President Bruce Corker to Columbia Coffee Federation
From: corkclan@msn.com
To: luisfernando.samper@cafedecolombia.com
CC: harold@hoogasian.com; josel.londono@cafedecolombia.com; senhee@capitol.hawaii.gov; repcoffman@capitol.hawaii.gov; sandra.kunimoto@hawaii.gov; john.m.ryan@hawaii.gov; gomesgomes@yahoo.com; pgee@starbulletin.com
Subject: RE: Kona Coffee Farmers Association
Date: Thu, 10 Dec 2009 22:09:37 -1000
Dear Luis Fernando:
The Kona Coffee Farmers Association very much appreciates the work of you, Mr. Londono, and the Colombian Coffee Federation to respond with such detailed and thorough answers to our questions. We will carefully review and consider these answers, and we thank you for the offer to discuss follow up questions we may have. By copy of this email we are sending this information to the Hawaii Department of Agriculture for its review and consideration as well. Your responses will be invaluable in the efforts of Hawaii coffee growers to build a system of protections for the names of our regional coffees similar to the excellent system Colombia already has in place.
Thank you for alerting us to the launch of the Federation’s new version of its website. We plan to review of the new format and topics as soon as available.
We look forward to working and exchanging ideas and information with you in the future on labeling, trademark and geographic issues.
With best wishes y aloha,
Bruce Corker
Kona Coffee Farmers Association
Columbia Coffee Federation to President Bruce Corker
Subject: RE: Kona Coffee Farmers Association
To: corkclan@msn.com
CC: harold@hoogasian.com; josel.londono@cafedecolombia.com; senhee@capitol.hawaii.gov
From: LuisFernando.Samper@cafedecolombia.com
Date: Thu, 10 Dec 2009 09:32:44 -0500
Dear Bruce:
Following you will find our replies to your questions. Of course, if you need us to expand on any of the items mentioned, we would be happy to do so.
Corker--1--In general terms, how does the Colombian Coffee Federation go about determining whether unfair marketing practices or counterfeiting of Colombian Coffee is occurring in the United States? Does the Federation actively monitor marketing practices? Do reports come in from vendors or others in the US about such practices? How are reports investigated and verified?
By Different means: i) We do monitor marketing practices through with different servixces like Datamonitor, and even google alerts and other new product launcvhes; ii) we do receive reports from brokers, roasters, consumers, etc. iii) We have quaility control agreements with different labs, and obtain random samples of coffee described as Colombian, so that we narrow down potential infringement issues; iv) Through our Intellectual Property in-house dept. we receive trademark applications and usage reports from especialized companies that provide such services as well as from their all around the world attorneys.v) We have developed a system of purchase reporting through an extranet, which is associated with a code of conduct voluntary agreement to make sure all green Colombian coffee sales are accounted for and we know who is responsible from then on.
Most cases we face also deal with trasdemark applications that include the word Colombian or Colombian coffee on them. We are requires to oppose them -although the USPTO should have rejected them beforehand. In other questions we expand what we do when we detect probable infringement cases.
Corker--2—When the Federation becomes aware of counterfeiting in the United States (that is, use of the Colombian Coffee name on packages which contain less than 100% Colombia-grown coffee) what steps are taken? Letters from the Federation? Cease and desist letters from Federation lawyers? Court actions? In the US Courts? In other jurisdictions?
Normally we prefer to send kind but firm C&D letters (which often consist of an explanation of the rights infringed, a request to cease and desist, and an invitation to sell 100% Colombian Coffee). Bear in mind that we do not tolerate descriptors such as Colombian blend or Colombian type, which for us constitute an infringement.
However, if the "infringer" does not reply or disregards our demands, our attorneys send a second letter in order to comply with preliminary legal actions requirments, which are filed or sought before the US Courts (normally in New York, which is very expensive and would make most infringers think about keeping up with legal costs), if the infrigment takes place in the US. If it takes place in a different jurisdiction we seek for the corresponding court.
Corker--3--When legal action is taken, what are the common legal theories relied upon? Trademark? Unfair competition? Consumer protection? Other? Are there US court decisions protecting the interests of the Federation? Are those decisions helpful in obtaining early agreements to cease and desist from other violators?
Given that in the United States only applies the trademark theory, and that the Certification mark tools are part of the Trademark system, we use this instrument as our biggest tool to bring to courts.We know that Trademarks are also part of the Unfair Competition Law, which is also necesarly linked to Consumer rights. However, we have not reached the point where the above criterion has been declared or ruled by a Court, since: a) we normally reach settelement agreements with infringers; or, b) the ruling or decisions we have obtained have been issued by the Trademark trial and Appeal Board of the USPTO, which often limits their decision to whether or not there is a likelihood of confusion within the applied for mark and the certification mark.
