U.S.
U
S Treatment of
Geographical Indications
J. Scott Gerien
Dickenson, Peatman & Fogarty
809 Coombs Street
N
Napa,
California
C lif i 94559
(707) 261-7058
sgerien@dpf law com
[email protected]
Protecting GIs in U.S.
US
USPTO
¾Geographical Certification Marks
¾Collective Marks
TTB (Alcohol & Tobacco Tax & Trade Bureau)
¾Appellations of Origin for Wine
Geographical Certification Marks
Geographical Certification Marks
¾Owner of mark certifies goods as to
geographical origin and possibly other
requirements
i
t
Geographical Certification Marks
¾Owner cannot itself use the mark,
usually owned by regional trade
associations
¾All parties who qualify must be allowed
to apply for certification
Geographical Certification Marks
¾ WISCONSIN CHEESE and Design
certification mark certifies that the cheese is
100% cow’s
cow s milk natural cheese produced
in the state of Wisconsin or processed
cheese made exclusively with cow’s
cow s milk
natural cheese produced in the state of
Wisconsin.
¾ Owned by Wisconsin Milk Marketing Board
Geographical Certification Marks
Geographical Certification Marks
¾ The geographical term is not required to be
disclaimed
¾ The geographical certification mark gives
the owner exclusive control of the
geographical term on the goods
¾ No
N ffair
i use d
defense
f
ffor use off term
t
as partt
of trademark
DARJEELING
NOUVEAU
Geographical Certification Marks
Tea Board of India v. Republic of Tea,
80 USPQ2d 1881 (TTAB 2006)
¾Analysis is likelihood of confusion
¾Mark DARJEELING is distinctive
Geographical Certification Marks
Tea Board of India v. Republic of Tea,
80 USPQ2d 1881 (TTAB 2006)
¾Applicant could not simply disclaim
“Darjeeling”
j
g or limit its g
goods to 100%
Darjeeling tea
Geographical Certification Marks
Tea Board of India vv. Republic of Tea
Tea,
80 USPQ2d 1881 (TTAB 2006)
¾Could not make a product with a
particular brand and then use that
b d name iin your own ttrademark,
brand
d
k
e.g., MIREIA’S CHOCOVIC cookies
G
Geographical
hi l C
Certification
tifi ti M
Marks
k
Tea Board
T
B d off India
I di v. R
Republic
bli off T
Tea,
80 USPQ2d 1881 (TTAB 2006)
¾Similarly, cannot make a product with
goods from a particular protected
geographic area and use the
geographical certification mark for
such area as part of a brand, i.e.,
DARJEELING NOUVEAU tea
Geographical Certification Marks
Geographical Certification Marks can
also be recognized under common
law need not be registered
law,
Institut Nat’l des Appellations d’Origine
v Brown Forman Corp
v.
Corp., 47 USPQ2d
1875 (TTAB 1998)
Geographical Collective Marks
¾Owned by an association for use by
association members on products
produced by members approved by
the association
¾Association promotes, but does not
use the mark on goods
Geographical Collective Marks
Geographical Collective Mark
Geographical Collective Marks
¾Unlike certification marks,, must disclaim
geographic term
¾More of a marketing device
G
Geographical
hi l C
Collective
ll ti M
Marks
k
Infringement of Registered
Geographical Certification Marks
Lanham Act Section 32(1) (15 USC § 1114(a))
i
imposes
liliability
bilit ffor:
¾ Infringement of a registered mark upon any
person who uses an infringing mark in interstate
g
commerce in connection with the sale or advertising
of goods or services
Infringement of Registered
Geographical Certification Marks
¾ Test: Likelihood of Confusion
¾ Similarity
Si il it off marks
k
¾ Relatedness of goods and services
¾ Sophistication of consumers
Infringement of Registered
Geographical Certification Marks
Rules apply to geographical certification marks;
would a consumer seeing the allegedly infringing
mark believe that the goods or services were
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
certifier s registered certification
mark
GATT TRIPS – Article 23
Additional protection for wines and spirits:
¾ Consumers
C
d nott need
do
d tto be
b misled
i l d - “absolute
“ b l t
protection”
¾ Use of words “style,” “type,” etc., or use of actual
geographic origin on product not sufficient
¾ Grandfathering of marks or generic terms used in
member nation prior to enactment of TRIPS (U.S. 1/1/1996))
GATT TRIPS – Article 23
Additi
Additional
l protection
t ti for
f wines
i
and
d spirits:
i it
WTO members shall provide the legal means
to p
prevent the use or registration
g
of marks
for wines or spirits which contain
geographical
g
g p
indications when the wine or
spirit does not originate from the geographic
area identified byy the geographical
g g p
indication
Lanham Act
Post-Article 23 – Application 2(a)
6th Edition of TMEP
¾ Defines “geographical indication” pursuant
to Article 22
Lanham Act
Post-Article 23 – Application 2(a)
6th Edition of TMEP
¾ TMEP Section 1210.08 – acknowledge
TRIPS definition of GI to include q
quality
y and
characteristics BUT requires that
purchasers make a goods/place association
AND that the erroneous belief as to
geographic origin would materially affect
purchaser’s decision to buy
p
y the g
goods.
