Recalling two major trademark disputes: What are the costly lessons for Vietnamese enterprises?

In practice, the United States market has recorded many trademark disputes involving Vietnamese goods and businesses. Typical examples include the Catfish case, Trung Nguyên, Petro Vietnam, Vifon, Vinataba, and others.

Based on these typical cases, this article focuses on analyzing two major trademark disputes—the Pangasius Catfish case and the Trung Nguyên Coffee case—while pointing out important legal lessons for Vietnamese businesses exporting to the U.S. market.

The Pangasius Catfish Trademark Battle

Vietnam began exporting basa fish and tra fish (both are types of pangasius catfish) to the United States in 1997. Over time, these products gradually entered and established a position in the U.S. market thanks to good quality and lower prices compared to domestically farmed American catfish. During the years 1999–2000, exports of Vietnamese basa and tra fish to the U.S. increased rapidly, accounting for about 2% to 3% of total catfish consumption in that market. This caused concern among U.S. catfish farmers.

One of the arguments raised by American catfish farmers was that Vietnamese pangasius products were also called “catfish” which caused confusion for U.S. consumers and unfairly benefited from the reputation of American catfish.

Based on these arguments, in early February 2001, they launched a nine-month advertising campaign costing USD 5.2 million. The campaign was initiated by the U.S. Catfish Institute (TCI) and funded by the Catfish Farmers of America (CFA) to oppose the import of Vietnamese basa and tra fish.

On the Vietnamese side, businesses strictly complied with Decision No. 178/1999/QĐ-TTg of the Prime Minister and relevant decisions of the Ministry of Fisheries and the Ministry of Trade on product labeling. All exported seafood packaging clearly stated “Product of Vietnam” or “Made in Vietnam” and included both scientific names and commercial names, in accordance with regulations of the U.S. Food and Drug Administration for products entering the U.S. market.

Vietnam could have filed complaints with competent U.S. courts, the U.S. International Trade Commission (ITC), or the Office of the United States Trade Representative (USTR) to protect its legitimate rights. This was based on Article 2.6B, Chapter 1 (Trade in Goods) of the Vietnam–U.S. Bilateral Trade Agreement, which states that “the parties shall ensure not to enact or apply technical regulations or standards that create obstacles to international trade or protect domestic production”.

However, an interesting point in this case was that the controversy actually made Vietnamese basa fish more well-known. As a result, more American consumers became aware of and used Vietnamese basa fish. From September 2001, Vietnam stopped using the “Catfish” label for pangasius products sold in the U.S. market and instead used the names basa fish and tra fish. The Pangasius Business Club officially hired White & Case, a well-known U.S. law firm, to carry out procedures to register trademark protection for basa and tra fish in the U.S.

It is easy to see that the actions taken by the U.S. side at that time were unreasonable, protectionist, unfair, and contrary to scientific arguments, international practices, and the free trade policy that the U.S. itself promotes. However, an important question arises: would this labeling dispute have occurred if Vietnamese basa fish had built and registered its own trademark and entered the market under that brand?

The Trung Nguyên Coffee Trademark Dispute

Founded in 1996, Trung Nguyên Coffee initially operated on a small scale. However, with a coffee shop opened on Nguyen Kiem Street (Phu Nhuan District, Ho Chi Minh City) in 1987, the brand quickly made a strong impression on urban coffee lovers.

With nine types of coffee produced and brewed using a unique method, Trung Nguyên rapidly expanded its distribution network to nearly 400 coffee shops nationwide under a franchise model. This franchising model was also expanded overseas. Trung Nguyên Coffee appeared in Singapore, Japan, Hong Kong, China, Australia, and other markets.

However, due to insufficient attention to trademark registration, the Trung Nguyên trademark suffered serious consequences when expanding into the U.S. market.

In July 2000, Trung Nguyên and Rice Field Corp (based in California) first made contact and negotiated the import of Trung Nguyên coffee into the U.S. In January 2001, the first contract was signed, and Trung Nguyên coffee entered the U.S. market. In early 2002, another contract was signed, and Trung Nguyên coffee continued to be exported to the U.S.

At that point, Trung Nguyên began to consider registering trademark protection in the U.S. However, unexpectedly, in November 2000—just three months after the first contact between the two parties—Rice Field Corp had already filed trademark applications with U.S. authorities for “Trung Nguyên – Buon Ma Thuot’s Leading Coffee” and the “Trung Nguyên” trademark (in Vietnamese).

In August 2001, Trung Nguyên urgently filed its own trademark application for “Trung Nguyên – The New Creative Inspiration” (in English) and requested that the applications filed by Rice Field Corp be declared invalid.