Also, we have been advised that for mislabeling cases we would need to talk to the FDA. However they pay little attention and priority to coffee mislabeling as they consider that it does not constitute a serious health risk.
Corker--4--What sorts of methods of proof does the Federation use to prove counterfeiting? Business records? Scientific analysis? Witness testimonies? Other?
The production, distribution chain is useful to determine that the infringer might not bought enough amount of Colombian Coffee to offer it as 100% Colombian. However, the best proof is the Scientific Analysis, showing that the coffee offered contains different origins. This is whay we have invested a lot in technology (expert cup´pers are regarded by judges as biased and or subjective opinions, and the counterpart always brings its own cupper). We work with three different technologies to demonstrate non Colombian content -(this is an area whwere we could cooperate analyszing Hawaian coffees and contrasting them to different origins).
Corker--5—Does the Federation file complaints with federal or state authorities? Pursue civil actions with private US attorneys?
In principle we prefer federal courts initiating actions through our US attorneys.
Corker-6—It is our understanding that “Colombian Coffee Blends” (that is, coffee consisting of some Colombian coffee mixed with non-Colombian coffee) is not authorized by the Federation—and that such blends are not lawfully sold in the US. Is our understanding correct? If so, are enforcement procedures followed by the Federation similar to those used with respect to counterfeit coffee.
Same procedures. However, we usually end up providing some time to the copunterpart to finish his packaging.
Corker--7—Does the Federation use contractual protections--that is, as a condition of sale of Colombian coffee, are buyers required to agree not to “blend” Colombian and other coffees? To make records available for inspection if counterfeiting or related issues arise?
We do not object the use of Colombian coffee as part of blends, what we do object to is using the Colombian coffee reputation to be able to sell that blend at a higher price. We also have a long standing (more than 40 years) program called the 100% Colombian Coffee Program, by means of which we signed Trademark License Agreements with Coffee Roasters, which obligations are also undertaken by their private labels, being one of those obligations, but the main one, using our logo and/or the expression Colombian in connection with 100% Colombian Coffee only. Similarly, our code of conduct agreements say that the word Colombian or any confusingly similar term that intends to convey the Colombian origin is not allowed aunless the coffee consists of 100% Colombian origin.
Corker--8—We are interested in the legal status in Colombia of the Colombian Coffee Federation? It is our understanding that for Colombian Coffee the Federation performs many functions similar to that performed by the Hawaii Department of Agriculture. To what extent is that understanding correct?
The Colombian Coffee Growers Federation (FNC for short) history is quite long and has evolved in time (you may want to check www.federaciondecafeteros.org). While we do not know the Hawaii Department of Agriculture structure and activities very welll, we could tell you that the FNC is like a huge Coop/trade association and a non for profit entity, representing over 500,000 Colombian Coffee Growers.
We have agreed since the early 1940s with the Colombian government a joint decision making for coffee policy, and have been assigned to perform many functions including R&D and agricultutral support-extension, as well as quality control.
Corker--9—Coffee Farmers in Kona are very concerned about both counterfeiting and deceptive “blending” practices—particularly those occurring on the US Mainland. We would be very interested in any thoughts or observations related to these concerns which you believe may be useful to us.
We certainly share your concern. Our most problematic areas in the US are the NY area and the South east, although we see other problems from time to time. We believe to be able to have solid cases we need strong origin verification technologies - something we are working with - and also more education to customers and the public in general as to what a certification mark of origin means and how serious an offense it is to infringe it. We believe that agricultural products are unfairly treated in the US system since they can not access the distinctive prioduct status that winesl and spirits have, providing them with stronger instruments to defend themselves, This discrimination is the essence of the GI debate within Doha where OriGIn, as you know, is defending that position. We believe that there is a lot of work to be done with state agricultural officials as to what are the "strategic options" for highly differentiated agricultural products. This applies for products sold in domestic markets that also have a export possibilities -such as yours - where one clearly does not want to compete on a cost basis but on differentiation and reputation (to be able to compete in export markets with undifferentiated products, the only option for many countries is subsidies....). This merits a debate within State Ag officials to convince Federal officals that the GI debate is a serious thing and not just a dairy industry topic.
Lastly, we will be launching in a couple of weeks our new version of the www.cafedecolombia.com site where many of this topics may be further explained. Hope this helps for the time being.
