dragon beard candy” within North America prior to your year 2001 trademark registration. Additionally, you must demonstrate trade presence within the United States. Finally, you must demonstrate that the supplier of the product I distribute has an infringing use of your mark.
We see no cause to remove references to the common phrase “dragon beard candy” on our web site or elsewhere. Unless you have specific responses to the points I have made above, my company will see no cause to reconsider our usage of the common phrase, nor cause to alter our references to the Hong Kong trade name “Bamboo Garden Icy-Crispy Dragon Beard Candy.” If you have issues with their trade name, please take it up with Bamboo Garden’s legal department.
Internet Retail: http://www.yuzumura.com/
For our next installment in the adventures of Mr. Chinese Gadfly, we’ll feature his continued ambiguous threats and simultaneous non-responsiveness to the substance of our replies. I expect Mr. Chinese Gadfly’s rhetoric to increase in histrionics and decrease in substance. Stay tuned.
Technorati tags: China, trademarks, law