®
The Law Journal of the International Trademark Association
Geographical Indications and Dilution:
Reinterpreting “Distinctiveness”
Under the Lanham Act
Peter M. Brody
Cool Water Runs Deep: Davidoff v. CVS—
Unique Production Codes Keep Products
Off Gray Market
Karen H. Bromberg and Ellen Paltiel
Making Much Ado About Theory:
The Chinese Trademark Law
Leah Chan Grinvald
New-School Trademark Dilution:
Famous Among the Juvenile Consuming Public
Alexandra J. Roberts
Vol. 100
July-August, 2010
No. 4
®
GEOGRAPHICAL INDICATIONS AND DILUTION:
REINTERPRETING “DISTINCTIVENESS”
UNDER THE LANHAM ACT
By Peter M. Brody∗
I. INTRODUCTION
The Federal Trademark Dilution Act (“FTDA”), as amended in
2006, protects “a famous mark that is distinctive, inherently or
through acquired distinctiveness.”1 Although the FTDA includes
an explanation of the term “famous,” it does not define the term
“distinctive.” The term “distinctive,” however, is used throughout
the federal trademark statute (Lanham Act)2 of which the FTDA is
a part. Indeed, as one leading commentator has observed, “[t]he
term ‘distinctive’ is a key term of art in trademark law.”3
Specifically, “distinctive,” in the trademark sense, traditionally has
meant the ability of a mark to distinguish the user’s goods or
services from those offered by others—that is, to identify the goods
or services as originating from “one source.”4
Geographical indications do function to distinguish goods
originating in a specified location from those offered by others—
namely, goods originating elsewhere. But geographical indications
do not necessarily identify a single source of goods.5 Indeed, more
∗ Partner in the law firm of Ropes & Gray LLP, Washington, DC, associate member
of the International Trademark Association, member of the Geographical Indications
Subcommittee of the Related Rights Committee. The author is indebted to Andrew
Schwentker, Ryan Dickey, and Amanda Wieker for their assistance with this article.
1. 15 U.S.C. § 1125(c)(1) (emphasis added), as amended by the Trademark Dilution
Revision Act of 2006, Pub. L. No. 109-312, § 2, 120 Stat. 1730.
2. Trademark Act of 1946, 15 U.S.C. §§ 1051-1141 (“Lanham Act”).
3. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:2
(4th ed. 2010).
4. Id.
5. See Leigh Ann Lindquist, Champagne or Champagne? An Examination of U.S.
Failure to Comply with the Geographical Provisions of the TRIPS Agreement, 27 Ga. J. Int’l
& Comp. L. 309, 311-12 (1999) (“Geographical indications are similar to trademarks in that
they function as source indicators. Producers use such designations to signify the place from
which a good originates. Geographical indications, however, are not trademarks;
trademarks—for example, Nike® or Coke®—inform the consumer of the specific producer of
a product.”).
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typically, geographical indications are used by multiple producers
of goods originating in the specified location. Thus, geographical
indications are not necessarily “distinctive” in the traditional
trademark sense. Does this mean they are not entitled to the
protections afforded to other marks under the FTDA?
No court has yet addressed this question, nor has the
Trademark Trial and Appeal Board (“TTAB”) of the United States
Patent and Trademark Office (“PTO”). An answer was at least
suggested, however, in a 2006 TTAB decision concerning the
protection of geographical indications under the parallel
likelihood-of-confusion provisions of the Lanham Act.6 In that
decision, the TTAB put forward a novel conception of
distinctiveness for geographical indications, which this article
terms “geographical distinctiveness.” This concept is akin to, but
different from, traditional trademark distinctiveness. This article
proposes that geographical distinctiveness should be regarded as a
sufficient basis to trigger protection under the dilution provisions
of the Lanham Act.7
II. TRADITIONAL TREATMENT OF GEOGRAPHICAL
INDICATIONS UNDER U.S. TRADEMARK LAW
As defined in the 1993 global Agreement on Trade-Related
Aspects of Intellectual Property Rights, Including Trade in
Counterfeit Goods (“TRIPS”),8 to which the United States is a
signatory, geographical indications “identify a good as originating
in the territory of a Member, or a region or locality in the territory,
where a given quality, reputation or other characteristic of the
good is essentially attributable to its geographical origin.”9 Wellknown geographical indications include both foreign designations
such as BORDEAUX for wine, COGNAC10 for spirits, and
6. Tea Bd. of India v. Republic of Tea, Inc., 80 U.S.P.Q.2d 1881 (T.T.A.B. 2006).
7. This article does not address other, more settled means for protecting geographical
indications under other provisions of the Lanham Act, such as the likelihood-of-confusion
and false advertising provisions. See generally 3 McCarthy, supra note 3, § 19:92.50
(applicability of likelihood-of-confusion provisions to geographical certification marks); 2
McCarthy, supra note 3, § 14:23 (same, as to false advertising).
8. TRIPS constituted Annex 1C to the Agreement Establishing the Multilateral Trade
Organization of the Final Act Embodying the Results of the Uruguay Round of Multilateral
Trade Negotiations (Version of 15 December 1993) of the General Agreement on Tariffs and
Trade. This discussion relies on the English-language version published by the Office of the
United States Trade Representative.
9. TRIPS art. 22.1.
10. See Bureau National Interprofessionel du Cognac v. Int’l Better Drinks Corp., 6
U.S.P.Q.2d 1610 (T.T.A.B. 1988) (“COGNAC serves as a certification of regional origin, as
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CAMEMBERT for cheese as well as American names such as
NAPA VALLEY for wine, GROWN IN IDAHO11 for potatoes,
WASHINGTON STATE for apples, and FLORIDA12 for citrus fruit
and juices from Florida.
Although TRIPS recognizes geographical indications as a sui
generis category of intellectual property, neither the Lanham Act
nor any other U.S. statute refers specifically to “geographical
indications.” Indeed, the conception of geographical indications as
a separate species of intellectual property has been viewed by
many commentators as historically alien to U.S. jurisprudence and
even antithetical to “the American capitalist view of society.”13
Nevertheless, U.S. courts, the PTO, and the TTAB have granted
recognition and protection to many geographical terms meeting
the elements of the TRIPS definition of a geographical indication,
and they did so even before the United States’ assent to TRIPS
required it to provide such recognition and protection. In doing so,
they relied on existing provisions of the Lanham Act and employed
familiar concepts of trademark law.14
For the most part, the geographical indications that have been
protected in the United States have been protected as certification
marks or collective marks.15 Both are forms of communal property,
controlled by, respectively, a certifying body or collective body. In
either case, the mark may be used by multiple parties within the
community, subject to the control of the certifying or collective
body.
well as of the quality of the brandy products entitled to bear the designation under French
laws and regulations.”); Institut National des Appellations d’Origine v. Brown-Forman
Corp., 47 U.S.P.Q.2d 1875, 1885 (T.T.A.B. 1998) (finding “the term ‘Cognac’ is recognized by
purchasers in this country as a reliable indicator of regional origin.”)