Best,
Luis Fernando Samper
Director General Propiedad Intelectual - Director Intellectual Property
Federación Nacional de Cafeteros de Colombia - Colombian Coffee Federation
Calle 73 No. 8-13 Torre 8 Piso B
PBX: +(57-1)-313-6600 Ext. 731
Direct :+ (57-1-) 313-6631 Fax: +(57-1) 217-3736
Bogotá - Colombia - SA
mailto:LuisFernando.Samper@cafedecolombia.com
www.federaciondecafeteros.org
www.juanvaldez.com
www.cafedecolombia.com
Hawaii DOA to President Bruce Corker
To: corkclan@msn.com
CC: gomesgomes@yahoo.com; harold@hoogasian.com; josel.londono@cafedecolombia.com; luisfernando.samper@cafedecolombia.com; pgee@starbulletin.com; repcoffman@capitol.hawaii.gov; sandra.kunimoto@hawaii.gov; senhee@capitol.hawaii.gov; karin@hawaii247.org; malia@hawaiireporter.com
Subject: Fw: "Cafe Hawaii" Trademark Application in Colombia
From: John.M.Ryan@hawaii.gov
Date: Mon, 21 Dec 2009 12:30:10 -1000
Good Morning Mr. Corker,
Responses are in blue below.
John
Dr. John M. Ryan, Administrator
Quality Assurance Division
Hawaii State Department of Agriculture
1851 Auiki Street
Honolulu, Hawaii 96819
Ph: (808) 832-0705
FAX (808) 832-0683
Bruce Corker <corkclan@msn.com> 12/18/2009 09:09 AM
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To |
<john.m.ryan@hawaii.gov> |
cc |
Andrew Gomes <gomesgomes@yahoo.com>, Harold Hoogasian <harold@hoogasian.com>, <josel.londono@cafedecolombia.com>, Luis Fernando Samper <luisfernando.samper@cafedecolombia.com>, Pat Gee <pgee@starbulletin.com>, Denny Coffman <repcoffman@capitol.hawaii.gov>, Sandra Kunimoto <sandra.kunimoto@hawaii.gov>, Senator Hee <senhee@capitol.hawaii.gov>, <karin@hawaii247.org>, <malia@hawaiireporter.com> |
Subject |
"Cafe Hawaii" Trademark Application in Colombia |
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To: John Ryan , Hawaii Department of Agriculture
From: Bruce Corker , Kona Coffee Farmers Association
Cc: KCFA Directors
Re: “Café Hawaii” Trademark Application in Colombia
Dear Mr. Ryan:
The Kona Coffee Farmers Association is disappointed that the Hawaii Department of Agriculture has chosen not to act on information provided by representatives of the Colombian Coffee Federation and has chosen not to defend against misuse of the “Hawaiian Coffee” name. The unwillingness and/or inability of the HDOA to protect geographic identities of Hawaii-grown coffees jeopardize their status in world markets as specialty coffees. According to the HDOA AG, American trademarks are not enforceable in other countries.
We are also concerned that the HDOA sought advice on this matter from “the HCA [Hawaii Coffee Association] trademark attorney” rather than from the Hawaii Attorney General’s office. This is incorrect. I am not aware that the HDOA solicited advice from the HCA trademark attorney. HCA was kind enough to forward their findings. The HDOA's AG response is above.
With respect to this advice we request the following information:
1—Who is the attorney providing the legal advice quoted in your 12/10/09 email? Unknown. I suggest you contact the HCA directly in order to obtain an accurate response.
2—Were the attorney’s fees for this advice billed to the HCA? or to the HDOA? The HDOA was not billed nor did it pay for this advice.
3—Why is the HCA’s trademark attorney, rather than the HDOA’s attorney, filing for renewal of the HDOA’s “100% Hawaii Coffee” trademark? When the trademarks were originally filed, the HDOA agreed to own the trademarks with the HCA paying all fees and maintaining them as they represent various coffees produced Statewide .The HDOA did not have the funds to file and/or renew the trademarks without taking away from other agricultural commodities. The original filing costs approx. $30,000.
4—Is the HCA trademark attorney also filing for renewal of the HDOA’s trademarks of 100% Hamakua/Ka’u/Kona/Maui/ Moloka’i/Oahu Coffees? Renewals for 6 trademarks were just filed - 100% Hawaii/Kauai/Oahu/Molokai/Maui/Kona.
5—If the filings are for “renewal” of trademarks, do we correctly understand that the HDOA will continue to hold the rights to these trademarks? For the time being, yes.
6—Will the coffee farmers of Kona be invited by the HDOA to review and participate in the preparation of the renewal documents of the “100% Hawaii Coffee” and “100% Kona Coffee” trademarks? Renewals have been already filed for the next 10 years.
