Taking products at face value: trademarks and origin
We know that the purpose of a trademark is to indicate the commercial origin of a product or service, allowing consumers to make free and informed purchasing decisions, but what happens when a trademark implies a geographical origin that is not accurate? Recent activities in the United States have brought this question to the forefront as the use of placenames in trademarks comes under close scrutiny.
When pasta says, "Basta!"
Barilla proudly proclaims itself to be "Italy's #1 brand of pasta," and with good cause. According to international wholesaler of Italian consumer goods, Bell Italia, Barilla is "the biggest pasta producer in the world (40-45% of the Italian market and 25% of the U.S. market)." And if that was not enough, Statista observed that in 2017, Barilla was the most widely available pasta brand in Italian supermarkets, lining the selves of 98 percent of pasta aisles.
Yet with these demonstrable claims comes the implicit message that Barilla products bearing the registered trademark of the words "Italy's #1 brand of pasta" next to the colors of the Italian flag are made in Italy. At least in the eyes of California litigants Matthew Sinatro and Jessica Prost. Their class action lawsuit, filed on June 11, 2022, alleges that the "falsely, misleadingly, and deceptively" labeled products, manufactured in New York and Iowa from ingredients sourced in countries other than Italy, seek to "take advantage of consumers' desire for authentic Italian pasta."
On October 17, 2022, Judge Donna M. Ryu of the Northern District of California denied in part Barilla's motion to dismiss, allowing the case to proceed to trial. It remains to be seen whether Italy's #1 pasta maker's less conspicuous disclosure that the contested goods are "Made in the U.S.A. with U.S.A. and imported ingredients" is enough to overcome the more immediate Italian association.
In a curious twist of fate, this ongoing case is the inverse of one ruled upon by the Italian Supreme Court (Civil Division) on June 23, 2022. There, it was decided that shoes manufactured in China bearing the trademark "Luca Stefani," registered in the United Kingdom, violated Article 4, Paragraph 49bis of Law no. 350/2003 prohibiting the "false indication" of product origin. The Supreme Court ruled that the Italian-sounding trademark was used "in such a way as to induce the consumer to believe that the product or goods are of Italian origin within the meaning of European legislation on origin," and that insufficient effort had been made on the part of the importer "to avoid any misunderstanding by the consumer on the actual origin of the product." Time will tell whether their U.S. peers will look so disapprovingly upon misunderstandings.
Whatever the outcome, it is not likely to be as distressing as finding out your nonna's secret spaghetti sauce came from a jar.
Hot and bothered in Texas
Any BBQ pitmaster worth his salt, pepper and garlic will tell you that Texas and North Carolina have very different tastes in outdoor cooking. Texas prefers a spicy flavor profile that lets the woodsmoke do the talking, while North Carolina leans into sweeter, more vinegary notes. You will then understand how aghast Phillip White of California was to learn that T.W. Garner Food Co. actually manufactures Texas Pete hot sauce in Winston-Salem, North Carolina.
In his September 12, 2022, suit against the food producer, White argues that "by way of its false marketing and labeling, Defendant [T.W. Garner Food Co.] knowingly and intentionally capitalizes on consumers' desire to partake in the culture and authentic cuisine of one of the most prideful states in America."
So proud, in fact, that the Texas Pete brand supposedly owes its provenance to the state's piquant recipes and archetypically "American name." Little did founder Sam Garner suspect in 1929 that a spicy dollop of Americana would mean his successors would find themselves up to their ribeyes in court proceedings.
Sun, sea and shirts
Hawai'i, glorious land of beaches, ukuleles and questionable fashion is considering new legal steps to preserve its distinct identity and support local businesses. Under current legislation, the "made in Hawai'i" designation can only apply to a product that has had "at least fifty-one percent of its wholesale value added by manufacture, assembly, fabrication, or production within the State."
The rationale behind this law is to prevent non-resident companies from exploiting the peaceful but vivacious image of the state to the detriment of the local economy. However, the problem lies in the fact that as a collection of islands far into the Pacific Ocean, Hawai'i has limited manufacturing resources, and many raw materials and ingredients must be imported from the U.S. mainland and elsewhere. Rich though the islands' volcanic soils may be, Hawai'i is not known for producing the vast amounts of cotton needed to feed worldwide demand for splashy short-sleeved summer wear.
Hence, the Department of Business, Economic Development & Tourism (DBEDT) is currently undertaking a study to determine whether the "made in Hawai'i" rules need to be relaxed in order to accommodate Hawai'ian enterprises better while still precluding those who would ride on the Aloha State's colorful coat tails.
The outcome of this study could serve as an exemplar to other regional economies that wish to safeguard their valuable identities and promote their smaller businesses. Now that is worth cracking open a coconut or two for.
From copyrights to trademarks to patents: a roundup of this month's news and trends from the world of Intellectual Property.