11. 2 McCarthy, supra note 3, § 14:21, at 14-74.
12. Id.
13. Eva Gutierrez, Geographical Indicators: A Unique European Perspective on
Intellectual Property, 29 Hastings Int’l & Comp. L. Rev. 29, 41 (2005); accord, e.g., Margaret
Ritzert, Champagne is from Champagne: An Economic Justification for Extending
Trademark-Level Protection to Wine-Related Geographical Indicators, 37 AIPLA Q.J. 191,
192-203 (2009).
14. Lynne Beresford, Symposium: Geographical Indications: The Current Landscape,
17 Fordham Intell. Prop. Media & Ent. L.J. 979, 981 (2007) (“[T]he United States views
geographical indications as a subset of trademarks and protects them through the
trademark system. . . .”); 2 McCarthy, supra note 3, § 14:21, at 14-73 (“Unlike the European
Union, the United States views geographical indications as a subset of the law of
trademarks, protectable as certification marks or collective marks.”). Other U.S. laws and
regulations, most notably those governing the labeling and advertising of wines and spirits,
also afford certain protections for geographical indications, but those are beyond the scope of
this article. See 27 U.S.C. § 205; 27 C.F.R. Parts 4, 5, 9, 12, 13.
15. Beresford, supra note 14, at 981.
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The Lanham Act defines “certification mark” as follows:
Certification mark. 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 Act,
to certify regional or other origin, material, mode of
manufacture, quality, accuracy, or other characteristics of
such person’s goods or services or that the work or labor on
the goods or services was performed by members of a union
or other organization.
“Collective mark,” in turn, is defined thus:
Collective mark. The term “collective mark” means a
trademark or service mark—
(1) used by the members of a cooperative, an association,
or other collective group or organization, or
(2) which such cooperative, association, or other collective
group or organization has a bona fide intention to use in
commerce and applies to register on the principal register
established by this Act,
and includes marks indicating membership in a union, an
association, or other organization.16
A geographical name may be protected as a certification or
collective mark “even though it is primarily geographically
descriptive.”17 As the Second Circuit explained in the Roquefort
case:
It is true that section 1054 provides that certification marks
are “subject to the provisions relating to the registration of
trademarks, so far as they are applicable. . . .” But section
1052(c)(2), which prohibits registration of names primarily
geographically descriptive, specifically excepts “indications of
regional origin” registrable under section 1054. Therefore, a
geographical name may be registered as a certification mark
even though it is primarily geographically descriptive.18
16. 15 U.S.C. § 1127 (Section 45 of the Lanham Act).
17. Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 497 (2d Cir. 1962).
18. Id.
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909
Like trademarks, however, geographical certification and
collective marks can become “generic” and thus unprotected:
[A] geographical name registered as a certification mark must
continue to indicate the regional origin, mode of manufacture,
etc. of the goods upon which it is used. . . . Therefore, if a
geographical name which has been registered as a certification
mark, identifying certain goods, acquires principal
significance as a description of those goods, the rights cease to
be incontestable. . . .19
Under U.S. law, it also is possible to protect geographical
indications as trademarks, although “this is relatively rare.”20
Section 2(e)(2) of the Lanham Act provisionally forbids the
registration of a mark that “when used on or in connection with
the goods of the applicant is primarily geographically descriptive of
them, except as indications of regional origin may be registrable
under section 4,” which is the section of the Lanham Act that
concerns certification marks and collective marks.21 Section 2(f),
however, allows the owner of a “primarily geographically
descriptive mark” to overcome the Section 2(e)(2) bar by
establishing that the mark “has become distinctive of the
applicant’s goods in commerce.”22 Many such marks thus have
been registered and protected under this section. Of these, a small
number also qualify as geographical indications within the
meaning of TRIPS. (An example is WATERFORD for crystal
ware.) Importantly, however, precisely because geographical terms
are not inherently distinctive—that is, they do not intrinsically
identify a single source of goods—they are protected as trademarks
only upon a showing of acquired distinctiveness or “secondary
meaning.”23
Geographical certification marks and collective marks differ
from geographical trademarks in this latter important respect: as
Section 2(e)(2) effectively provides with the clause “except as
19. Id.
20. Beresford, supra note 14, at 984; see Ruth Okediji, Comment: The International
Intellectual Property Roots of Geographical Indications, 82 Chi.-Kent L. Rev. 1329, 1337
(2007).
21. 15 U.S.C. § 1052(e)(2).
22. Id. § 1052(f).
23. See id. § 1052(e)(2) & (f); 2 McCarthy, supra note 3, § 14:1 (“Terms that are
descriptive of the geographic location or origin of goods and services are regarded by the law
as not being ‘inherently distinctive’ marks. Since geographically descriptive terms are not
inherently distinctive, they can be protected as trademarks only upon proof that through
usage, they have become distinctive. Such an acquisition of distinctiveness is referred to as
‘secondary meaning.’”); Okediji, supra note 20, at 1337-38.
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indications of regional origin may be registrable under section 4,”
such marks are specifically exempt from the requirement of
distinctiveness applicable to the latter.24 Given this exception to
the distinctiveness requirement, courts and the TTAB have not
had occasion to consider whether geographical certification marks
and collective marks can ever be considered “distinctive.” Because
the FTDA incorporates an explicit distinctiveness requirement,
however, that question is likely to arise.
III. DISTINCTIVENESS AND THE FTDA
Proof of distinctiveness has been a required element of a claim
under the FTDA since enactment of the statute, although the
precise way in which the statute incorporates that element was
clarified with the enactment of the Trademark Dilution Revision
Act.25 As originally enacted in 1995, the FTDA provided as follows:
The owner of a famous mark shall be entitled, subject to the
principles of equity and upon such terms as the court deems
reasonable, to an injunction against another person’s
commercial use in commerce of a mark or trade name, if such
use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark, and to obtain
such other relief as is provided in this subsection.26
The original FTDA defined dilution as follows:
The term “dilution” means the lessening of the capacity of a
famous mark to identify and distinguish goods or services,
regardless of the presence or absence of—
(1) competition between the owner of the famous mark and
other parties, or
(2) likelihood of confusion, mistake or deception.27
The original statute also provided that, “[i]n determining whether
a mark is distinctive and famous,” a court could consider various
24. 15 U.S.C. § 1052(e)(2) (Section 2(e)(2) of the Lanham Act prohibits the registration
of a mark that is primarily geographically descriptive, except “indications of regional origin
may be registrable under section 4 (the section applicable to geographical certification
marks and collective marks).”).
