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 most of that decade 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 that no company may register the everyday name of a plant. The dispute reached a federal court, which ruled in January 2005 that the trademark was invalid and did not cover ordinary use of the word, and Burke surrendered the registration that June. 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".