Geographical Indications - Basics
- 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.
- 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.
- 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.
- 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.
- What protection do GIs get in the United States?
As for the protection given to GIs in the United States, U.S. law provides that the trademark (GI) owner has the exclusive right to prevent confusing uses of the mark by unauthorized third parties. See 15 USC 1114 and 1125 [PDF].
- When I applied for a trademark registration with the USPTO for a geographic term, my application was refused as geographically descriptive. How can I get protection if I cannot even register the geographic term?
Under U.S. trademark law, geographic terms or signs are not registrable as trademarks if they are geographically descriptive or geographically misdescriptive of where the goods/services originate. The theory is that other producers in that area would need to be able to use a geographic term to describe where their goods/services are from and that one person should not be able to prevent others from using that term. If a term is misdescriptive for the goods/services, consumers would be mislead and/or deceived by the use of the term on goods/services that do not come from the place identified.
However, a geographical indication, as defined in TRIPS, identifies a good, not merely a geographic area. If a geographic term is used in such a way as to identify the source of the goods/services and, over time, consumers start to recognize it as identifying a particular company or manufacturer or group of producers, the geographic term no longer describes only where the goods/services come from, it also describes the "source" of the goods/services. We say that the term has "secondary meaning" or "acquired distinctiveness." The primary meaning to consumers is the geographic place, whereas the secondary meaning to consumers is the producing or manufacturing source. If a descriptive term has "secondary meaning" to consumers, the term has a source-identifying capacity and is protectable as a trademark. Because of this feature of U.S. trademark law, geographical terms or signs can also be protected as trademarks or collective marks.
Geographical terms can also be protected as certification marks. A geographical term may be used, either alone or as a portion of a composite mark, to certify that the goods/services originate in the particular geographical region identified by the term. The U.S. Trademark Act excepts indications of regional origin from the prohibition against registration of names that are primarily geographically descriptive. Therefore, a geographical name may be registered as a certification mark even though it may otherwise be primarily geographically descriptive and hence unregistrable as a trademark in the absence of secondary meaning.
For more information about how the USPTO handles applications for collective marks and certification marks, consult the Trademark Manual of Examining Procedure (TMEP) Chapter 1300.
- Does the United States have any GIs?
Yes. The United States has many valuable geographical indications that have been in use in the United States for decades. Names like IDAHO POTATOES, or FLORIDA ORANGES, or VIDALIA ONIONS, or NAPA VALLEY WINES, or WASHINGTON STATE APPLES have been used in the United States and are protected under U.S. trademark laws against unfair competition and trademark infringement, whether or not they are registered with the USPTO. Moreover, many foreign GIs are protected in the United States via the geographical indication certification mark system. Examples include:
- BRUNELLO DI MONTALCINO (U.S. Reg. No. 1,860,163) - Italy
- COGNAC (Common-law, unregistered geographical indication certification) - France
- LIEBFRAUMILCH (U.S. Reg. No. 1,008,251) - Germany
- MOSEL (U.S. Reg. No. 1,008,252) - Germany
- VINO NOBILE DI MONTEPULCIAN O (U.S. Reg. No. 2,251,165) - Italy
- DARJEELING (U.S. Reg. No. 2,685,923) - India
- JAMAICA BLUE MOUNTAIN COFFE E (U.S. Reg. No. 1,414,598) - Jamaica
Anyone can view these entries in the USPTO Trademark Electronic Search System (TESS) then search using the registration numbers or marks themselves.
While registration is not necessary to establish rights in the United States, owning a federal trademark registration on the Principal Register provides several advantages:
- Constructive notice to the public of the registrant's claim of ownership of the mark;
- A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
- The ability to bring an action concerning the mark in federal court;
- The use of the U.S registration as a basis to obtain registration in foreign countries; and
- The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
- Are GIs just place names?
A GI can be a geographic place name (e.g., "Napa Valley") but it may also be a symbol (e.g., a picture of the Eiffel Tower, the Statue of Liberty, an orange tree), or the outline of a geographic area (e.g., the outline of the state of Florida or a map of the Dominican Republic), or a color, or anything else capable of identifying the source of a good or service.
- What are Geographical Indications?
The term "geographical indication" (or "GI") comes from the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) . The TRIPS Agreement sets forth standards to regulate international intellectual property protection and enforcement and establishes international minimum standards for the protection of geographical indications.
Geographical indications are defined 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 geographic origin."
This means that a GI is a sign used to indicate the regional origin of particular goods/services and that there must be a link between some characteristic of the good and the particular region where it was produced. For example, the Florida Sunshine Tree is a symbol known to consumers that links citrus products featuring the Sunshine Tree to Florida where the distinctive-tasting citrus is grown.
- 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.
- Can 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.
- 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.
Geographical Indications - General
- 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.
- 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.
- If someone registers a GI as a certification mark and I meet the standards, can I use the GI on my goods/services?
