What’s in a name? — Battle over who can use ‘yogi’

By Sherri Buri McDonald
The Register-Guard

EUGENE, Ore. (AP) — Six years after the death of spiritual leader Yogi Bhajan, three legal battles are under way in Oregon and California over the use of the name “yogi” in food products and ingredients.

In the late 1960s, India-born Yogi Bhajan founded a Sikh community in the United States, which led to the creation of Golden Temple, a cereal and tea producer in Eugene that became an anchor of the local natural foods industry.

In May, Golden Temple sold its cereal division to Hearthside Food Solutions, a manufacturer based in Illinois. Now, Golden Temple officials say their sole focus is on growing Yogi Tea, a natural tea business with 50 employees in Springfield and about 100 employees in Europe.

But the outcomes of the trademark disputes could throw a wrench in those plans.

For instance, if Yogi Bhajan’s widow, Bibiji, prevails in arbitration in Portland with Golden Temple over trademark issues, she will license the brand to another tea manufacturer, not Golden Temple, her attorney Surjit Soni said.

“Golden Temple will not be allowed to use it,” he said.

A company’s trademark is a key part of its value, which is why companies vigorously defend their identifers.

“The brand with its marks is an important asset that has a lot of value in terms of what it stands for to the consumers, its awareness in the marketplace and the trade, meaning retailers and distributors,” said Bob Burke, principal of Natural Products Consulting in Andover, Mass. “To the degree that somebody is valuing the business, it’s going to be more than just what are the sales, what are the profits, but (also) how strong are their brands? How recognizable are they, and what consumers do they appeal to?”

Proving ownership of a trademark is a complex process, with many factors at play, trademark experts say.

“The owner of a trademark is the first one to use the trademark as the name for a product or service,” said Mark Heilbronner, a Portland attorney specializing in trademark law, who is not involved in the Golden Temple proceedings.

However, when a trademark is registered with the U.S. Patent and Trademark Office, that creates a legal presumption about who owns the trademark, which could be subject to challenge, depending on the age of the registration and other factors, he said.

The trademark might also be the subject of a private contract, which could be important in resolving an ownership dispute, Heilbronner said.

In February, Bibiji sued Golden Temple for trademark infringement in U.S. District Court in California. In court documents, she says that as a successor to her husband’s estate, she controls the trademarks used by or connected with her husband, while Golden Temple says that it owns the rights to Yogi trademarks. In June, the case was dismissed and referred to arbitration in Portland.

Neither party is sharing details about arbitration.

Bibiji alleges that as far back as 1969, Yogi Bhajan served his yoga students a spiced tea that he had developed, which the students called “Yogi Tea.” In the 1980s, a group of his students formed a company to sell the tea. Yogi Bhajan granted the company a license to use his name, likeness, and the trademark “Yogi Tea.”

That license was renewed for 75 years on Oct. 1, 2004, just five days before Yogi Bhajan died, according to court documents.

Half of the royalty payments from the licensing agreement were to go to Bibiji and half to a trust called “Staff Endowment” to benefit 15 female assistants who had served Yogi Bhajan for years.

“Yogi Tea was a mark that was associated with Yogi Bhajan,” the widow’s attorney, said. “He was the one who initially coined it. He’s the one who produced the product and served it to students at his classes. … He’s the one who created Yogi Tea.”

Golden Temple had been paying royalties for the right to use the Yogi Tea brand, Soni said.

However, in late 2008, Golden Temple terminated the license and stopped paying royalties, according to court documents. Bibiji alleges that the company continues to use the Yogi Tea name, even though it lacks the right to do so.

Golden Temple interprets the license more narrowly, to cover the use of Yogi Bhajan’s name and likeness, and argues that Golden Temple has rights to the marks based on years of use and federal trademark registrations, according to court documents.

Golden Temple is also defending its trademark rights against two California companies.

On August 6, 2009, Golden Temple sued Wai Lana Productions, a California company that sells chips and snack bars, alleging that Wai Lana uses marks that are “confusingly similar” to Yogi Tea marks.

Wai Lana is a yoga instructor whose TV series appears on many PBS stations, according to the Wai Lana website.

The site sells her yoga videos and accessories, as well as gluten-free snacks, including Yogi Chips and Yogi fruit and nut bars.

Golden Temple wants Wai Lana to stop using the Yogi marks, cancel its registration of any Yogi marks, recall and destroy all goods bearing these marks, and pay damages.

Wai Lana’s attorneys asked to have proceedings in U.S. District Court in Portland postponed, pending the outcome of the arbitration between Bibiji and Golden Temple. In early November, Judge Garr King postponed the proceedings.

“The arbitration is currently scheduled for January 2011, only two months from now, and it will settle the question of who owns the marks,” King wrote.

On Oct. 15, Golden Temple filed a lawsuit in U.S. District Court in California against another California company, YogiBotanicals, and its CEO, Ranbir Singh Bhai, the eldest son of Bibiji and Yogi Bhajan.

Bhai also happens to be the “Ranbir” who appeared as a guru in white turban and robes in the 1986 film, “Down and Out in Beverly Hills,” starring Bette Midler and Richard Dreyfuss, according to Soni, who said he represents Bhai and his mother.

The lawsuit alleges trademark infringement, unfair competition, breach of contract, and unjust enrichment.

Golden Temple wants YogiBotanicals to stop using the Yogi marks, abandon its registration of any Yogi marks, recall and destroy all goods bearing the marks, and pay damages.
Soni said the claims against YogiBotanicals “are really frivolous.”

“They’ve known about YogiBotanicals for years,” he said. “It was created with knowledge of Yogi Bhajan. It was created by Ranbir as his individual company. He’s been operating it for years.”

Golden Temple attorney Kenneth Davis characterizes the suit against YogiBotanicals, as well as the other two trademark cases, as “regular enforcement by Golden Temple of its trademark rights to protect its valuable brand.”

The lawsuit against Bhai also alleges that he was overpaid and should repay $208,509.93 in commissions while employed by Tagtraum Tee, which is now a German subsidiary of Golden Temple.

“That’s funny,” Soni said. “Golden Temple and Tagtraum both owe Ranbir a considerable amount of money.”

Bhai was a buyer, not a salesman, Soni said.

“He helped them identify and [find] the ingredients that they needed for their products,” such as ginger and cardamom, Soni said. “They were supposed to pay him and to buy a certain quantity. They didn’t do it.”

Bhai has not yet filed an answer to the complaint.

“We’ll wait for the answer and respond accordingly,” Davis, the Golden Temple attorney, said.

In addition to the trademark disputes, Golden Temple managers are also involved in two other lawsuits in Multnomah County Circuit Court — one filed by the community’s religious leaders and another by the Oregon Attorney General John Kroger — which accuse company managers of unjustly enriching themselves and allowing the businesses of the religious nonprofit group to fall into private, for-profit ownership. ♦