Lanham Act
Post-Article 23 – Application 2(a)
Exam Guide 1-06
1 06 – May 9, 2006
¾WRONG – Article 23 requires
protection,, consumers
“additional” p
need not be misled
TTB -The
The U.S. Appellation System
• Political Appellation
pp
(US, state, county)
– 75% grape source rule
• American viticultural
area (AVA)
– 85% grape source rule
l
– 95% with vineyard
designation
• Estate Bottled
– 100% g
grape
p source rule
27 CFR 4.25, 4.26
TTB - Appellations of Origin
American Viticultural Areas (AVAs) are defined as
“delimited
delimited grape growing regions distinguishable by
geographic features, the boundaries of which have been
recognized and defined by TTB
TTB.” 27 CFR 4
4.25a(e)(1)
25a(e)(1)
TTB - Appellations of Origin
Political Appellation –
75% grape source
requirement
American viticultural area – 85%
Vineyard designation – 95%
“L” Block – post hoc verification
Estate Bottled – 100%
AVA Petitions 27 CFR 9.3
“name of the viticultural area is
locally and/or nationally known”
“features
eatu es (climate,
(c
ate, soil,
so , elevation,
e e at o ,
physical features, etc.) which
distinguish the viticultural features of
the p
proposed
p
area”
AVA/Trademark Conflict
¾In 2001 TTB recognized the AVA “Santa
Rita Hills” located in California’s Santa
y
Barbara County
AVA/T d
AVA/Trademark
k Conflict
C fli t
AVA/Trademark Conflict
¾ “Names of Viticultural Significance” 27 CFR 4.39(i)(3)
¾ 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 but
e.g.,
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 AVA.
AVA
¾ Other 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 Conflict
Sociedad Anonima Viña Santa Rita v.
U.S. Dept. Treasury, 193 F.Supp.2d 6
((D.D.C. 2001)) – Held Treasury
y could
not be held liable for infringement by
recognizing AVA,
AVA Santa Rita would
need pursue each user individually for
use of AVA
AVA/Trademark Conflict
¾Change of AVA name to Sta. Rita Hills
AVA/Trademark Conflict
Calistoga AVA: Notice of
Proposed Rulemaking
(2005)
Calistoga
Incorporated in 1885
Calistoga Labels
Calistoga Cellars
Label approved
May 22, 1998
Calistoga Ranch
Label approved
May 11, 2004
Calistoga Estate
Label submitted
June 30, 2005
Calistoga AVA/Trademark Conflict
¾ Would permit qualifying brand owners to continue using
“Calistoga”
Calistoga without any grapes from the named area
area,
provided:
– 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
years prior to the date AVA petition perfected; and
– Label must contain information dispelling
misconception about the origin of the grapes.
Calistoga AVA/Trademark Conflict
¾“Calistoga”
¾
Calistoga brand owners given 3 years
to have brand comply with AVA
requirements for Calistoga or adopt new
brand name for wine not meeting
C li t
Calistoga
AVA requirements
i
t
AVA/Trademark Conflict
¾ Unlike Trademark system, no opposition
process merely comment period
process,
¾ No
N d
due process, TTB h
has di
discretion
ti iin
making decision on conflict between
trademark and AVA
¾ Unclear
U l
which
hi h system
t
would
ld ttake
k precedence
d
in conflict between trademark registration and
AVA
Thank You!
J. Scott Gerien
Dickenson, Peatman & Fogarty
sgerien@dpf law com
[email protected]
(707) 252-7122, ext. 7258
809 Coombs Street
Napa, CA 94559