Trung Nguyên Coffee Company hired lawyers to file complaints and submit key evidence proving its legitimate ownership of the trademark. Important evidence included the company’s business license issued in 1996, trademarks and signage used in Vietnam, a list of nearly 400 franchised coffee shops operating under the Trung Nguyên brand, and the company’s overseas markets. Additional evidence included annual net revenue from product sales and business records from 1997 to 2001.

Estimated losses for Trung Nguyên in this case reached nearly USD 1 million, including legal fees and losses caused by delays in its U.S. expansion strategy. According to a contract drafted in late 2001, Trung Nguyên was expected to become the first Vietnamese company to franchise into the U.S. market at a cost of approximately USD 100,000 per state per partner over three years.

This was a costly lesson for Vietnamese businesses seeking to expand into the U.S. market.

Why Did Vietnamese Businesses Lose Their Trademarks in the U.S.?

The main reasons include the following:

Limited awareness of trademark registration

Vietnamese businesses are following the global trend toward stable product quality. As a result, competition based solely on quality is no longer the top priority. Instead, competition now focuses on branding, pricing, after-sales services, and distribution.

However, many Vietnamese businesses are still unfamiliar with building and promoting their own brands. This leads to a lack of awareness about trademark protection, even though trademarks are valuable assets that are difficult to build. As a result, many well-known Vietnamese brands have been “taken over” by others.

This lack of awareness also means that trademark protection strategies are not properly prioritized. Vietnamese businesses often wait until they already have export markets before registering trademarks. In contrast, foreign companies typically register trademarks at least six months to one year before entering the Vietnamese market or any other market.

Many foreign companies have registered hundreds of trademarks in Vietnam. For example, Unilever (UK & Netherlands) has registered up to 696 protected trademarks. If we visit the website of the U.S. Patent and Trademark Office (USPTO), we can see that the number of trademark applications filed by applicants based in Vietnam is very small compared to the total number of trademarks managed by the USPTO. Meanwhile, China, Thailand, and other Southeast Asian countries exporting similar products to the U.S. have registered a significant number of intellectual property rights there.

Regarding intellectual property registration in Vietnam today, only a small number of large enterprises such as FPT, Viettel, and Viglacera have departments responsible for international trademark registration. Most others focus on company formation and capital mobilization without considering intellectual property protection, especially small and medium-sized enterprises. In contrast, multinational corporations worldwide invest heavily in brand management and exclusive intellectual property protection.

Concerns about complex and costly procedures

Many businesses complain that they struggle with the high costs of registering trademarks in target markets. At the time of registration, the trademark may only be reserved “just in case,” but without registration, there is a risk of losing the trademark altogether.

For some state-owned enterprises, directors are even more hesitant, as investing in branding requires significant funding and only shows clear benefits after a long period.

Lawyer Hoang Manh Hung from the Hai Phong Bar Association commented:
“Most Vietnamese businesses export for a long time before registering trademarks, or they do so superficially and fail to follow through. When trademark disputes arise, they end up reacting too late.”

Lawyer Hoang Manh Hung from the Hai Phong Bar Association commented: “Most Vietnamese businesses export for a long time before registering trademarks, or they do so superficially and fail to follow through. When trademark disputes arise, they end up reacting too late.” Therefore, He advised: “It is best for businesses to register their trademarks before exporting goods to the U.S. market. This allows Vietnamese businesses to protect and develop brand reputation and market share, and to be ready to handle trademark disputes and infringements in this high-risk market.”

Limited understanding of U.S. trademark protection law

It can be seen that only after dozens of trademarks were lost in major markets did Vietnamese businesses begin to pay attention to international legal regulations. Only then did intellectual property law consulting firms truly realize their important role.

Clearly, entering the U.S. market is extremely challenging for Vietnamese goods and businesses from an industrial property perspective. State authorities and businesses alike have learned necessary lessons to remove barriers in Vietnam’s international economic integration process.

Recognizing the importance of trademark registration—especially in foreign markets—understanding local laws to carry out trademark protection, and applying the strategic principle of “brand before goods” to ensure legal rights and gradually build the reputation of Vietnamese brands are what Vietnamese businesses are expected to achieve.

Can businesses do this, especially in the U.S. market, where many opportunities are opening up along with the advantages provided by the Vietnam–U.S. Trade Agreement? The answer lies in the efforts of each business and, at a higher level, in national unity. Although many challenges remain, there is hope that with the attention of the Government and ministries, Vietnamese businesses will effectively address trademark loss in foreign markets and create a solid foundation for developing Vietnamese brands not only in the U.S. but also in other potential markets.

Ky Anh