25. Pub. L. No. 109-312, 120 Stat. 1730.
26. 15 U.S.C. § 1125(c) (1995).
27. Id. § 1127 (1995)
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911
specified factors.28 Those factors included “the degree of inherent
or acquired distinctiveness of the mark.”29
In TCPIP Holding Co. v. HAAR Communications Inc.,30 the
Second Circuit concluded that Congress must have intended two
separate and independent requirements by the phrase “distinctive
and famous” and that marks that were not “inherently distinctive”
were not protected under the FTDA, no matter how famous they
might be and even if they had acquired distinctiveness (secondary
meaning).31 Other circuits read the phrase “distinctive and
famous” as a unitary requirement, and thus protected descriptive
marks from dilution upon a showing of acquired distinctiveness.
Those courts reasoned that Congress could not have meant to
discriminate against famous marks with acquired, as opposed to
inherent, distinctiveness.32 Congress ended this debate with the
2006 amendments to the FTDA, which now expressly protects “a
famous mark that is distinctive, inherently or through acquired
distinctiveness.”33
The 2006 amendments also included other references to
distinctiveness. Section 43(c) of the Lanham Act now defines
“dilution by blurring” as an “association arising from the similarity
between a mark or trade name and a famous mark that impairs
the distinctiveness of the famous mark.” Section 43(c) further
provides:
In determining whether a mark or trade name is likely to
cause dilution by blurring, the court may consider all relevant
factors, including the following:
(i) The degree of similarity between the mark or trade name
and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the
famous mark.
28. Id. § 1125(c) (1995).
29. Id.
30. 244 F.3d 88 (2d Cir. 2001).
31. Id. at 98 (“[W]eak, non-distinctive, descriptive marks do not qualify for the Act’s
protection, even if famous.”).
32. See, e.g., I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 42 (1st Cir. 1998)
(holding that a famous mark is by necessity distinctive); Avery Dennison Corp. v. Sumpton,
189 F.3d 868, 877 (9th Cir. 1999) (rejecting “Appellants’ argument that the distinctiveness
required for famousness under the Federal Trademark Dilution Act is inherent, not merely
acquired distinctiveness.”); Times Mirror Magazines, Inc. v. Las Vegas SportsNews, L.L.C.,
212 F.3d 157, 167 (3d Cir. 2000) (holding that “we are not persuaded that a mark be subject
to separate tests for fame and distinctiveness.”).
33. 15 U.S.C. § 1125(c)(1).
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(iii) The extent to which the owner of the famous mark is
engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to
create an association with the famous mark.
(vi) Any actual association between the mark or trade name
and the famous mark.34
As noted above, the FTDA does not itself define the term
“distinctive,” nor is that term defined elsewhere in the Lanham
Act, although the term (or cognates such as “distinguish” and
“distinctiveness”) appears in various other provisions. Indeed, the
term is used in the very definition of “trademark”:
The term “trademark” includes any word, name, symbol, or
device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in
commerce and applies to register on the principal register
established by this chapter,
to identify and distinguish his or her goods, including a unique
product, from those manufactured or sold by others and to
indicate the source of the goods, even if that source is
unknown.35
The term “service mark” is defined similarly.36 Likewise, Section 2
provides for the registration of any trademark “by which the goods
of the applicant may be distinguished from the goods of others,”
34. Id. (emphasis added). The amended FTDA no longer defines “famousness” by
reference to “the degree of inherent or acquired distinctiveness of the mark,” as had the
original version.
35. Id. § 1127.
36. Section 45 of the Lanham Act (15 U.S.C. § 1127) defines service marks thus:
The term “service mark” means any word, name, symbol, or device, or any
combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to
register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from
the services of others and to indicate the source of the services, even if that source is
unknown. Titles, character names, and other distinctive features of radio or television
programs may be registered as service marks notwithstanding that they, or the
programs, may advertise the goods of the sponsor.
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subject to the exceptions set forth in that provision,37 and service
marks are registrable subject to like exceptions.38
Under the Lanham Act, a mark may be distinctive upon its
adoption—the so-called “inherently distinctive” mark that the
Second Circuit had held was the only type of mark eligible for
protection by the FTDA.39 Marks that are not inherently
distinctive, such as “merely descriptive” marks, may “become
distinctive” through use.40 Thus, while a descriptive mark may not
initially “identify and distinguish” the user’s goods or services from
those offered by others, it may come to serve that function over
time, even while retaining its descriptive meaning. If it does not
acquire distinctiveness, a descriptive mark is not entitled to
protection under the FTDA.
Traditionally, judicial decisions and trademark scholars have
conceived of “distinctiveness” as a mark’s capacity—either
inherent or acquired—to differentiate the user’s goods or services
from those offered by all others, as in the following formulations:
• “[The plaintiff] must show that the primary significance of
the term in the minds of the consuming public is not the
product but the producer.”41
• “Secondary meaning is used generally to indicate that a
mark or dress ‘has come through use to be uniquely
associated with a specific source.’”42
• “A claim of secondary meaning presents a question of fact.
The chief inquiry is the attitude of the consumer toward the
mark; does it denote to him a ‘single thing coming from a
single source’?”43
• “In a case involving secondary meaning, the crucial
question is ‘whether the public is moved in any degree to
buy an article because of its source.’”44
37. 15 U.S.C. § 1052 (emphasis added).
38. Id. § 1053.
39. TCPIP Holding Co. v. HAAR Commc’ns Inc., 244 F.3d 88 (2d Cir. 2001).
40. 15 U.S.C. § 1052(f).
41. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938) (discussing the term
“shredded wheat”).
42. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 766 n.4 (1992) (quoting
Restatement (Third) of Unfair Competition § 13 cmt. e (Tentative Draft No. 2, Mar. 23,
1990)).
43. Aloe Creme Labs, Inc. v. Milsan, Inc., 423 F.2d 845, 849 (5th Cir. 1970) (quoting
Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146, 41 S. Ct. 113, 65 L. Ed. 189 (1920)).