We look forward to hearing from you and appreciate your assistance in providing this information.
Sincerely yours,
Bruce Corker
Kona Coffee Farmers Association
To: corkclan@msn.com
CC: gomesgomes@yahoo.com; harold@hoogasian.com; pgee@starbulletin.com; repcoffman@capitol.hawaii.gov; sandra.kunimoto@hawaii.gov; senhee@capitol.hawaii.gov
Subject: Fw: Draft "Cafe Hawaii" Trademark Application in Colombia
From: John.M.Ryan@hawaii.gov
Date: Thu, 10 Dec 2009 06:34:26 -1000
Dear Mr. Corker,
Per the HCA trademark attorney who is filing for the renewal of the 100% HAWAII COFFEE trademark -
"I do not believe that "CAFE HAWAII" and "100% HAWAII COFFEE" are sufficiently close to create a concern about infringement. Instead, it appears that Triana, Uribe & Michelsen ("TUM") believes that the basis of the opposition would be geographic misdescriptiveness in that it is inaccurate to use the mark "CAFE HAWAII" in connection with coffee from Colombia. Of course, TUM is assuming that this is what the applicant intends to do, as opposed to selling coffee from Hawaii in Colombia under the "CAFE HAWAII" mark.
I am not certain how concerned you need to be about the application to register "CAFE HAWAII" in Colombia. If the applicant were trying to obtain a registration in the United States for "CAFE HAWAII" in connection with coffee that is not from Hawaii, I can understand spending money to oppose the application. In this case, however, even if the application is approved, "CAFE HAWAII" would only be registered in Colombia. Is Colombia a significant market for Hawaii coffee? If not, are you still willing to spend money to oppose the application?"
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As we have previously discussed with regards to other issues, the Hawaii Department of Agriculture does not have the financial resources to oppose the application.
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With regard to your second concern, the current Hawaii law does not provide adequate consumer protection in that it allows the use of a blending marketing approach. From a quality assurance position, it is not "okay" for any entity to implement blending under a regional name without requiring full content disclosure.
Regards,
John Ryan
Dr. John M. Ryan, Administrator
Quality Assurance Division
Hawaii State Department of Agriculture
1851 Auiki Street
Honolulu, Hawaii 96819
Ph: (808) 832-0705
FAX (808) 832-0683
| Bruce Corker <corkclan@msn.com> 12/09/2009 06:17 AM |
To |
<john.m.ryan@hawaii.gov> |
cc |
Andrew Gomes <gomesgomes@yahoo.com>, Harold Hoogasian <harold@hoogasian.com>, <josel.londono@cafedecolombia.com>, Luis Fernando Samper <luisfernando.samper@cafedecolombia.com>, Pat Gee <pgee@starbulletin.com>, Denny Coffman <repcoffman@capitol.hawaii.gov>, Sandra Kunimoto <sandra.kunimoto@hawaii.gov>, Senator Hee <senhee@capitol.hawaii.gov> |
Subject |
RE: "Cafe Hawaii" Trademark Application in Colombia |
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Dear Mr. Ryan:
The Kona Coffee Farmers Association (KCFA) is pleased to learn that the Hawaii Department of Agriculture (HDOA) is addressing this trademark matter. Protecting against misuse of Hawaii geographic origin coffee names is a serious matter for farmers. We in Hawaii owe Mr. Londono and the Colombian Coffee Federation a debt of gratitude for bringing attention to this trademark application.
With respect to your inquiry as to the nature of the problem presented, the KCFA has two principal concerns arising from the information from Mr. Londono and from your 12/8/09 email (below). These concerns are:
1—“CAFÉ HAWAII” TRADEMARK: Over the last few years we have repeatedly been advised by HDOA representatives that, in order to protect against misuse of the identities of the various geographic origins of Hawaii-grown coffee, the HDOA applied for and received separate trademarks from the US Patent and Trademark Office for 100% Hawaii/Hamakua/Ka’u/Kona/Maui/Moloka’i/Oahu Coffee. Among the obligations of trademark holders is to protect against infringement of the trademark. Failure to do so may be grounds for cancellation of the trademark. The information from Mr. Londono raises the question of whether the Colombian application is inconsistent with US trademarks issued to the HDOA and merits immediate investigation by the HDOA—particularly in light of the December 16, 2009 date identified by Mr. Londono as the last day for filing opposition to the “Café Hawaii” trademark application. The concern of Hawaii coffee growers is straight forward—if the Colombian applicant is granted a trademark which allows the marketing of what consumers may reasonably believe is “Hawaiian Coffee” but is not coffee grown in Hawaii, the reputation of our crop and our economic interests will be damaged. We trust that the HDOA--either in its role as trademark holder or as the representative of the State of Hawaii—will investigate and take appropriate action to protect the interests of Hawaii coffee farmers. If the investigation indicates it is appropriate, we urge the HDOA to file an opposition to the pending application.
