Trademarks > Exam Guide 1-06

Exam Guide 1-06

Geographical Indications Used on Wines and Spirits

Issued May 9, 2006

Introduction

The purpose of this exam guide is to clarify the circumstances under which an examining attorney must refuse to register a mark for wines or spirits that includes a geographical indication. This exam guide supersedes current TMEP §1210.08 .

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits the registration of a designation that includes "a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods.” ¹ The term “spirits” refers to any distilled alcoholic beverage ( e.g., gin, rum, vodka, whiskey, brandy). ² The procedures set forth below apply if the applicant's identification of goods 1) specifically includes wines or spirits, or 2) describes the goods using broad terms that could include wines or spirits ( e.g., alcoholic beverages).

The provision does not apply to geographical indications that the applicant first used on or in connection with wines or spirits prior to January 1, 1996, and does not apply to designations used on or in connection with beer. The provision also does not apply to goods that are not wines or spirits, but are partially composed of wines or spirits ( e.g., wine vinegar; wine sauces; wine jelly; rum balls; bourbon chicken).

Examination procedure when the goods do not originate in the named place

A designation is considered a geographical indication under §2(a) if it identifies the applicant's wines or spirits as originating in a territory known for a given quality, reputation, or other characteristic associated with wines or spirits. ³ A mark for wines or spirits that includes a geographical indication is unregistrable if 1) purchasers would erroneously believe the goods originate in the relevant geographic location; and 2) the quality, reputation, or characteristic associated with wines or spirits from that location would materially affect the purchaser's decision to buy the goods.

To establish a prima facie case for refusal to register a mark under the “wines and spirits” provision of §2(a), the following is required:

•  the primary significance of the relevant term or design is geographic, e.g., a place name, abbreviation, nickname, or symbol; or an outline or map of a geographic area ( see TMEP §1210.02(a) and §§ 1210.02(b) et seq .);

•  purchasers would be likely to think that the goods originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place association ( see TMEP §§1210.04 et seq .);

•  the goods do not originate in the place identified in the mark ( see TMEP §1210.03 );

•  a purchaser's erroneous belief as to the geographic origin of the goods would materially affect the purchaser's decision to buy the goods ( see TMEP §1210.05(b) et seq .); and

•  the mark was first used in commerce by the applicant on or after January 1, 1996.

Section 2(a) is an absolute bar to the registration of false geographical indications used on wines or spirits on either the Principal Register or the Supplemental Register. Neither a disclaimer of the geographic term or design nor a claim that it has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), can obviate a §2(a) refusal if the mark consists of or includes a geographical indication that identifies a place other than the true origin of the wines or spirits.

Requirement for first use on or after January 1, 1996

For all applications filed under § 1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), where the application fails to indicate the applicant's date of first use of the mark in commerce, the examining attorney should presume that the applicant's first use of the mark in commerce is or will be on or after January 1, 1996, unless the application record indicates otherwise.

If the examining attorney determines that a mark featuring a false geographical indication was in use prior to January 1, 1996, the examining attorney should refuse registration because the mark is primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, 15 U.S.C. §1053(e)(3), and deceptive under §2(a). See TMEP §§1210 et seq .

Examination procedure when a geographic term or design is generic for the goods

When a geographic term or design in the mark is generic for a type of wine or spirit, the examining attorney must refuse registration under §(2)(e)(1) on the Principal Register or §23 on the Supplemental Register, as appropriate, because the term or design is generic. See TMEP §1209.02 . Or, if appropriate, the examining attorney must require a disclaimer of the generic term or design. See TMEP §§1213 et seq.

A geographic term or design is considered generic if U.S. consumers view it as designating the genus of the goods, rather than as a geographic origin. See TMEP §1209.01(c) et seq. If a geographic term or design is used in connection with wines or spirits, the examining attorney may submit a search request to the Trademark Law Library to determine whether there is evidence indicating that the term or design is generic for the applicant's goods.

Examination procedure when the goods originate in the named place

If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under § 2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate. See TMEP §1210.01(a) and TMEP §1210.06(a) .

Sometimes a geographic term is used to certify the geographic origin of wines or spirits. If the proposed mark is used to certify the goods, the applicant may convert the application to one for a certification mark of regional origin under § 4 of the Trademark Act, 15 USC §1054. See TMEP §1306.06(g)(vi) . See also TMEP §1210.09 and TMEP §1306.02 et seq . for a discussion of geographic certification marks.

Comparison of refusals

The following chart highlights the differences between the refusals that may apply when a geographical indication used on or in connection with wines and spirits identifies a place other than the true origin of the goods:

Refusal	Marks it applies to	Standard	Options	Office action procedure
§2(a) “wines and spirits”	Marks first used in commerce on or after 1/1/96.	1) Primary significance is geographic; 2) the goods do not originate in the place; 3) purchasers would believe the goods come from the place; and 4) the origin of the goods would be a material factor in the purchasing decision.	Total bar to registration on Principal or Supplemental Register. Disclaimer is not an option.	If a §2(a) “wines and spirits” refusal is issued, then §2(a) deceptive and §2(e)(3) refusals are not necessary.
§2(a) deceptive	All marks.	Same as above.	Total bar to registration on Principal or Supplemental Register. Disclaimer is not an option.	If a §2(a) “wines and spirits” refusal is inapplicable because the mark was first used prior to 1/1/96 , then §2(a) deceptive and §2(e)(3) refusals may be issued, if applicable.
§2(e)(3) primarily geographically deceptively misdescriptive	All marks.	Same as above.	Total bar to registration, unless the applicant alleges use in commerce before 12/8/93 and amends to the Supplemental Register, or establishes that the mark acquired distinctiveness under §2(f) before 12/8/93.	Same as above. If the applicant has use in commerce before 12/8/93, and amends to the Supplemental Register, or establishes that the mark acquired distinctiveness before 12/8/93 , then the §2(e)(3) refusal will be withdrawn, but the §2(a) deceptive refusal will be continued. TMEP §1210.05(a) .
Generic	All marks.	Mark designates a genus of wines or spirits rather than geographic origin.	Total bar to registration on Principal or Supplemental Register. Disclaimer may be an option.	Refusal of registration on the Principal Register under §2(e)(1), or on the Supplemental Register under §23, or requirement for disclaimer, if appropriate.

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¹ The provision regarding geographical indications used on wines and spirits was added by the Uruguay Round Agreements Act, implementing the Trade Related Intellectual Property ("TRIP S ") portions of the General Agreement on Tariffs and Trade ("GATT") . Article 23 of the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) prohibits the registration of geographic al indications for wines or spirits that identify a place that is not the origin of the goods.

² This is the ordinary dictionary meaning of the term . Neither the Trademark Act nor the TRIP S Agreement define the term “spirits.”

³ In implementing the TRIPS Agreement through the Uruguay Round Agreements Act (“URAA”), Pub. L. 103-465, 103 Stat. 4809 , Congress approved a Statement of Administrative Action (“SAA”) that provided, in part:

“Geographical indications” are defined in TRIP S Article 22.1 as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” The Administration expects that this definition will be applied in the context of trademark registration and that a “geographical indication” as used in this provision will be interpreted to comprise only those areas which have a reputation for being associated with the specific goods at issue. Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration (emphasis added).

Statement of Administrative Action, Agreement on Trade-Related Aspects of Intellectual Property Rights, H. Doc. 103-316, Vol. 1, at 1000, §B.1.e, (Sept. 27, 1994). 19 U.S.C. §§3511(a)(2) and 3512(d).

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