United States Patent and Trademark Office OG Notices: 06 June 2006
Exam Guide 2-06 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 Sec. 1210.08. Section 2(a) of the Trademark Act, 15 U.S.C. Sec. 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 Sec. 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 Sec. 2(a), the following is required: (1) 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 Sec. 1210.02(a) and Sec. Sec. 1210.02(b) et seq.); (2) 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 Sec. Sec. 1210.04 et seq.); (3) the goods do not originate in the place identified in the mark (see TMEP Sec. 1210.03); (4) 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 Sec. 1210.05(b) et seq.); and (5) 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 Sec. 2(f) of the Trademark Act, 15 U.S.C. Sec. 1052(f), can obviate a Sec. 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 Sec. 1(b), Sec. 44, or Sec. 66(a) of the Trademark Act, 15 U.S.C. Sec. 1051(b), Sec. 1126, or Sec. 1141f(a), or for applications filed under Sec. 1(a) of the Trademark Act, 15 U.S.C. Sec. 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 Sec. 2(e)(3) of the Trademark Act, 15 U.S.C. Sec. 1053(e)(3), and deceptive under Sec. 2(a). See TMEP Sec. Sec. 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 Sec. (2)(e)(1) on the Principal Register or Sec. 23 on the Supplemental Register, as appropriate, because the term or design is generic. See TMEP Sec. 1209.02. Or, if appropriate, the examining attorney must require a disclaimer of the generic term or design. See TMEP Sec. Sec. 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 Sec. 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 Sec. 2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate. See TMEP Sec. 1210.01(a) and TMEP Sec. 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 Sec. 4 of the Trademark Act, 15 USC Sec. 1054. See TMEP Sec. 1306.06(g)(vi). See also TMEP Sec. 1210.09 and TMEP Sec. 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 Standard Options Office action applies to procedure Sec. 2(a) Marks first 1) Primary Total bar to If a Sec.2(a) "wines and used in significance registration "wines and spirits" commerce is geographic; on Principal spirits" on or after 2) the goods do or Supplemen- refusal is 1/1/96. not originate tal Register. issued, then in the place; Disclaimer Sec. 2(a) 3) purchasers is not an deceptive and would believe option. Sec. 2(e)(3) the goods come refusals are from the place; not necessary. and 4) the origin of the goods would be a material factor in the purchasing decision. Sec. 2(a) All marks. Same as above. Total bar to If a Sec. 2(a) deceptive registration "wines and on Principal spirits" or Supplemen- refusal is tal Register. inapplicable Disclaimer because the is not an mark was first option. used prior to 1/1/96, then Sec. 2(a) deceptive and Sec. 2(e)(3) refusals may be issued, if applicable. 2(e)(3) All marks. Same as above. Total bar to Same as above. primarily registration, If the geographically unless the applicant deceptively applicant has use in misdescriptive alleges use commerce in commerce before before 12/8/93, and 12/8/93 amends to the and amends Supplemental to the Supp- Register, or lemental Reg- establishes ister, or that the establishes mark acquired that the mark distinctive- acquired dis- ness before tinctiveness 12/8/93, then under Sec. the Sec. 2(f) before 2(e)(3) 12/8/93. refusal will be withdrawn, but the Sec. 2(a) deceptive refusal will be continued. TMEP Sec. 1210.05(a). Generic All marks. Mark designates Total bar to Refusal of a genus of registration registration wines or on Principal on the spirits rather or Supple- Principal than geographic mental Register under origin. Register. Sec. 2(e)(1), Disclaimer or on the may be an Supplemental option. Register under Sec. 23, or requirement for dis- claimer, if appropriate. 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 ("TRIPS") 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 geographical indications for wines or spirits that identify a place that is not the origins of the goods. 2 This is the ordinary dictionary meaning of the term. Neither the Trademark Act nor the TRIPS 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 TRIPS 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, Sec. B.1.e, (Sept. 27, 1994). 19 U.S.C. Sec. Sec. 3511(a)(2) and 3512(d).