the u.s. geographical indications system: building gi brands office of international relations...
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The U.S. Geographical Indications System: Building GI Brands
Office Of International RelationsUnited States Patent and Trademark Office
Tel: (571) 272-9300
What are Trademarks?
• Words, designs, numbers, letters, colors, three-dimensional forms, sounds, scents, etc.
• APPLE, XEROX, IDAHO, FLORIDA, 311, the color pink, shape of a Coke bottle…
• Trademark laws protect the commercial investment by the trademark owner to associate sign with goods/services in the minds of consumers.
What are Geographical Indications (GIs)?
• Indications that “identify a good as originating in the territory of a WTO Member where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”
• GIs are intellectual property.• Therefore, a geographic term is merely a place name
and not intellectual property until it is used to identify a good or service with certain characteristics (including origin) rather than merely the place where the goods or services originate, and consumers use that sign as material information when making purchasing decisions.
Trademarks and Geographical Indications
Geographical indications and trademarks serve the same functions:
source-identifiers quality guaranteesbusiness interests
…so the United States protects them under the same system – the trademark system – as trademarks, certification marks, or collective marks.
Trademark System Provides Maximum Flexibility and Maximum Protection for GIs
Common Law Protection: Rights accrue as soon as the GI is used in commerce on goods or services
Federal Registration: provides additional benefits such an evidentiary presumption of ownership, validity, and right to use, border enforcement, right to use ® for notice, and registration can be used as a basis for obtaining registration in foreign countries.
““COGNAC” common-law certification mark COGNAC” common-law certification mark
Institut National Des Appellations v. Institut National Des Appellations v. Brown-Forman CorpBrown-Forman Corp, 47 USPQ2d 1875, , 47 USPQ2d 1875, (TTAB 1998)(TTAB 1998)
U.S. Reg. No. 0987576
SOLINGEN cutlery
What do we call GIs in the US?
Flexible US system gives you several options:
1) Trademarks - under certain conditions
2) Certification Marks - certifier sets standards that users must meet
3) Collective Marks – used by members of a collective
U.S. Trademark Reg. No. 1266492
U.S. Certification Mark Reg. No. 1414598
“JAMAICA BLUE MOUNTAIN”
U.S. Collective Mark U.S. Collective Mark
Reg. No. 0889138Reg. No. 0889138
Black Rooster designBlack Rooster design
GIs as Trademarks
Geographic designations can be registered as trademarks under certain conditions:
1) not generic;2) extensive use in commerce on specific goods/services; and/or3) obscure or remote place that consumers don’t recognize or
believe produces those goods
Trademark protection provides the flexibility for all kinds of indications of geographic origin to be protected.
US Trademark Reg. No. 0533033“TILLAMOOK” cheese
U.S. Trademark Reg. No. 0178829 (1924)
U.S. Trademark Reg. No. 1527146
GIs as Certification Marks
A certification mark is a type of trademark that can certify:• geographic origin (geographic place names can be
registered without extensive use, unlike with trademarks);
• materials used, quality, method of manufacture, and accuracy; or
• products made under the auspices of, or by members of a specific trade union or organization.
Certification mark can be cancelled if the owner discriminately refuses to certify goods/services.
U.S. Reg. No. 2448047U.S. Reg. No. 2853642
Collective Marks
• A collective mark indicates commercial origin of goods or services in members of a group rather than origin in one party.
• Geographic terms cannot be registered as collective marks without extensive use in commerce, but other geographical indications can be (e.g., outline of a region or landmark, a fanciful name, or name of the collective).
U.S. Collective Mark Reg. No. 1097779 Frankfurter Äpfelwein
U.S. Collective U.S. Collective Mark Reg. No. Mark Reg. No. 0889138 Black 0889138 Black Rooster designRooster design
Opposition and Cancellation
Available to anyone:
1) domestic or foreign,
2) who would be damaged by the registration, or the continued existence of a U.S. registration.
• Opposition is used to prevent the issuance of a registration of a mark. Cancellation is used to cancel an existing registration of a mark.
• Trademark Trial and Appeal Board (“TTAB” or “Board”), of the U.S. Patent and Trademark Office (USPTO).
Examples of U.S. GIs Protected In the United States
Florida Citrus
• Owned by the State of Florida’s Department of Citrus U.S. Reg. No. 1559414
• “The mark certifies that the goods bearing the mark either consist of citrus fruit grown in the State of Florida, under specified standards, or are processed or manufactured wholly from such citrus fruit.”
