u s treatment ofu.s. treatment of geographical indications · not santa rita standing alone; thus,...

U S Treatment ofU.S. Treatment of Geographical Indications

J. Scott GerienJ. Scott GerienDickenson, Peatman & Fogarty

809 Coombs StreetN C lif i 94559Napa, California 94559

(707) 261-7058sgerien@dpf law [email protected]

Protecting GIs in U SProtecting GIs in U.S.USPTO

Geographical Certification MarksCollective MarksCollective Marks

TTB (Alcohol & Tobacco Tax & Trade Bureau)Appellations of Origin for WineAppellations of Origin for Wine

Geographical Certification MarksGeographical Certification Marks


Owner of mark certifies goods as toOwner of mark certifies goods as to geographical origin and possibly other

i trequirements


Owner cannot itself use the mark, usually owned by regional tradeusually owned by regional trade associations

All parties who qualify must be allowedAll parties who qualify must be allowed to apply for certification

Geographical Certification MarksGeographical Certification MarksWISCONSIN CHEESE and DesignWISCONSIN CHEESE and Design certification mark certifies that the cheese is 100% cow’s milk natural cheese produced100% cow s milk natural cheese produced in the state of Wisconsin or processed cheese made exclusively with cow’s milkcheese made exclusively with cow s milk natural cheese produced in the state of Wisconsin.Wisconsin.

Owned by Wisconsin Milk Marketing BoardOwned by Wisconsin Milk Marketing Board


The geographical term is not required to be disclaimed

The geographical certification mark givesThe geographical certification mark gives the owner exclusive control of the geographical term on the goodsgeographical term on the goods

N f i d f f f t tNo fair use defense for use of term as part of trademark

DARJEELINGDARJEELING NOUVEAU


Tea Board of India v. Republic of Tea, 80 USPQ2d 1881 (TTAB 2006)80 USPQ2d 1881 (TTAB 2006)

Analysis is likelihood of confusion

Mark DARJEELING is distinctive


Tea Board of India v. Republic of Tea, 80 USPQ2d 1881 (TTAB 2006)80 USPQ2d 1881 (TTAB 2006)

Applicant could not simply disclaim “Darjeeling” or limit its goods to 100% j g gDarjeeling tea


Tea Board of India v Republic of TeaTea Board of India v. Republic of Tea, 80 USPQ2d 1881 (TTAB 2006)

Could not make a product with aCould not make a product with a particular brand and then use that b d i t d kbrand name in your own trademark, e.g., MIREIA’S CHOCOVIC cookies

G hi l C tifi ti M kGeographical Certification MarksT B d f I di R bli f TTea Board of India v. Republic of Tea,

80 USPQ2d 1881 (TTAB 2006)Similarly, cannot make a product with goods from a particular protectedgoods from a particular protected geographic area and use the geographical certification mark forgeographical certification mark for such area as part of a brand, i.e., DARJEELING NOUVEAU tea

Geographical Certification MarksGeographical Certification MarksGeographical Certification Marks canGeographical Certification Marks can also be recognized under common law need not be registeredlaw, need not be registered

Institut Nat’l des Appellations d’Origine v Brown Forman Corp 47 USPQ2dv. Brown Forman Corp., 47 USPQ2d 1875 (TTAB 1998)

Geographical Collective MarksGeographical Collective Marks

Owned by an association for use by association members on productsassociation members on products produced by members approved by the associationthe association

Association promotes, but does not use the mark on goodsuse the mark on goods

Geographical Collective MarksGeographical Collective Marks

Geographical Collective MarkGeographical Collective Mark

Geographical Collective MarksGeographical Collective MarksUnlike certification marks, must disclaim ,geographic term

More of a marketing device

G hi l C ll ti M kGeographical Collective Marks

Infringement of RegisteredInfringement of Registered Geographical Certification Marks

Lanham Act Section 32(1) (15 USC § 1114(a)) i li bilit fimposes liability for:

Infringement of a registered mark upon anyInfringement of a registered mark upon any person who uses an infringing mark in interstate commerce in connection with the sale or advertising gof goods or services

Infringement of RegisteredInfringement of Registered Geographical Certification Marks

Test: Likelihood of Confusion

Si il it f kSimilarity of marks Relatedness of goods and servicesSophistication of consumersSophistication of consumers

Infringement of RegisteredInfringement of Registered Geographical Certification MarksRules apply to geographical certification marks; would a consumer seeing the allegedly infringingwould a consumer seeing the allegedly infringing mark believe that the goods or services were certified by the owner of the certification mark?certified by the owner of the certification mark?

State of Idaho Potato Commission v. G & T Terminal Packaging, Inc., 425 F.3d 708 (9th Cir. 2005) –Unauthorized use of IDAHO certification mark by defendant infringed certifier’s registered certificationdefendant infringed certifier s registered certification mark

GATT TRIPS – Article 23GATT TRIPS Article 23Additional protection for wines and spirits:

C d t d t b i l d “ b l tConsumers do not need to be misled - “absolute protection”

Use of words “style,” “type,” etc., or use of actual geographic origin on product not sufficientgeographic origin on product not sufficient

Grandfathering of marks or generic terms used inGrandfathering of marks or generic terms used in member nation prior to enactment of TRIPS (U.S. -1/1/1996))

GATT TRIPS Article 23GATT TRIPS – Article 23

Additi l t ti f i d i itAdditional protection for wines and spirits:

WTO members shall provide the legal means to prevent the use or registration of marks p gfor wines or spirits which contain geographical indications when the wine or g g pspirit does not originate from the geographic area identified by the geographical indicationy g g p

Lanham ActLanham Act Post-Article 23 – Application 2(a)6th Edition of TMEP

Defines “geographical indication” pursuant to Article 22

Lanham ActLanham Act Post-Article 23 – Application 2(a)6th Edition of TMEP

TMEP Section 1210.08 – acknowledge TRIPS definition of GI to include quality and q ycharacteristics BUT requires that purchasers make a goods/place association AND that the erroneous belief as toAND that the erroneous belief as to geographic origin would materially affect purchaser’s decision to buy the goods.p y g

Lanham ActLanham Act Post-Article 23 – Application 2(a)

Exam Guide 1-06 – May 9, 2006Exam Guide 1 06 May 9, 2006

WRONG – Article 23 requires “additional” protection, consumers p ,need not be misled

TTB -The U.S. Appellation SystemTTB The U.S. Appellation System• Political Appellationpp

(US, state, county)– 75% grape source rule

• American viticulturalarea (AVA)

85% l– 85% grape source rule– 95% with vineyard designation

• Estate Bottled– 100% grape source ruleg p

27 CFR 4.25, 4.26

TTB - Appellations of OriginTTB Appellations of OriginAmerican Viticultural Areas (AVAs) are defined as “delimited grape growing regions distinguishable bydelimited grape growing regions distinguishable by geographic features, the boundaries of which have been recognized and defined by TTB ” 27 CFR 4 25a(e)(1)recognized and defined by TTB. 27 CFR 4.25a(e)(1)

TTB - Appellations of OriginTTB Appellations of Origin

Political Appellation – American viticultural area – 85%75% grape source

requirementVineyard designation – 95%

“L” Block – post hoc verificationEstate Bottled – 100%

AVA Petitions 27 CFR 9.3

“name of the viticultural area is locally and/or nationally known”

“features (climate, soil, elevation,eatu es (c ate, so , e e at o ,physical features, etc.) which distinguish the viticultural features of the proposed area”p p

AVA/Trademark ConflictAVA/Trademark ConflictIn 2001 TTB recognized the AVA “Santa Rita Hills” located in California’s Santa Barbara Countyy

AVA/T d k C fli tAVA/Trademark Conflict

AVA/Trademark ConflictAVA/Trademark Conflict“Names of Viticultural Significance” 27 CFR 4.39(i)(3)

TTB determines on a case by case basis whether all or part of an AVA name has viticultural significance, e g Santa Rita Hills has viticultural significance bute.g., Santa Rita Hills has viticultural significance but not Santa Rita standing alone; thus, Viña Santa Rita may continue to use its “Santa Rita” brand on wines not from the Santa Rita Hills AVAnot from the Santa Rita Hills AVA.

Other examples: Napa and Napa Valley haveOther examples: Napa and Napa Valley have viticultural significance but not Paso (Paso Robles AVA) or Oak Knoll (Oak Knoll District of Napa Valley)Valley).

AVA/Trademark ConflictAVA/Trademark ConflictSociedad Anonima Viña Santa Rita v. U.S. Dept. Treasury, 193 F.Supp.2d 6 (D.D.C. 2001) – Held Treasury could ( ) ynot be held liable for infringement by recognizing AVA Santa Rita wouldrecognizing AVA, Santa Rita would need pursue each user individually for use of AVAuse of AVA

AVA/Trademark ConflictAVA/Trademark ConflictChange of AVA name to Sta. Rita Hills

AVA/Trademark ConflictAVA/Trademark Conflict

Calistoga AVA: Notice of Proposed Rulemaking (2005)

CCalistoga

Incorporated in 1885

Calistoga LabelsCalistoga Labels

Calistoga Cellars Calistoga EstateLabel submittedCalistoga RanchLabel approved

May 22, 1998Label submitted June 30, 2005

Calistoga RanchLabel approved May 11, 2004

Calistoga AVA/Trademark ConflictCalistoga AVA/Trademark ConflictWould permit qualifying brand owners to continue using “Calistoga” without any grapes from the named areaCalistoga without any grapes from the named area, provided:

COLA must have been approved 5 years before the– COLA must have been approved 5 years before the AVA petition was “perfected” with TTB;

– COLA must have been used in commerce for at least 3– COLA must have been used in commerce for at least 3 years prior to the date AVA petition perfected; and

– Label must contain information dispellingLabel must contain information dispelling misconception about the origin of the grapes.

Calistoga AVA/Trademark ConflictCalistoga AVA/Trademark Conflict

“Calistoga” brand owners given 3 yearsCalistoga brand owners given 3 years to have brand comply with AVA requirements for Calistoga or adopt newrequirements for Calistoga or adopt new brand name for wine not meeting C li t AVA i tCalistoga AVA requirements

AVA/Trademark ConflictAVA/Trademark ConflictUnlike Trademark system, no opposition process merely comment periodprocess, merely comment period

N d TTB h di ti iNo due process, TTB has discretion in making decision on conflict between trademark and AVAtrademark and AVA

U l hi h t ld t k dUnclear which system would take precedence in conflict between trademark registration and AVAAVA

Thank You!Thank You!Thank You!Thank You!J. Scott Gerien

Dickenson, Peatman & Fogarty

sgerien@dpf law [email protected](707) 252-7122, ext. 7258

809 Coombs StreetNapa, CA 94559Napa, CA 94559

u s treatment ofu.s. treatment of geographical indications · not santa rita standing alone; thus,...

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