44. Forschner Group v. Arrow Trading Co., 124 F.3d 402, 408 (2d Cir. 1997) (citation
omitted).
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• “The prime element of secondary meaning is a mental
association in buyers’ minds between the alleged mark and
a single source of the product.”45
Unlike trademarks and service marks, certification marks and
collective marks may be, and typically are, used by multiple
parties offering similar goods or services. In other words,
certification marks and collective marks, by their nature, do not
serve to distinguish one user’s goods or services from those of
others in the same field or to indicate a unique source of the user’s
goods or services. The Lanham Act’s definitions of the terms
“certification mark” and “collective mark,” quoted above, reflect
this difference from trademarks and service marks, in that neither
definition contains the term “distinctive” or any cognate of the
term. Likewise, the TRIPS definition of geographical indication
does not refer to distinctiveness, in contrast to that agreement’s
definition of trademarks.46
Thus, to qualify for protection under the Lanham Act, a
certification mark indicating regional origin need not possess
distinctiveness in the sense of indicating a single source of the
goods: to the contrary, by definition, a certification mark of
regional origin may, and almost always will, be used by multiple
sources of goods entitled to bear the mark.47 In short, a
certification mark of regional origin is protectable precisely
because—and only if—it lacks “distinctiveness” in the trademark
sense.48
45. 2 McCarthy, supra note 3, §15:5 (emphasis in original).
46. Compare TRIPS Article 22(1) (geographical indications “identify a good as
originating in the territory of a Member, or a region or locality in the territory, where a
given quality, reputation or other characteristic of the good is essentially attributable to its
geographical origin”) with TRIPS Article 15(1) (trademarks are “[a]ny sign, or any
combination of signs, capable of distinguishing the goods or services of one undertaking
from those of other undertakings”).
47. See, e.g., Trademark Manual of Examining Procedure § 1306.02 [hereinafter
TMEP] (a geographical name “does not require a secondary meaning in order to qualify” for
registration as a certification mark); see also 2 McCarthy, supra note 3, § 14:21, at 14-73–
14-76.
48. 2 McCarthy, supra note 3, § 14:21; Institut National des Appellations d’Origine v.
Brown-Forman Corp., 47 U.S.P.Q.2d 1875, 1885 (T.T.A.B. 1998) (“[W]e conclude that if the
use of a geographic indication is controlled and limited in such a manner that it reliably
indicates to purchasers that the foods bearing the designation come exclusively from a
particular region, then that term functions as a regional certification mark. . . .”). The law
also requires that geographical certification marks, like all other certification marks, (1)
“specify the manner in which and the conditions under which the certification mark is used”
and (2) “allege that the applicant exercises legitimate control over the use of the mark.”
3 McCarthy, supra note 3, § 19:92.
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915
The Lanham Act, however, also mandates that the protections
for certification marks and collective marks, including
geographical certification and collective marks, be on a par with
those for trademarks. Section 4 of the Lanham Act provides as
follows:
Subject to the provisions relating to the registration of
trademarks, so far as they are applicable, collective and
certification marks, including indications of regional origin,
shall be registrable under this chapter, 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, even though not possessing an industrial or
commercial establishment, and when registered they shall be
entitled to the protection provided in this chapter in the case
of trademarks, except in the case of certification marks when
used so as to represent falsely that the owner or a user thereof
makes or sells the goods or performs the services on or in
connection with which such mark is used. Applications and
procedure under this section shall conform as nearly as
practicable to those prescribed for the registration of
trademarks.49
As the TTAB has made clear, “[t]he test for determining
likelihood of confusion with respect to certification marks is the
same as that applied to trademarks—that is, the du Pont
analysis.”50 (In fact, the TTAB has acknowledged at least one
important difference in how that test is applied: “because the
certification mark owner does not itself use the mark, the question
of whether there is a likelihood of confusion is based on a
comparison of the mark as applied to the goods of the certification
mark users.”51)
There is no reason to doubt that the dilution provision of the
Lanham Act, just like the likelihood-of-confusion provisions, was
intended to apply, in general, to certification and collective marks.
The dilution statute itself refers throughout to “marks”—not
specifically “trademarks.” The unqualified term “mark,” as used in
the FTDA, already was expressly defined in Section 45 of the
Lanham Act to include certification and collective marks, as well
49. 15 U.S.C. § 1054.
50. Tea Bd. of India v. Republic of Tea, Inc., 80 U.S.P.Q.2d 1881, 1897 (T.T.A.B. 2006);
accord Institut National des Appellations d’Origine, 47 U.S.P.Q.2d at 1891.
51. Tea Bd. of India, 80 U.S.P.Q.2d at 1897.
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as trademarks and service marks.52 Congress can be presumed to
have intended that term to mean just what the statute says it
means. Certainly, there is nothing in the legislative history to
suggest that Congress intended to limit application of the dilution
provisions to trademarks, as opposed to other types of marks—
provided, of course, the other conditions to protection against
dilution are satisfied.
Moreover, at least two courts have recognized dilution as a
cause of action applicable to certification and collective marks. In
one case, the American Occupational Therapy Association
(“AOTA”) transferred responsibility for certifying qualified
occupational therapists to the National Board for Certification in
Occupational Therapy (“NBCOT”).53 NBCOT sued, alleging that
AOTA was diluting its certification mark with continued use. The
court denied NBCOT’s motion for summary judgment on the issue
of dilution, stating, “NBCOT simply asserts, conclusorily and
without demonstrable factual support, that ‘AOTA’s unauthorized
use whittles away at the public’s exclusive identification of
NBCOT’s marks with NBCOT as the certifier and therefore,
diminishes the distinctiveness of the marks.’”54 Thus, the court
grounded its denial on lack of evidence—not on any misapplication
of dilution to certification and collective marks.
In the other case, the American Registry of Radiologic
Technologists (“ARRT”) accused a radiologist of holding himself
out to be certified by ARRT after his certification had been
revoked.55 The court, after characterizing ARRT’s mark as an
incontestable collective mark, held that the defendant’s
“unauthorized use of the ARRT Mark has caused, and will
continue to cause, dilution of the distinctive quality of the ARRT
Mark. . . . [The defendant’s] wrongful conduct constitutes a
violation of 15 U.S.C. § 1125(c).”56 Thus, the court explicitly
recognized the availability of the dilution remedy for collective
marks.