Yes, if the certification mark owner certifies your goods/services as meeting the standards. If your goods/services meet the standards but are not certified by the owner, you cannot use the term. The owner must be able to control the use of the term on the goods/services. If the owner cannot do that or does not do that, the mark is subject to cancellation. If the owner discriminates against a producer who actually meets the standards, the mark is also subject to cancellation.
USPTO requires the certification mark applicant to submit a copy of the certification standards and retains those as part of the official record. USPTO examines all applications for certification marks. The accompanying specimens of use and evidence in the record are reviewed to determine whether the geographical term is being used as a certification mark to indicate the geographical origin of the goods/services upon which it is used.
With certification marks, the ability of the certification mark owner to "exercise legitimate control" over the use of the term by others is a critical issue. Often, a government or municipality is in the best position to control the use of a term by a group of producers. But a private association or agricultural collective is also in a good position to control the use of the term by producers. Either entity, a government or a private association, is acting as a private rightholder as the owner of the GI, a private right. In that way, the U.S. GI regime is consistent with the TRIPS Agreement, which says that intellectual property rights are "private rights."
USPTO's opposition and cancellation system allows interested third parties to object to an application or registration before the USPTO's Trademark Trial and Appeal Board (TTAB) to ensure that the certification standards are being met.
For further inquiries, please contact Amy Cotton of the USPTO's Office of International Relations (External Affairs) at (571) 272-8467.
- If someone registers the name of my town as a GI, can I still use it to describe where my goods/services come from?
If someone registers the name of a place as a trademark, certification or collective mark for a particular good or service, that registration does not necessarily prevent anyone else from using the term on unrelated goods/services provided the U.S. consuming public is not likely to be confused as to the source of the goods/services. A trademark, certification mark or collective mark is not a monopoly right. The property right (the right to exclude others from using it and confusing the public) exists for these marks only in relation to a specific set of goods/services. The right extends to similar, related, or even unrelated goods/services depending on the specific factors of each case. A very well-known mark will have a wider scope of protection against infringing uses than a mark that is not known very well at all; the test is whether the average U.S. consumer would likely be confused as to the source of the goods/services between the two uses of the mark.
Moreover, a trademark, certification mark or collective mark registration does not necessarily prevent someone from using the term to fairly describe where their goods/service originate when their goods/services are the same as those identified in the registration. Such use may be considered a fair use of descriptive terms. Fair use, as it is recognized in the United States, is a defense to a claim of trademark infringement. This concept developed very early on in U.S. jurisprudence as courts recognized that trademark law should not be able to take words entirely out of the public domain.
However, to qualify for the fair use defense, use of a term must be purely descriptive and to determine if the use is purely descriptive, there must be an evaluation of how the term is used in the marketplace. If the term is used in a way that can be confusing to the public as to the source of the goods/services, then the use is not really "fair" and the mark owner could take a trademark infringement action against the use.
- Should I start using the name of my town or county to market my goods/services?
Just as you carefully choose (with the assistance of legal counsel in most cases) a trademark to use on your goods/services, you should also carefully consider the value of using a geographic term on your products to distinguish them from the same or similar products being manufactured elsewhere. If you believe that consumers would be interested in buying your products because they come from a particular area, you may very well benefit from using a geographic term to identify your goods/services. You may wish to consult with an experienced intellectual property attorney to determine the feasibility of using a geographic term and the potential pitfalls to avoid, including conflicts with any pre-existing rights of others in that term.
Geographical indications are becoming increasingly important, as they are key features on many agricultural and food product labels and are valuable assets that play an integral role in promoting trade and consumer interests. Like trademarks, GIs are valuable marketing tools, where a company's/producer's good-will and reputation are linked to its products. U.S. businesses and producers should be aware of the value of these marketing tools and should look into the avenues of protecting these business interests from infringement by others.
- Does the USPTO have a GI register or a list of GIs?
The United States Patent and Trademark Office (USPTO) does not have a special register for GIs in the United States. The United States has protected marks that are geographical indications through the trademark system for decades, long before the term "geographical indications" came into use in 1995 with the negotiation of the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Our trademark register contains GIs registered as trademarks, certification marks and collective marks and these are not designated with any special field as "geographical indications." Because of the flexible protection offered through U.S. trademark law for all marks, including those that meet the WTO TRIPS definition of a "geographical indication," USPTO does not identify marks as GIs and does not examine marks on that basis. USPTO does examine whether the mark functions as a source identifier to the United States consuming public, the same analysis as for a trademark.
- When I see MADE IN CHINA on a t-shirt, is that a GI?
Probably not, but it really depends. For an indication to function as a GI, there must be a link between some characteristic of the good and the particular region where it was produced. That link must inform consumers of some important characteristic of the product that is material in their decision to purchase the good.
Not every indication can rise to the level of a GI. In other words, a geographic name itself is not a GI. In order for a geographic name to function as a GI, it must indicate more than just origin; it must communicate that the product from this region has a particular quality or has a particular reputation. The source-indicating capacity of a GI is key, and highlights the distinction between a GI and a mere geographic term that does not function as source-identifier.