Mānuka Certification Trademark Case Collapses in US
- Bruce Roscoe
- 3 hours ago
- 5 min read
The United States Patent and Trademark Office (USPTO) has sounded the death knell over New Zealand’s second attempt to secure a mānuka certification trademark in New Zealand’s largest honey market.
USPTO on 31 July issued Mānuka Charitable Trust (MCT) a “suspension notice” for the trademark application it filed 11 December 2024. The notice cites the same objection that the Intellectual Property Office of New Zealand (NZIPO) cited in its landmark May 2023 ruling in favour of Australia – that “mānuka” is a “descriptive” term that lacks “distinctiveness”.
“Suspension” means that USPTO has suspended further action on the application until MCT meets two conditions. It must provide a “disclaimer” saying it does not claim exclusive rights to the word “mānuka”. It must also supply evidence that it has secured a certification trademark from NZIPO.
USPTO first stated the disclaimer requirement in a letter to MCT’s US attorney on 10 June 2025 and repeated the requirement on 9 January 2026. In responses that followed six months later, MCT both times refused to comply. Within three weeks of MCT’s second refusal, USPTO issued the suspension notice.
The notice contains a ‘Don’t call us, we’ll call you’ message in the advice, “Applicant may file a response, but is not required to do so”. In other words, only by meeting the examiner’s requirements can the application advance from this point.
Evidence
The USPTO examiner was unmoved by the 180 pages of “evidence” that MCT in sum presented, labelling one item as “irrelevant” and another as “unpersuasive”.
Rather, the examiner referenced three websites that everyday people would consult — webMD, Wikipedia, and GARDENIA. Then concluded: “…the wording merely describes applicant’s goods and/or services because applicant offers honey and other food products from the Manuka plant or from MANUKA honey”.
MCT had conceded as much, the examiner argued, when it indicated the mark would apply to foods and ingredients in a catch-all list of items from chocolate to hot sauce if those contained honey produced from New Zealand-grown leptospermum scoparium.
“Manuka honey is made in Australia and New Zealand…” the WebMD entry begins. MCT took the examiner to task for citing evidence that ‘incorrectly identifies “manuka honey” as being “made in Australia”…’ From the outset this is the high jump that MCT, and before it Manuka Honey Appellation Society (MHAS), has faced, which is the need to overcome deeply set public perception.
Proving “distinctiveness” becomes doubly difficult for a food perfected by bees, as MCT must counter the argument that the mānuka honey it may “certify” may not differ much from the honey it does not.
Australia and China
Four days before USPTO issued the suspension, IP Australia detonated a “Deferment of Acceptance” for the two applications MCT filed 5 December 2024. Based on the record of previous rejections (for applications filed by MHAS and MCT), after the lapse of 52 days the “deferment” will convert to rejection.
(MCT typically files two applications at one time – one with a macron over the first “a” in “mānuka” and one without. Another variation is the toho or logo – the stylized “M” that some observers view as the face of a honeybee – by itself or with MĀNUKA printed to the right.)
Weak good, and strong bad, news arrived from China National Intellectual Property Administration (CNIPA) last year. CNIPA on 20 May rejected MCT’s application (82494871) for the mark combining the toho with the word “mānuka”. On 6 September, CNIPA registered (82491082) the toho only mark as an ordinary, not a certification, trademark.
10 Years and Counting
The NZIPO May 2023 ruling was nearly eight years in the making and considered a total 270 pages of submissions and 4,000 pages of evidence presented by the Australian Manuka Honey Association (AMHA) and the UMF Honey Association’s (UMFHA) mirror body, MHAS.
In MCT’s relitigation of the cases, AMHA, which mobilised substantial resources to defeat the 2015-2023 campaign, has filed no oppositions and fired no media salvos against MCT.
Even without AMHA opposition, the MCT filings appear to have crash landed. The NZIPO examiner “raised objections” within five weeks of the 11 June 2024 filing, according to a case summary. The application has entered its third year, which brings to 10 years the time consumed in examining the original MHAS and current MCT cases.
The Power of Certification
A “certification trademark” is no ordinary mark. Such marks are administered by an organisation that has the power to decide which goods meet the standards demanded by the mark. Fees are charged for mark usage. The New Zealand FernMark is an example.
Citing the Treaty of Waitangi, the Ministry for Primary Industries (MPI) mandated the establishment of MCT in August 2019 so that Māori could benefit from the mānuka honey industry through owning related intellectual property. MCT incorporated in February 2020.
Ironically, through the regulatory scientific definitions for mānuka honey, MPI has become a default certification agency. A further irony is that New Zealand mānuka honey producers clearly are meeting shortfalls in Australian production caused by weather events and the incursion of the varroa mite.
The Living and the Dead
USPTO watches over a land of the living and the dead. A USPTO database search reveals 189 manuka honey trademark filings. (A few are double-counted due to filing of the same mark under different serial numbers for different product categories, for example ‘food’ and ‘cosmetics’.) Let’s look at the first 100, counting from the most recent. Category totals are the same as percentages, as our total count is 100.
New Zealand-domiciled businesses or individuals accounted for the most applications at 54, followed by US (36), Australia (6) and other (4). By status, 46 are "dead / abandoned"; 27, “live / registered”; 18, “live / pending”; and 9, “dead / cancelled”.
Among the “dead / abandoned” is Serial No. 86910788 for “MANUKA HONEY”, as a word mark with no logo or symbol and no macron over the first “a” in “manuka”, filed by UMFHA 17 February 2016 (and soon after assigned to MHAS). The application was abandoned 17 January 2024 “because the applicant failed to respond or filed a late response to an Office action”, according to a USPTO database entry. The word “Māori” is not found in this application.
USPTO had issued a suspension notice to MHAS three years after the filing. The MCT application received such a notice within 18 months. Both notices cited the reason that “manuka” was a “descriptive” term. USPTO also required from MHAS proof that NZIPO had registered the mark. In that first case, death came slowly. Nearly four years – and 39 document procedures – passed between the suspension and “dead / abandoned” status.
MCT, with little registered intellectual property to call its own, continues to oppose the applications to USPTO for trademarks that contain the word “manuka”. When it succeeds, those applications may share the same resting place as its own.
“Just a Standard Practice”
Manuka Charitable Trust spokesperson Kristen Kohere-Soutar has provided Apiarist’s Advocate with the following response to the USPTO suspension:
“This notice is just a standard practice of the USPTO. The application is on hold until information is provided on the status of the NZ application. We will continue to argue the disclaimer request as per the Trust’s legal strategy to protect the correct use of the term Manuka honey to product exclusively from Aotearoa NZ”.
Bruce Roscoe is a Japan-resident researcher and former foreign correspondent and securities analyst.
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