Nevertheless, because the FTDA conditions protection against
dilution on the mark’s possession of “distinctiveness” as well as
52. 15 U.S.C. § 1127 (“The term ‘mark’ includes any trademark, service mark, collective
mark, or certification mark.”).
53. Nat’l Bd. for Certification in Occupational Therapy, Inc. v. Am. Occupational
Therapy Ass’n, 24 F. Supp. 2d 494 (D. Md. 1998).
54. Id. at 510.
55. Am. Registry of Radiologic Technologists v. McClellan, No. 3:00-CV-2577, 2004 WL
377054 (N.D. Tex. Jan. 13, 2004).
56. Id. at *5.
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fame, the question arises whether, by virtue of that requirement,
geographical certification and collective marks are, as a practical
matter, beyond the scope of protection under the FTDA. That is a
question that no case has yet addressed. The TTAB, however, has
at least suggested an answer in a 2006 decision in Tea Board of
India v. Republic of Tea, Inc.57
IV. THE TEA BOARD DECISION
In Tea Board, an application had been filed by The Republic of
Tea, Inc. (the “applicant”) to register the mark DARJEELING
NOUVEAU for tea in International Class 30. In its application, the
applicant disclaimed exclusive rights in the word DARJEELING.58
The application was opposed by the Tea Board of India (the
“opposer”), which controls the use of the geographical indication
DARJEELING and has registered that designation, as well as a
logo, in the United States as certification marks for tea originating
in the delimited Darjeeling region of India and produced in
accordance with requirements imposed by the opposer.
The goods in question in this case consisted of 100% Darjeeling
tea, and the applicant was certified and licensed by the opposer to
use the certification mark DARJEELING on its tea. The opposition
to registration of the mark was premised on two grounds:
likelihood of confusion and dilution. In response, the applicant
asserted a counterclaim for cancellation of the opposer’s registered
certification marks, alleging that the opposer had failed to
demonstrate effective control over use of the marks and that the
marks had lost significance as an indication of geographical source,
thus becoming generic for a type of tea.
The TTAB addressed the applicant’s counterclaim first. The
TTAB began by noting that, to be registrable and protectable,
DARJEELING need not solely indicate regional origin, for “as is
often the case with geographical indications, the mark also
certifies certain qualities and characteristics of the product that
are due to factors associated with the geographic region.”59 The
TTAB explained:
A certification mark used to certify regional origin as well as
qualities and characteristics associated with the origin will
not be deemed to have become a generic term as applied to
57. 80 U.S.P.Q.2d 1881 (T.T.A.B. 2006).
58. Id. at 1881.
59. Id. at 1887.
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particular goods unless it has lost its significance as an
indication of regional origin for those goods. This can occur
when, by virtue of a failure to control the mark, the mark is
used on goods which originate somewhere other than the place
named in the mark, or on nongenuine goods, or through
otherwise uncontrolled use, but only if as a result of such
misuse, the mark has come to primarily signify a type of goods
with certain characteristics, without regard to regional origin
and the methods and conditions for growing it.60
The Board further noted that the party asserting the “genericness”
of a certification mark has the burden of proof on the issues of both
uncontrolled use of the mark and the mark’s “primary
significance.”61
In this case, the applicant contended, first, that the
“genericness” of the term DARJEELING was established by facts
suggesting some amount of “uncontrolled use” of that designation
in the United States. The TTAB disagreed, stating that “absolute
control would be impracticable, if not impossible. The question is
whether the control is adequate. . . . [T]he owner must take
reasonable steps, under all the circumstances of the case, to
prevent the public from being misled.”62 In a slightly different
formulation of the standard, the Board stressed that “[e]ven if
control is not maintained and misuse occurs, it must be shown that
the misuse was of such significance to permit an inference that the
mark is generic.”63 The Board found no evidence to indicate that
the opposer had failed to undertake “reasonable steps” to prevent
confusion or that the “misuse was of such extent and duration that
we could presume that DARJEELING has lost all significance as a
mark.”64
As to the “primary significance” of DARJEELING as an
indication of geographical source, the TTAB noted that “[t]he
relevant public in this case includes tea ‘aficionados’ and ordinary
members of the general public” and that “[e]vidence of the relevant
public’s understanding of a term may be obtained from ‘any
competent source . . . including purchaser testimony, consumer
60. Id.
61. Id. The word mark DARJEELING issued during the proceedings and thus had not
achieved incontestable status. It appears the logo mark, which issued a decade earlier, had.
62. Id. at 1888 (citations omitted).
63. Id.
64. Id. at 1889.
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surveys, dictionary definitions, trade journals, newspapers and
other publications.’”65
In this case, the applicant submitted a survey to support the
argument that DARJEELING did not primarily signify regional
origin to U.S. consumers. As described in the opinion, the survey
consisted of “the open-ended question ‘What is Darjeeling tea?’
where the respondents could give as many responses as they
wished . . . followed up by the probe ‘Anything else?’”66 The Board
did not consider this survey probative for a number of reasons,
including that “it is not reasonable to conclude from the survey
that those who did not identify Darjeeling as a tea from India did
not know it was a tea from India.”67 The Board also considered
dictionary definitions submitted by both parties and media
references submitted by the opposer’s and concluded that this
evidence did not favor the applicant’s position that DARJEELING
was generic. Concluding that the mark was not generic, the TTAB
dismissed the applicant’s counterclaim.
Turning then to the opposer’s claim of likelihood of confusion,
the TTAB stressed that “[t]he test for determining likelihood of
confusion with respect to certification marks is the same as that
applied to trademarks,”68 namely, a multi-factor analysis that
includes, among other things, the similarities or dissimilarities
between the parties’ respective marks; the similarities or
dissimilarities between the parties’ respective goods, channels of
trade, and purchasers; and the fame or relative strength of the
opposer’s mark. Considering these factors, the TTAB concluded
that there was a strong likelihood of confusion in this case.
In reaching this conclusion, the TTAB rejected the applicant’s
argument that purchasers of its tea could not be confused as to the
goods’ origin because they consist solely of certified Darjeeling tea.
(The applicant also offered to amend its identification of goods to
state that the tea is 100% Darjeeling tea.) The TTAB stated:
When a user’s goods are not genuine or do not meet the
certifier’s standards, it may provide additional support for a
Section 2(d) claim. In contrast, the fact that a user’s products
may be genuine, whether in whole or in part, is simply
65. Id. at 1887 (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344
(Fed. Cir. 2001)).
