Rooibos" Is Now a Free Word in America, Any Pack Can Say It
As of June 24, 2005, "rooibos" is a generic name in the US that anyone selling the red bush can print on a label, after a Dallas firm gave up the decade-old trademark on the word.
Any pack of the red tea sold in America can now say "rooibos" on the label. As of June 24, 2005, the word is a generic name in the United States, free for anyone who grows or sells the tea to use, after Burke International, a Dallas firm, told the US Patent and Trademark Office it was voluntarily surrendering the registered trademark it had held on the word.
The surrender ends a decade in which the ordinary name of Aspalathus linearis, the plant South Africa grows in the Cederberg and exports as the caffeine-free red tea, was private property in the US. For years an American seller could not simply call the tea by its own name without risking a letter from the trademark holder. Rooibos made up about three-quarters of the South African tea the US imported, worth roughly US $16m, just-food reported.
The word had been registered in the United States in 1994 by the South African skincare entrepreneur Annique Theron and sold on in 2001 to Virginia Burke-Watkins of Burke International, which then enforced it against sellers of the tea, sending cease-and-desist letters to small cafes and resellers who used the plain word on their own labels. Challengers, among them the South African exporter Rooibos Ltd, argued in a cancellation proceeding that no company may register the everyday name of a plant. The two sides never got a judge's ruling on that question: in 2005, after ten years of dispute, they reached a settlement, and both companies voluntarily and unconditionally agreed to cancel their trademark registrations on the word. The full account of that decade-long fight, and the legal shields South Africa built afterward, is set out separately.
The fight ran about ten years and cost the parties close to US $1 million in legal fees, WIPO said. With the surrender, no company gates the word: the name on the pack is once again just the name of the plant.
Sources: World Intellectual Property Organization, "Disputing a Name, Developing a Geographical Indication"; World Trademark Review, "South African company seeks cancellation of ROOIBOS mark"; just-food, "South Africa sees red over US-held trademark for rooibos tea"; American Herbal Products Association, "Rooibos Trademark Abandoned".