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Top 10 Misperceptions About Geographic Certification Marks

I don’t need to register my certification mark because labeling regulations ‘protect’ against inaccurate use of geographic terms.

Geographic certification marks are private intellectual property rights and therefore their owners deserve a level of protection for these marks against infringement and unfair competition that is not available through misleading advertising laws or labeling regulations. In most cases, government agencies charged with investigating misleading labeling claims are not looking for whether the unauthorized use of the term is infringement, but merely whether the consumer is misled by the information on the label. In many cases, this means that unauthorized users can overcome a claim of misleading advertising by merely putting dispelling information on the label, including the country of actual manufacture or a notice that “this product is not affiliated with X.” While such a practice may overcome misleading advertising claims, the unauthorized use still has the effect of diminishing the value of the geographic certification mark and its ability to identify the source of the goods or its certified characteristics to consumers. This is the value that intellectual property laws protect, and thus, dispelling information will not overcome a claim of infringement when the consumers are likely to be confused as to existence of some link between the owner and unauthorized parties using the mark.

Moreover, registration at the United States Patent and Trademark Office (USPTO) of a certification mark entitles the owner to use the federal registration symbol ® whenever the mark is used, thereby providing clear notice to the public and to competitors regarding the exclusive claim to the mark by the owner. Also, a USPTO registration allows the owner to record the registration with U.S. Customs and Border Protection which will block infringing imports.

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Anyone meeting the standards can use the mark.

Yes and no. Yes, if a producer meets the standards, the certification mark owner cannot discriminately refuse to certify the producer’s goods. This provides fairness in the system so that the owner cannot favor some producers over others and everyone in the region can benefit from the use of the mark. However, just because you think you meet the standards as they appear in the registration certificate on the USPTO Web site does not mean you can use the mark. Your goods have to go through the owner’s certification process in order to get permission to use the mark. This is analogous to a licensing situation, depending on how the certifier has set up the certification process.

The owner/certifier has an affirmative duty to monitor the use of the mark and to verify that the goods meet the standards for use of the mark.

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There is no fee for use of the certification mark as long as it’s accurate.

While some may believe geographic certification marks are public rights since they are geographic terms, in actuality, they are private rights held by those who invest in their use on quality goods that consumers desire. Those who invest in the management of certification marks need to cover their costs for the certification program in order to have any incentive to continue the program. The certification mark owner does not sell the goods so he/she is not making money on the actual goods. In order to continue offering the valuable service of certification to the producers in a region, thereby adding value to the goods produced in the eyes of consumers, the owner, even a government entity, must be permitted to recoup that financial investment. For that reason, it would be unlikely that there is no certification fee charged. However, if the costs of certification are inordinately high, there is an argument to be made that the fees are discriminatory against the smaller producers in a region. The owner cannot discriminate against certain producers if they can meet the standards.

That being said, a certification mark program is a partnership between the certifier/owner and the producers. The certifier has a duty to be fair to the producers; the producers want to continue to use the mark and add value to their goods based on the meaningful “signals” that the mark sends to the consumer while making purchasing decisions. The producers could charge the owner with discrimination (along with several other grounds upon which a certification mark can be cancelled), in order to gain “power” in the partnership, but if the mark is cancelled in a power play, then the certification program falls apart and no one can use the mark in a controlled, meaningful way.

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Certification marks only protect against use on the same goods.

Not necessarily. Just like a trademark, certification marks that are strong and properly controlled can get protection against use on related goods and even unrelated goods if there is a likelihood of confusion as to source. If the geographic certification mark is a term that is used on a variety of goods by a variety of producers, then the owner’s ability to claim infringement by use of the mark on related or unrelated goods will be diminished. If the term is tightly controlled and successfully marketed, the mark will gain strength in the minds of consumers. The stronger the mark, the wider the scope of protection that the mark will have on related or even unrelated goods as consumers will likely be confused as to the affiliation of the goods with the certification program.

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Geographic certification marks should include a generic term or a logo or other wording to indicate what is being certified.

No. It is USPTO’s experience that the stronger registrations contain only the term at issue. With other wording or design elements in the mark, it is harder to identify the “dominant” portion of the mark – the term that is “exclusive” to the certified users. Evaluating the dominant term in a mark against the term(s) used in the alleged infringing mark is the operative analysis when determining whether a use is likely to confuse the consumer or not.