66. Id. at 1894.
67. Id. at 1895.
68. Id. at 1897.
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irrelevant, and is not a defense to a likelihood of confusion
claim.69
Indeed, the TTAB observed, “the genuineness of applicant’s
product, if anything, serves to enhance an association with the
opposer.”70 (For this same reason, the TTAB held, the applicant’s
proposed amendment “cannot overcome the likelihood of
confusion.”71)
The applicant also disputed the strength and distinctiveness of
the DARJEELING mark, contending that, as a geographically
descriptive word, it is inherently weak and not distinctive and thus
is not entitled to broad protection. The TTAB rejected this
contention as well. The Board acknowledged that “[g]eographically
descriptive terms are generally regarded as inherently weak and
entitled to less protection than arbitrary or suggestive marks.”72
But in this one regard, the TTAB held, certification marks are not
to be treated just like trademarks:
Geographically descriptive terms are generally regarded as
inherently weak and entitled to less protection than arbitrary
or suggestive marks. Ordinarily, a term that describes the
geographic source of a product is not protectable without a
showing of acquired distinctiveness. However, Section 2(e)(2)
of the Trademark Act, which prohibits registration of a mark
that is primarily geographically descriptive of an applicant’s
goods, provides a specific exception for marks used to certify
indications of regional origin under Section 4 of the Act. Thus,
69. Id. at 1898 (internal citation omitted).
70. Id. Likewise, in Institut National des Appellations d’Origine v. Brown-Forman
Corp., the TTAB stated that
we are not persuaded by applicant’s argument that, where a defendant’s product
actually contains goods which have been certified by the owner of a certification mark,
the defendant’s incorporation of that certification mark into its own mark with a
disclaimer cannot, as a matter of law, be deemed to be likely to cause confusion under
Section 2(d) because purchasers would be correct, not confused or deceived, in
assuming that the defendant’s goods are certified. As opposers have pointed out,
likelihood of confusion encompasses not only confusion as to product contents but also
confusion as to sponsorship, affiliation or connection.
47 U.S.P.Q.2d 1875, 1890 (T.T.A.B. 1998).
71. Tea Bd. of India v. Republic of Tea, Inc., 80 U.S.P.Q.2d. 1881, 1898 (T.T.A.B. 2006).
In addition, although the applicant disclaimed exclusive rights in the word DARJEELING
in its application for DARJEELING NOUVEAU, the TTAB held that disclaimer effectively
irrelevant to the likelihood of confusion: “[T]he fact that DARJEELING is disclaimed in
applicant’s mark does not detract from the otherwise strong similarity between the marks.
It is well settled that disclaimed matter still forms a part of the mark and cannot be ignored
in determining likelihood of confusion.” Id. at 1900-01 (citations omitted).
72. Id. at 1899.
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the presumption that a geographic term is inherently weak
does not attach to geographic terms that are used to certify
regional origin.73
Moreover, the TTAB noted, the mark in this instance was
registered by the PTO and thus has additional benefits of
registration conferred by the Lanham Act:
A mark that is registered on the Principal Register is entitled
to all Section 7(b) presumptions including the presumption
that the mark is distinctive and moreover, in the absence of a
Section 2(f) claim in the registration, that the mark is
inherently distinctive for the goods. Thus, we consider
DARJEELING inherently distinctive as a certification mark
indicating geographic origin as it inherently identifies the
geographic source of the tea. Generally, greater protection is
afforded to more distinctive marks.74
Thus, the TTAB made clear, a regional certification mark can even
be “inherently distinctive” despite its primary geographic meaning.
As for whether DARJEELING is a famous or strong mark in a
“market sense,” the TTAB stated that “the question is the extent to
which the relevant public recognizes DARJEELING as a mark
denoting regional origin for tea.”75 Based on the evidence before it,
the TTAB concluded that the mark “was entitled to at least a
normal scope of protection.”76
Having concluded that the applicant’s mark was likely to
cause confusion, and that the opposition should be sustained on
that basis, the TTAB found it unnecessary to address the issue of
dilution.77
V. “GEOGRAPHICAL DISTINCTIVENESS”
AND DILUTION
Although at least one scholar had previously suggested
applying the concept of distinctiveness to geographical
73. Id. See also United States Annual Review: The Sixtieth Year of Administration of
the U.S. Trademark (Lanham) Act of 1946, 98 TMR 22, 35-36 (2008) (“Analyzing the marks,
the Board found DARJEELING to be inherently distinctive as identifying the geographic
source of tea. Although geographically descriptive terms are normally inherently weak, the
Lanham Act contains a specific exception for marks used to certify indications of regional
origin.”).
74. Tea Bd. of India, 80 U.S.P.Q.2d at 1899 (internal citations omitted).
75. Id.
76. Id. at 1900.
77. Id. at 1902.
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indications,78 the Tea Board decision is the first occasion on which
the TTAB or a court did so. In recognizing and legitimizing this
type of distinctiveness (which this article refers to as “geographical
distinctiveness”), the TTAB departed from the traditional concept
of distinctiveness (that is, the “single source” concept) to create a
variant that is uniquely applicable to, and beneficial for the
protection of, regional certification and collective marks.79 The
concept of geographical distinctiveness is an important
jurisprudential innovation in the evolving U.S. treatment of
geographical indications.
Although the Tea Board decision did not address the opposer’s
dilution claim, the TTAB’s articulation of the concept of
geographical distinctiveness clears away a potential obstacle to the
application of the Lanham Act’s dilution provisions to geographical
indications. In light of this holding, together with the earlier
statements by the TTAB indicating that certification and collective
78. See, e.g., Okediji, supra note 20, at 1336-39.
79. In its regulations concerning the labeling of wines, the Alcohol and Tobacco Tax
and Trade Bureau (“Bureau”) of the United States Department of Treasury long ago
recognized a category of “distinctive” geographical designations:
(c)(1) A name of geographic significance, which has not been found by the
Administrator to be generic or semi-generic may be used only to designate wines of
the origin indicated by such name, but such name shall not be deemed to be the
distinctive designation of a wine unless the Administrator finds that it is known to
the consumer and to the trade as the designation of a specific wine of a particular
place or region, distinguishable from all other wines.
(2) Examples of nongeneric names which are not distinctive designations of
specific grape wines are: American, California, Lake Erie, Napa Valley, New York
State, French, Spanish. Additional examples of foreign nongeneric names are listed in
subpart C of part 12 of this chapter.
