By Rick Andrew

Intellectual property is an asset that must be protected, especially for a certification organization like NSF. After all, NSF does not manufacture a product. Our offering to clients is permission to use our NSF Mark on certified products. We make significant investments with major consumer print media to enhance the recognition and hence the value of this trademark. If it is common for manufacturers to use certification marks without actually being certified, the value of the certification is reduced for everyone. Manufacturers who legitimately use the NSF Mark on certified products must compete with those who simply print it on product literature, without going through the extensive certification process required for legitimate use. Consumers may end up purchasing inferior products, thinking that they are NSF certified. NSF and other certification organizations understand this issue and have policies and procedures to address improper use of certification marks.

Manufacturers also face trademark protection issues. I have spoken with some of them on the subject and I have seen firsthand the ‘copycat’ products that mimic the labels and appearance, although probably not the quality, of these manufacturers’ products.

NSF has a full-time staff to address instances of improper use of the NSF Mark. These folks focus their efforts on situations where non-certified products are inappropriately identified as certified. Their message is always very clear—that the NSF Mark may not be used to imply that non-certified products are certified or that a product is certified for some purpose beyond the scope of certification.

In addition to the full-time enforcement staff, NSF engages in significant field efforts to ensure that only NSF certified products bear the NSF Mark. I recently participated in one of these field efforts at the Water China trade show in Guangzhou.

NSF trademark protection field efforts at Water China
Water China is a growing trade show focused on many aspects of water, including residential water treatment, held in early March in Guangzhou, China. Organizer Merebo’s website indicated that Water China 2006 attracted 333 exhibitors from 23 countries, with over 10,000 visitors from 56 countries. Although final statistics on the 2007 event are not yet available, it is expected that the show grew, both in number of exhibitors and attendees.

NSF saw this trade show as an excellent opportunity to assess the scope of misuse of the NSF Mark and take action against those doing so. As such, we developed a specific plan of action. For the first two days, we conducted a detailed sweep of the entire trade show, reviewing exhibit booth graphics, literature, packaging and other materials present. The result of this in-depth investigation was that six exhibitors were found to be misusing the NSF Mark, implying that non-certified products were NSF certified.

Next steps—involving the authorities
NSF involved two authoritative groups when following up with the six exhibitors misusing NSF’s trademark. The first was the US Commercial Service, under the auspices of International Trade Adminstration of the Department of Commerce. The Commercial Service assists US companies doing business abroad. This assistance takes many forms, including market research, introductions to buyers of products, counseling regarding export processes and, last but not least, trademark enforcement. Their scope spans many countries and they are very active in China. In fact, their Guangzhou office was exhibiting at Water China, which made it very convenient to call for their assistance in trademark enforcement at the show.

The second authority invoked by NSF was China Foreign Trade Guang-zhou Exhibition Corporation, the Chinese organizer of the trade show. They have ultimate authority regarding the status of any specific exhibitor, so any kind of dispute between exhibitors must involve the organizer. The organizers informed NSF that their rules require strict adherence to intellectual property laws and that unauthorized use of trademarks was strictly prohibited and could be enforced by sanctions including expulsion.

NSF, the US Commercial Service and the show organizer approached each of the six exhibitors who were misusing the NSF Mark. NSF described the issue to each of the exhibitors and explained to them that they did not have permission from NSF to use NSF’s trademark as they were using it.

Results
Four of the six exhibitors came into compliance immediately. Their actions included removal of unauthorized brochures, generous use of Wite-out® on NSF Marks on certain pieces of product literature and similar steps.

The remaining two exhibitors refused to comply. They took the position that since their products used NSF certified media, they were free to use the NSF Mark directly on their product and accompanying packaging and literature. NSF countered that any use of the NSF Mark in conjunction with their products including NSF certified media requires a disclaimer that clarifies that only the media is certified—not the complete product.

Ultimately, the show organizer stopped short of expelling the two remaining offenders, despite NSF’s urging them to take this step. The US Commercial service took note of all six manufacturers who were improperly using NSF’s trademark, so they can pursue further monitoring.

Trademark protection—continuing vigilance and action is required
Our efforts to stop unauthorized use of the NSF Mark at Water China ended with mixed results. Only six of 300+ exhibitors were improperly using the NSF Mark—good news indeed—and four of them immediately came into compliance when addressed by NSF, the US Commercial Service and the show organizer. The disappointing result was that two of the violators refused to comply and ultimately the show organizer stopped short of enforcement to the full extent of their capability.

Water China 2007 was just one battle in the war on trademark protection. The war must continue to be fought wherever battlefields arise, whether they are trade shows, Internet advertisements, product labels, print advertisements or advertising brochures. We must all remain vigilant: inappropriate use of the NSF Mark is a deterioration in value for those legitimately certified manufacturers and consumers who rely upon it.

Resources

  1. Further information on the US Commercial Service can be found at the website:
    http://www.ita.doc.gov/cs/
  2. Information on their Guangzhou office specifically may be found at:
    http://export.gov/eac/intl_staff_list.asp? CPostName=Guangzhou

About the author
Rick Andrew is the Operations Manager of the NSF Drinking Water Treatment Units Program. Prior to joining NSF, his previous experience was in the area of analytical and environmental chemistry consulting. Andrew has a bachelor’s degree in chemistry and an MBA from the University of Michigan. He can be reached at 1-800-NSF-MARK or email: Andrew@nsf.org

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