2—SALE OF FOREIGN-GROWN COFFEE “UNDER KONA OR HAWAII NAMES”: We are very concerned by the apparent suggestion in your email that it is “okay” with the HDOA for coffee vendors in Colombia or anywhere else in the world to sell non-Hawaii-grown coffee under the Kona or Hawaii names. Your suggestion seems to be that is “okay” because Hawaii law permits “10% Hawaiian Coffee Blends” and that the HDOA, therefore, believes that regional names of Hawaiian-grown coffee are generic and can be freely used by vendors regardless of where the coffee in a package may have been grown. Is it, in fact, the position of the HDOA that it is “okay” for a coffee vendor in Colombia, or in California, or in London to sell a package labeled as “Kona Coffee” with zero percent Kona-grown coffee? Such a position would seem to be at odds with the HDOA’s stated reason for obtaining its Hawaii regional coffee trademarks.
Again, we are pleased that you are working on this matter and, as you do, we urge the HDOA to seek to provide Hawaii-grown coffee with the same types of protections that Colombia provides for the Colombian Coffee name, and California provides for Napa Valley wine name, and Idaho provides for the Idaho Potato name.
We request that you keep us advised of the status of this matter.
Very truly yours,
Bruce Corker
Kona Coffee Farmers Association
To: corkclan@msn.com
CC: gomesgomes@yahoo.com; harold@hoogasian.com; josel.londono@cafedecolombia.com; luisfernando.samper@cafedecolombia.com; pgee@starbulletin.com; repcoffman@capitol.hawaii.gov; sandra.kunimoto@hawaii.gov; senhee@capitol.hawaii.gov
Subject: Re: "Cafe Hawaii" Trademark Application in Colombia
From: John.M.Ryan@hawaii.gov
Date: Tue, 8 Dec 2009 09:35:20 -1000
Hi Bruce,
We are working on this one. By the way, don't the 10% "Kona Blends" contain Columbian and other coffees - under the Kona or Hawaii names? If it is already okay to sell Columbian and other coffees under the Kona or Hawaii names, I'm not really sure what the problem is here.
John
Dr. John M. Ryan, Administrator
Quality Assurance Division
Hawaii State Department of Agriculture
1851 Auiki Street
Honolulu, Hawaii 96819
Ph: (808) 832-0705
FAX (808) 832-0683
| Bruce Corker <corkclan@msn.com> 12/07/2009 01:41 PM |
To |
Sandra Kunimoto <sandra.kunimoto@hawaii.gov> |
cc |
<josel.londono@cafedecolombia.com>, <john.m.ryan@hawaii.gov>, Senator Hee <senhee@capitol.hawaii.gov>, Denny Coffman <repcoffman@capitol.hawaii.gov>, Harold Hoogasian <harold@hoogasian.com>, Andrew Gomes <gomesgomes@yahoo.com>, Pat Gee <pgee@starbulletin.com>, Luis Fernando Samper <luisfernando.samper@cafedecolombia.com> |
Subject |
"Cafe Hawaii" Trademark Application in Colombia |
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To: Sandra L. Kunimoto, Chair, Hawaii Department of Agriculture
From: Bruce Corker, Kona Coffee Farmers Association
Re: “Café Hawaii” Trademark Application in Colombia
Dear Chair Kunimoto:
As a follow up to my communication of yesterday concerning the “Café Hawaii” trademark application pending in Colombia, please see the email (below) received today from Jose L. Londono of the Colombian Coffee Federation. Mr. Londono advises that the period for filing a protest to the application expires December 16, 2009.
Very truly yours,
Bruce Corker
To: corkclan@msn.com
Subject: RE: Kona Coffee Farmers Association
From: JoseL.Londono@cafedecolombia.com
Date: Mon, 7 Dec 2009 14:59:59 -0500
Dear Mr Corker,
Further to your e-mail below, please also take into account that opposition period will expire next December 16th 2009.
Cordialmente,
JOSÉ LUIS LONDOÑO FERNÁNDEZ Abogado División Jurídica, Federación Nacional de Cafeteros de Colombia Calle 73 No. 8-13 Torre B Piso 11 Conmutador 3 136600 - 3 136700 Ext. 350 Bogotá - Colombia - SA mailto:josel.londono@CafedeColombia.com