(3) Examples of nongeneric names which are also distinctive designations of
specific grape wines are: Bordeaux Blanc, Bordeaux Rouge, Graves, Medoc, SaintJulien, Chateau Yquem, Chateau Margaux, Chateau Lafite, Pommard, Chambertin,
Montrachet, Rhone, Liebfraumilch, Rudesheimer, Forster, Deidesheimer, Schloss
Johannisberger, Lagrima, and Lacryma Christi. A list of foreign distinctive
designations, as determined by the Administrator, appears in subpart D of part 12 of
this chapter.
27 C.F.R. § 4.24(c). Under the Bureau’s wine-labeling regulations, the only consequence that
flows from a geographical indication being deemed a “distinctive” designation is that it may
appear on a label without any additional “class” or “type” designation, such as “red wine” or
“white wine.” See id. §§ 4.32, 4.34. One thus might suppose that a “distinctive” geographical
indication, under these regulations, tells the consumer that the product is a particular type
of wine. The examples provided in the regulation, however, only serve to confuse the
definition, as they include geographical indications that may be used on more than one type
of wine, and even some trademarks. Thus, while the wine-labeling regulations have
recognized a concept of “geographical distinctiveness” for many years, that concept has not
been clearly elaborated, and does not appear to bear any necessary relationship to the
concept adopted by the TTAB in Tea Board.
Vol. 100 TMR
923
marks merit the same level of protection as do trademarks, it is
clear that geographical indications are not categorically beyond the
scope of protection under the dilution provisions of the Lanham
Act.
This outcome is consistent with the policies underlying the
dilution provisions of the Lanham Act: protecting goodwill;
supporting incentives to create, advertise, and maintain and
improve product quality; and preventing free riding.80
Geographical indications carry goodwill, require investment, and
can be the subject of free riding, no less than can trademarks.81
But while Tea Board appears to suggest an affirmative answer
to the question whether a geographical indication can be
“distinctive” and thus be protectable under the FTDA, the TTAB’s
opinion leaves the contours of this protection unclear and prompts
additional questions.
First, does the Tea Board decision mean that any designation
that qualifies as a geographical indication under TRIPS merits
protection under the FTDA? Consider, again, the TRIPS definition
of a geographical indication as a designation that “identif[ies] a
good as originating in the territory of a Member, or a region or
locality in the territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its
geographical
origin.”82
Certainly,
every
TRIPS-qualified
geographical indication (other than those that are trademarks)
would seem to meet the Tea Board criterion that it “identif[y] the
geographic source” of the goods in question. But do all such
geographical indications satisfy the other requirements for
protection of certification and collective marks? That is less clear.
In particular, under the Lanham Act definition, a certification
mark, inter alia, must be “used by a person other than its owner”
and must be used “to certify regional or other origin, material,
mode of manufacture, quality, accuracy, or other characteristics of
such person’s goods.” These definitional elements imply, if not
explicitly contemplate, an independent authority that performs
some formal standard-setting function. While these characteristics
80. See, e.g., H.R. Rep. 104-374 (1995), reprinted in 1996 U.S.C.C.A.N. 1029, 1030
(“H.R. 1295 would add a new section 43(c) to the Lanham Act, 15 U.S.C. et. seq., to create a
federal cause of action to protect famous marks from unauthorized users that attempt to
trade upon the goodwill and established renown of such marks and, thereby, dilute their
distinctive quality.”); Okediji, supra note 20, at 1351.
81. See, e.g., Okediji, supra note 20, at 1351; Stephen A. Bowers, Location, Location,
Location: The Case Against Extending Geographical Indication Protection Under the TRIPS
Agreement, 31 AIPLA Q.J. 129, 135 (2003).
82. TRIPS art. 22.1.
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are true for many geographical indications, including most, if not
all, European appellations of origin, the TRIPS definition of
geographical indications does not require either an independent
authority or formal standards. For example, traditional
designations of regional origin may exist without either, and yet
still qualify under TRIPS.
Moreover, in a decision some years before Tea Board, the
TTAB had stated that, to qualify as a regional certification mark, a
designation must “reliably indicate[] to purchasers that the goods
bearing the designation come exclusively from a particular
region.”83 The PTO’s Trademark Manual of Examining Procedure,
citing that decision, likewise states: “The issue in determining
whether a designation is registrable as a regional certification
mark is whether the public understands that goods bearing the
mark come only from the region named in the mark.”84 Many
designations that qualify as geographical indications under TRIPS,
however, are not well known in this country, or known at all, and
many would not even be recognized as geographical place names.
Under the TTAB’s and PTO’s pre–Tea Board view, it would not
seem that all TRIPS-qualified geographical indications would be
protected as regional certification marks in the United States.
In the Tea Board decision, however, the TTAB observed that
the question of “the extent to which the relevant public recognizes
DARJEELING as a mark denoting regional origin for tea” was
relevant to the issue of the mark’s distinctiveness and strength.
One could interpret this observation to mean that a term that is
not recognized by the United States public as a geographical
indication nevertheless can qualify for protection as a certification
mark—of greater or lesser strength, as the case may be—as long
as it has not become generic.85 This interpretation also would
square with the above-quoted statutory definition of certification
marks, which does not explicitly require public recognition of the
geographical significance of the mark. If accepted, this
interpretation would ensure that virtually all non-generic TRIPSqualified geographical indications would be protected under the
FTDA.
83. Institut National des Appellations d'Origine v. Brown-Forman Corp., 47 U.S.P.Q.2d
1875, 1885 (T.T.A.B. 1998).
84. TMEP § 1306.02.
85. See United States Annual Review, supra note 73, at *36 (concluding that the TTAB
found the DARJEELING mark to be strong because it was “recognized by those in the trade
as a geographic indication”).
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925
Second, the TTAB in Tea Board classified DARJEELING as
not merely “distinctive” but “inherently distinctive,” because it was
registered without any claim of acquired distinctiveness under
Section 2(f) of the Lanham Act.86 This classification was relevant
and important to the Board’s conclusion that DARJEELING was a
strong mark, worthy of broad protection.87 But this classification of
DARJEELING, or any geographical indication, as “inherently
distinctive” is puzzling, to say the least.
A geographical indication necessarily is a preexisting
designation with a primary meaning as the name of a place, not a
product: for example, “Bordeaux” was a place before it was a wine.