Examples of U.S. GIs Protected In the United States
Vidalia
• VIDALIA for onions • Owned by the State of Georgia’s Department of
Agriculture U.S. Reg. No. 1709019 • “The certification mark is intended to be used by persons
authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia onion act of 1986.”
Examples of U.S. GIs Protected In the United States
Napa Valley
• Owned by the Napa Valley Reserve Certification Board U.S. Reg No. 2853642
• “The certification mark, as used by persons duly authorized by Certifier, certifies that the goods meet the Certifier's production specifications and emanate from a specific geographic region, namely, the Napa Valley American Viticultural Area located in California.”
Examples of U.S. GIs Protected In the United States
Idaho
• IDAHO for potatoes• Owned by the State of Idaho Potato Commission U.S. Reg
No. 2914308• “The Certification mark, as used by authorized persons,
certifies that goods identified by the mark are grown in Idaho and that the goods conform to quality, grade and other requirements, pursuant to standards designated by the Applicant.”
• Owned by Comite Interprofesionnel du Gruyere de Comte U.S. Reg. Nos. 1473687
• “The certification mark is used by persons authorized by the certifier to certify that the goods come from the Comté division (an administrative division of France); that the goods are only made from milk that comes only from the Montbeliarde breed of dairy cattle, which are fed fresh grass or dry hay; and that the cheese meets the hygiene, production methods or standards and appearance methods or standards of the certifier.”
Foreign GIs Protected In the United States
COMTÉ
Examples of Foreign GIs Protected In the United States
Prosciutto Di Parma
• Owned by Consorzio Del Prosciutto Di Parma Association U.S. Regs. Nos. 2014629; 2014628; 2014627
• “The certification mark is used by persons authorized by the certifier to certify the regional origin of the product to which the mark is applied.”
• “Parma Ham” is also registered in English—U.S. Reg. No. 2014628.
Examples of Foreign GIs Protected In the U.S.
Vino Nobile Di Montepulciano
• Owned by the Consorzio del Vino Nobile di Montepulciano; U.S. Reg. No. 2251165.
• “The certification trademark, as used by persons duly authorized by Certifier, certifies the region or origin of the goods as emanating from a specific geographic region, namely, Montepulciano, a region in Italy.”
Examples of Foreign GIs Protected In the U.S.
Darjeeling
• Owned by Tea Board of India U.S. Reg. No. 2,685,923
• Word Mark (Word “DARJEELING” protected)
• “As used by authorized persons, certifies that the tea contains at least 100% tea originating in the Darjeeling region of India and that the blend meets other specifications established by the certifier.”
Examples of Foreign GIs Protected In the United States
Roquefort
• Owned by the Community of Roquefort U.S. Reg. No. 571,798 (Registered March 10, 1953)
• “The certification mark is used upon the goods to indicate that the same has been manufactured from sheep’s milk only, and has been cured in the natural caves of the Community of Roquefort, Department of Aveyron, France.”
Examples of Foreign GIs Protected In the United States –
Collective Marks
• The protected mark is the design incorporating the Black Rooster with the words “Chianti Classico Consorzio Vino ChiantiClassico”;
• Owned by the Consorzio Vino Chianti Classico Association;
• U.S. Reg. No. 0889138
Examples of Foreign GIs Protected In the United States
Collective Marks
• “Frankfurter Apfelwein”; Owned by Verband Der Deutschen Fruchtwein-Und Schaumwein-Industrie E.V.; U.S. Reg. No. 1097779; “The mark certifies origin in the city of Frankfurt in the Federal Republic of Germany.”
Exporting U.S. GIs
• Register TMs and GIs in your export markets!
• But tread carefully: there is currently no international consensus on how to protect GIs at the national level.
No International Consensus
• Conflicts between GIs and trademarks: Budvar v. Budweiser
• Scope of Protection: misleading use or confusing use?
• Eligible Subject Matter: country names, fanciful terms, logos?
• Generic Terms: champagne?• Territoriality
• Protection through the Trademark System answers all of those questions!
International Controversy:Agriculture Interest or Intellectual Property?
• WTO Talks on GIs: AG Committee and TRIPS Council
• EU CAP Reform Subsidy Shift
WTO Proposals
• Extension of TRIPS Article 23 beyond wines and spirits
• International Register of GIs, universal, mandatory effect
• Claw-back of Generic Terms
USG Efforts
• Education of U.S. businesses
• Outreach to foreign governments
• Free trade agreement negotiations
• Proposal for Multilateral System Database
Thanks for your attention!For more information, contact:
Amy Cotton
Office of International Relations
United States Patent and Trademark Office
571 272-9300
www.uspto.gov
To file an application online, go to: http://teas.uspto.gov/