trademark 2 geographic

7/31/2019 Trademark 2 Geographic

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Introduction to Intellectual PropertyLaw & PolicyProfessor Wagner

Class 4

Trademark 2:Geographical Indicators and CertificationMarks


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Todays Agenda

Certification & CollectiveMarks

Geographic Indications


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1Certification &Collective Marks


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What is different about

certification & collective

marks?[does the same theory hold?]


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Certification Marks


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15 U.S.C. 1127

The term certification mark means any word, name,

symbol, or device, or any combination thereof

(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to

permit a person other than the owner to use in

commerce and files an application to register on

the principal register established by this chapter,

to certify regional or other origin, material, mode

of manufacture, quality, accuracy, or othercharacteristics of such persons goods or services

or that the work or labor on the goods or services

was performed by members of a union or other

organization.


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Collective Marks

How are thesedifferent from

certification marks?


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Collective Marks

Designate membership, not

source.Controlled by collective.

[ does it make sense to protect these marks

in the same way as ordinary marks? ]


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What kind of mark is this?

Certification mark?

Collective mark?

Trademark? (Service mark?)


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In general, certification and

collective marks are treatedlike ordinary marks.


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2Geographic Indicators


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An aside on

trademark registration.


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Why register your

trademark?(What are the advantages?)


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How do you register your mark?


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The registration system is costly.

Why should we have it?


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Consider the difference

between the principal andsupplemental register.


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What type of marks are

geographic indicators?Ordinary trademarks?

Certification marks?

Collective marks?


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In re Nantucket

Why forbid the registration of

some geographic indicators?

Consumer deception?

Reduction of competition?


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In re Nantucket

15 USC 1052(e)No trademark by which the goods of the applicant may be distinguished

from the goods of others shall be refused registration on the principal

register on account of its nature unless it(e) Consists of a mark which

(1) when used on or in connection with the goods of the applicant is merely

descriptive or deceptively misdescriptive of them,

(2) when used on or in connection with the goods of the applicant is

primarily geographically descriptive of them, except as indications ofregional origin may be registrable under section 1054 of this title,


primarily geographically deceptively misdescriptive of them,

(4) is primarily merely a surname, or

(5) comprises any matter that, as a whole, is functional.


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In re Nantucket

15 USC 1052(e)No trademark by which the goods of the applicant may be distinguished

from the goods of others shall be refused registration on the principal

register on account of its nature unless it(e) Consists of a mark which

(1) when used on or in connection with the goods of the applicant is merely

descriptive or deceptively misdescriptive of them,


primarily geographically descriptive of them, except as indications ofregional origin may be registrable under section 1054 of this title,


primarily geographically deceptively misdescriptive of them,

(4) is primarily merely a surname, or

(5) comprises any matter that, as a whole, is functional.


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In re Nantucket

Primarily geographically

descriptive

not registrable,

except by proof of secondary

meaning


misdescriptiveregistrable


deceptively misdescriptivenot registrable


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In re Nantucket


descriptive


misdescriptive


deceptively misdescriptive


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In re Nantucket


descriptive


misdescriptive


deceptively misdescriptive


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Considering the prohibition on

registering geographic marks,

does the idea of protectinggeographic indicators make

sense?


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In the U.S., geographically

descriptive

marks can be registered as

certification marks.

[ Why? Under what circumstances? ]


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The legal status of geographicindications is a hot

international trade issue.Why?


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The U.S. approach: treat GIs as aform of certification mark, use

standard trademark principles.

Internationally: more mixed approach.


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Are GIs:

An important method of enhancingconsumer welfare by reducing search

costs and encouraging high-quality

goods and services?An outmoded restraint on trade and

competition?


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Introduction to Intellectual PropertyLaw & PolicyProfessor Wagner

Next Class

Trademark 3:Domain Names

trademark 2 geographic

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