With additional wording like “100%” or the generic term “coffee” preceding or following the geographic term, interested third parties may believe that it is not infringement of that mark (with the extra wording) if they only use the geographic reference, rather than the entire mark with the extra terms. So when the mark (used with the ®) consists of only the geographic term, there is no additional matter to cause confusion as to what term is being claimed as exclusive to the certifier and its certified users.

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Certified parties can register marks containing the registered certification mark since the use is ‘accurate.’

No. USPTO policy precludes the approval of subsequent applications for the same goods for marks that contain a registered certification mark without the certification mark owner’s consent. Once registered, these geographic certification marks are private property rights – they are no longer just descriptive terms. As such, the owner has the duty to control the use of the term by certified parties so as to preserve the ability of the mark to signify goods meeting certain quality standards or possessing other characteristics.

If a certification mark owner allows its certified parties to register their “house” marks along with the certification mark, that is at the certification mark owner’s discretion. But USPTO policy forbids registration of those marks without the owner’s consent. And owners should consider carefully whether they want to give that consent to registration. If a certified producer with a registered mark containing the geographic certification mark fails to meet the standards for use of the certification mark, the certifier/owner will have to petition to cancel the registration owned by that producer, an added expense that could have been avoided by withholding consent to register.

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Geographic certification marks do not protect against use with “blend”, “type”, or “style.”

Wrong. A geographic certification mark, if properly controlled down the distribution chain, can provide grounds to foreclose use of the term with “blend”, “type” or “style.” Competitor use of the certification mark with “blend”, “type” or “style” suggests that the competitors are unaware of the certification mark owner’s claim of exclusive rights to the certification mark. This lack of awareness or understanding could be caused by 1) a registration that contains additional non-geographic matter in the mark, so that is it unclear that the geographic term is the dominant element in the mark and is therefore by itself actionable as to infringing uses; 2) the lack of a certification process with certification agreements spelling out how the mark may and may not be used by the certified parties; or 3) bad faith. The first two reasons can be addressed by increased communications with certified parties and tighter controls over the use of the mark. The last one may be addressed by cease and desist letters, threats of litigation, and, if necessary, legal action.

Generally speaking, it is not a failure of the trademark laws or the trademark system in addressing these infringing uses (uses of the certification mark with “blend”, “type” or “style” likely would in fact be infringing uses under U.S. trademark law), but is most likely a failure of the owner to properly set up the certification mark system and police and enforce the use of the mark by the certified producers or unauthorized producers.

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European-style Geographical Indications (GIs) are ‘better’ than certification marks.

If by “better,” you mean there is wider protection against any evocation of the mark (potentially even against comparative advertising, potentially a conflict with U.S. First Amendment case law) and government enforcement (paid for by the European taxpayer), then yes, Europe offers that. However, after nearly 15 years of a GI system in Europe, there are perhaps 3 foreign GIs protected there. Why is that? There is little incentive for a European taxpayer to accept financial responsibility for the protection of foreign private property rights that are being used by European industry. And since the enforcement is left up to the Member States, it is difficult to see how effective it would be for foreign GI holders to rely on purely ex officio enforcement efforts, without having to pay for civil litigation. Presumably, if you get what you pay for and GI protection in Europe is “free”, then you are likely not going to get very much protection or enforcement without paying for it yourself in the courts.

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The owner can move production to another place and still use the original geographic reference.

This is not true for either geographic certification mark or geographic trademarks. If a consumer cares that goods come from a particular place, they are going be deceived by use of the term on goods that don’t come from the place identified in the mark, regardless of the type of mark. Deceptive trademarks are invalid trademarks and can be cancelled by interested third parties or even consumers that are affected

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If a geographic term is protected in the country of origin, it cannot be considered ‘generic’ anywhere else.

Wrong. Whether a term is considered generic in a territory depends on the nature of consumer perception in that territory about the term. If consumers know the term, not as a geographic reference but as a category of goods that could come from anywhere, the term is generic in that territory and is freely available for use by anyone. Generally, a term becomes generic when it is not properly controlled by the owner, whether foreign or domestic, and it loses its ability to identify a particular place known for particular goods with particular characteristics. The issue of "generic" is entirely separate from whether or not a term is protected in the country of origin. If there is no investment to commercialize and control use of a particular geographic reference in a particular market by the foreign owners/producers, then there is no investment for the particular market to protect from usurpation by others.

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Last Modified: 7/4/2009 4:28:30 PM