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PROTECTION OF GEOGRAPHIC DESINGATIONS IN THE UNITED STATES William G. Barber, Pirkey Barber LLP. Overview. No separate registration system for Geographical Indications Protection/Regulations Relating to Geographic Terms Certification Marks (Collective Marks) Trademarks Wines/Spirits
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PROTECTION OF GEOGRAPHIC DESINGATIONS IN THE UNITED STATES William G. Barber, Pirkey Barber LLP
Overview No separate registration system for Geographical Indications Protection/Regulations Relating to Geographic Terms Certification Marks (Collective Marks) Trademarks Wines/Spirits Appellations of Origin (Wine Labeling Regulations) Geographical indications under Lanham Act Section 2(a) Possible Defenses Genericness Fair Use © AIPLA 2012
Certification Marks “[C]ollective and certification marks, including indications of regional origin, shall be registrable under this act, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the marks sought to be registered …” 15 U.S.C. § 1054. © AIPLA 2012
What is a “Certification Mark”? Mark used “to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics” of goods (15 U.S.C. § 1127) Requirements on owner: Must be able legitimately to exercise control over use of the mark by others, and must actually control such use Must not engage in the production or marketing of goods to which the mark is applied Must not permit use of the mark for purposes other than to certify No discrimination – must permit any person who maintains the specified standards/conditions to use the mark (15 U.S.C. § 1064(5)) © AIPLA 2012
Examples © AIPLA 2012
Certification Marks Key Advantage: secondary meaning (acquired distinctiveness) not required to register an indication of regional origin as a certification of mark But: cannot have become a generic term in U.S. © AIPLA 2012
Trademark Protection for Geographic Terms Trademarks ≠ certification marks Unlike certification marks, trademarks are: Used exclusively by their owners (or owners’ licensees) Used to designate the source of goods (not regional origin or qualities) © AIPLA 2012
Trademarks Containing Geographical Terms Treated Three Different Ways “Primarily geographically descriptive” marks Sometimes registrable “Primarily geographically deceptively misdescriptive” marks Never registrable (except for grandfathered marks) Arbitrary marks Always registrable © AIPLA 2012
What’s the Difference? Key threshold question: “goods-place association” If no association in public mind between the applicant’s goods and place (e.g. place named in mark is obscure or remote), mark considered arbitrary and protectable Example: BALASHI for beer (Balashi is a neighborhood in Aruba) © AIPLA 2012
Primarily Geographically Descriptive Marks A mark is primarily geographically descriptive if: The primary significance of the mark is to denote a geographic place, The mark is not primarily geographically descriptive if the geographic meaning: Is minor, obscure, remote, or unconnected with the goods, or Has a popular significance apart from its geographical meaning. HOLLYWOOD with a star design held not primarily geographically descriptive of fast food restaurants; in that context, mark denoted the movie industry rather than L.A. consumers are likely to associate the goods or services with that place, and the goods come from that place. © AIPLA 2012
Primarily Geographically Descriptive Marks Goods-place association presumed if: Place named in mark is well known, and Applicant’s goods come from that place - Example: BAIKALSKAYA for vodka made near Lake Baikal, Russia © AIPLA 2012
Primarily Geographically Descriptive Marks Protectable if acquire secondary meaning - THE UNIVERSITY OF TEXAS - BANK OF AMERICA - GRAND CANYON WEST - SOUTHWEST AIRLINES - CALIFORNIA PIZZA KITCHEN © AIPLA 2012
Primarily Geographically Deceptively Misdescriptive Marks Unlike primarily geographically descriptive marks, primarily geographically deceptively misdescriptive marks are not protectable/registrable even if they have acquired secondary meaning - Grandfather exception: registrable if acquired secondary meaning before Dec. 8, 1993 Test: (1) Primary significance of the mark is a generally known location (2) Consumers are likely to believe the goods/services come from that place when in fact they do not (goods-place association) (3) The misdescription is a material factor in consumers’ purchasing decision © AIPLA 2012
Examples of Marks Held Primarily Geographically Deceptively Misdescriptive COLORADO for chain of steakhouses in Indiana and Illinois (beef did not come from Colorado) NAPA VALLEY MUSTARD CO. for mustard not from Napa Valley HOTEL MONACO for chain of French/European themed hotels located in San Francisco, Seattle, Denver, and Chicago HAVANA CLUB for cigars not from Cuba © AIPLA 2012
Examples of Marks Held Not Primarily Geographically Deceptively Misdescriptive CALIFORNIA INNOVATIONS for water bottles made in Canada LE MARAIS for restaurant in New York © AIPLA 2012
Wines/Spirits © AIPLA 2012
Appellations of Origin U.S. Alcohol and Tobacco Tax and Trade Bureau (Department of Treasury) maintains a list of U.S. and foreign appellations of origin, including: Countries States (or foreign equivalents) Multi-state appellations Counties (or foreign equivalents) Multi-county appellations Viticultural areas Applies only to wine labels Requirements for use include minimum percentages of grape content grown in region, wine fully finished in region, wine conforms to foreign laws/regulations for composition, method of production, etc. in country of origin Use can be mandatory or optional © AIPLA 2012
When Mandatory? Grape wine labeled with a grape varietal designation Grape wine labeled with a recognized “semi-generic name” and the wine is not from that geographic origin • Angelica (U.S.) • Burgundy (France) • Chablis (France) • Champagne (France) • Chianti (Italy) • Claret (France) • Haut Sauterne (France) • Hock (Germany) • Madeira (Portugal) • Malaga (Spain) • Marsala (Italy) • Morelle (France) • Port (Portugal) • Rhine (Germany) • Sauterne (France) • Sherry (Spain) • Tokay (Hungary) © AIPLA 2012
But Hold On! © AIPLA 2012
U.S./E.U. Agreement on Trade in Wine March 10, 2006 U.S. changed status of these “semi-generic names” (plus Retsina (Greece)) to restrict their use solely to wine originating in the applicable EU member state “Grandfather” exception for non-EU wines using same brand name/fanciful name on label approved or exempted prior to March 10, 2006 © AIPLA 2012
Geographical Indications Lanham Act Section 2(a) prohibits trademark registration of any “geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods” (15 U.S.C. § 1052(a)) © AIPLA 2012
Geographical Indications A designation is a geographical indication under Section 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. Section 2(a): Was enacted in 1995 to implement the Trade Related Intellectual Property (TRIPs) portions of the General Agreements on Tariffs and Trade (GATT) agreement. Is an absolute bar to registration on either the Principal or Supplemental Register and does not require proof that the mark is false or misleading. Grandfather clause – prohibition does not apply if GI first used by applicant prior to January 1, 1996. © AIPLA 2012
Defenses Genericness - Texas toast - French fries - Swiss cheese (but not Swiss chocolates or Swiss watches!) - American cheese Fair Use “use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, … of a term or device which is descriptive of and used fairly and in good faith only to describe … [the goods’] geographic origin” © AIPLA 2012
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