Is the label “China Free” on vitamins disparaging to China?

Monday, April 9th 2012 by Brandy G. Barrett

According to a recent decision of the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (PTO), the answer is “no.”

In In re Prosynthesis Laboratories, Inc., decided on March 23, 2012, Prosynthesis Laboratories applied for federal trademark protection for the mark CHINA FREE with Design (as pictured), which was printed on the labels of its vitamins and mineral supplements.  (Prosynthesis was actually only looking to register the Design portion and disclaimed the exclusive right to use of the words “CHINA FREE.”)

An Examining Attorney at the PTO originally denied registration to Prosynthesis.  A Managing Attorney affirmed this decision on the grounds that the mark, “consists of or comprises… matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  Lanham Act § 2(a); 15 U.S.C. § 1052(a).

A traditional two-part test decides whether a mark is disparaging.  The first part is to determine the likely meaning of the matter in question.  Second, if the likely meaning is determined to refer to identifiable persons, institutions, beliefs, or national symbols, the Examiner (or Board, in this case) should determine whether the matter is considered disparaging to a substantial number of those persons or institutions identified.

First, the TTAB agreed with Prosynthesis that CHINA FREE is a true fact about its goods, and is especially used to inform a particular segment of the market that is “uncomfortable purchasing supplements for human consumption that contains [sic] elements sourced in China…” after recentoutbreaks of concern beginning with a major pet food recall in 2007.

“The Managing Attorney argued that CHINA FREE “promotes an unsupported stereotype that all products originating from China are of an inferior quality.” The TTAB disagreed and used text from Prosynthesis’ website to support that Prosynthesis was not claiming that all products from China were adulterated, but rather, it was warning consumers of risks due to alleged serious problems in Chinese manufacturing.”

The second portion of the analysis, however, proved to be much more difficult.  The TTAB noted:

[a]t first glance, this would appear to be a simple factual statement merely describing a characteristic of the identified goods, i.e., where they were not made, not much different from ubiquitous statements of origin, such as “Made in U.S.A.,” or negative statements of content, such as “sugar free.”  Nonetheless, the managing attorney contends that it is disparaging, because the statement that the applicant’s goods do not contain ingredients from China implies that there is something wrong with ingredients from China; and by extension that China is accordingly to be held in a dim view.

Prosynthesis argued that while the mark CHINA FREE is not meant to be disparaging to the nation of China, it maintained that there is a legitimate reason to be concerned about the safety of pharmaceuticals imported from China.  The TTAB admitted that Prosynthesis’ own website was “rather strident, one-sided, and somewhat alarmist.”  However, the TTAB held that there was enough documentation to support that Prosynthesis’ use of the mark was not made from animus, but rather from its’ deep-rooted concern about safety.

The Managing Attorney argued that CHINA FREE “promotes an unsupported stereotype that all products originating from China are of an inferior quality.”  The TTAB disagreed and used text from  Prosynthesis’website to support that Prosynthesis was not claiming that all products from China were adulterated, but rather, it was warning consumers of risks due to alleged serious problems in Chinese manufacturing.  Furthermore, the TTAB found that the issue was precisely whether the mark disparages the nation of China itself, not the goods produced there.

To determine if the “target group” is disparaged by the mark, other disparagement cases have surveyed members of the group.  However, during ex parte examination, the TTAB cannot order or create such a survey.  Although the TTAB recognized that the opinion of the Board is no substitute for the “target group’s” opinion, the Board found no evidence on the record that should bar Prosynthesis from obtaining a federal trademark registration for CHINA FREE.