A geographical indication comes to have significance as the name
for a product only with use and the development of a public
association between the indication and the product. In this respect,
geographical indications are similar to geographical or otherwise
descriptive single-source trademarks, such as AMERICAN
AIRLINES or DELL COMPUTER, and descriptive certification or
collective marks, such as AMERICAN OCCUPATIONAL
THERAPY ASSOCIATION and AMERICAN REGISTRY OF
RADIOLOGIC TECHNOLOGISTS; but what does it mean for a
geographical certification mark to be inherently distinctive, in the
manner of an arbitrary or fanciful trademark? The TTAB does not
explain this, and it is not clear.
For that matter, did the TTAB in Tea Board mean to suggest
that only registered geographical certification or collective marks
could be classified as “inherently distinctive”? If so, this would run
counter to long-standing trademark doctrine, which classifies
marks along the “spectrum of distinctiveness” based not on their
ultimate registration status, but on their characteristics ab initio.88
Indeed, in numerous previous decisions, the TTAB and the courts
had specifically held that a geographical indication may be
protected as a certification mark regardless of whether it is
registered on the Principal Register, and a “common-law
certification mark” is no less eligible for protection under the
Lanham Act than a registered one.89
86. Tea Bd. of India v. Republic of Tea., Inc., 80 U.S.P.Q.2d 1881, 1899 (T.T.A.B. 2006).
87. Id. See generally 2 McCarthy, supra note 3, § 11:4 (“[I]nherently distinctive” marks,
which encompass “arbitrary,” “fanciful,” and “suggestive” marks, are the strongest marks,
entitled to the broadest protection.).
88. See 2 McCarthy, supra note 3, § 11:4.
89. E.g., Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 497 (2d Cir. 1962);
Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 U.S.P.Q.2d 1875,
1889-90 (T.T.A.B. 1998); Bureau National Interprofessionel du Cognac v. Int’l Better Drinks
Corp., 6 U.S.P.Q.2d 1610, 1616-17 (T.T.A.B. 1988); accord TMEP § 1306.02.
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But if “inherent distinctiveness” does not turn on registration
status, how is one to ascertain whether a particular geographical
certification or collective mark merely has acquired distinctiveness
or is inherently distinctive, and thus more broadly protected?
Again, the Tea Board decision is unclear.
Third, what is the relationship between the TRIPS definition
of geographical indications and the category of “generic”
geographical indications, as recognized by the TTAB in the Tea
Board decision? As a threshold matter, the recognition of a
subcategory of geographical certification marks that have become
generic is not necessarily inconsistent with the obligations of the
United States under TRIPS. In fact, TRIPS itself acknowledges the
existence of such a category of geographical indications, providing:
“Nothing in this Section shall require a Member to apply its
provisions in respect of a geographical indication of any other
Member with respect to goods or services for which the relevant
indication is identical with the term customary in common
language as the common name for such goods or services in the
territory of that Member.”90 Indeed, the TTAB itself, in an earlier
case, held that the term CHABLIS, which is a French appellation
of origin for wine AOC, was unprotectable as a certification mark
because it had become generic for light, white wine and did not
“primarily” indicate the place of origin, at least to U.S.
consumers.91
The TTAB in Tea Board likewise recognized that it could not
require certifying organizations to maintain “absolute control” over
usage of a certification mark in order to prevent its becoming
generic. As long as the certifier takes “reasonable steps, under all
the circumstances of the case, to prevent the public from being
misled,” it may have done all it was required to do.92 Moreover, the
question of how the public understands the term is to be decided
on the basis of the totality of the evidence. Thus, the mere
presence of some amount of incorrect use of a geographical
indication should not render the mark generic (that is, not
geographically distinctive) so long as: (1) reasonable steps have
been taken by the certifying authority or collective owner to
protect the mark’s geographical distinctiveness, and (2) there is
substantial evidence that the “primary” significance of the mark
continues to denote a specific geographical region. These two
90. TRIPS art. 24.6.
91. See Institut National des Appellations d’Origine v. Vintners Int’l Co., 958 F.2d 1574
(Fed. Cir. 1992) (rejecting opposition to CHABLIS WITH A TWIST).
92. Tea Bd. of India, 80 U.S.P.Q.2d at 1888.
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927
decisions, while not necessarily incompatible, suggest some
evolution on the part of the TTAB toward a less black-and-white
approach to determining when a geographical indication is
protected as a geographical certification mark.
Finally, whether a given geographical indication is actually
protected from dilution under the Lanham Act, of course, will
depend on, inter alia, whether it is “famous” as well as
geographically distinctive. In the 2006 amendments to the FTDA,
Congress clarified that “famous” means “widely recognized by the
general consuming public of the United States as a designation of
source of the goods or services of the mark’s owner.”93 Presumably,
not all “geographically distinct” regional certification marks or
collective marks will meet this standard. Perhaps only a few will.
But since the Tea Board decision did not address the opposer’s
dilution claim on the merits, that decision sheds no particular light
on which such marks will meet the “famousness” requirement and
which will not. Likewise, that decision does not help with the
determination of whether a geographically distinctive certification
mark has been diluted by blurring under Section 43(b) or
tarnishment under Section 43(c) of the FTDA.94 Further litigation
93. 15 U.S.C. § 1125(c)(2)(A). To guide this inquiry, the FTDA further provides that:
In determining whether a mark possesses the requisite degree of recognition, the
court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity of
the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services
offered under the mark.
(iii)
The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the
Act of February 20, 1905, or on the principal register.
Id.
94. Cases decided since the enactment of the Trademark Dilution Revision Act suggest
that federal dilution claims still face an uncertain reception in federal courts. Compare, e.g.,
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 268-69, (4th Cir.
2007) (use of CHEWY VUITTON not likely to dilute LOUIS VUITTON and related marks);
Century 21 Real Estate LLC v. Century Sur. Co., No. Civ. 03-0053, 2007 WL 433579 (D.
Ariz. Feb. 6, 2007) (use of CENTURY SURETY not likely to dilute CENTURY21);
Anheuser-Busch Inc. v. VIP Prods. LLC, 666 F. Supp. 2d 974, 987-88 (E.D. Mo. 2008) (use of
BUTTWIPER not likely to dilute BUDWEISER); Levi Strauss & Co. v. Abercrombie & Fitch
Trading Co., No. C 07-037522009 WL 1082175, at *8 (N.D. Cal. Apr. 22, 2009) (no likelihood
of dilution of distinctive back pocket stitching pattern on jeans), with, e.g., V Secret
Catalogue Inc. v. Moseley, 605 F.3d 382, 389, 95 U.S.P.Q.2d 1050 (6th Cir. 2010) (use of
VICTOR’S SECRET likely to dilute VICTORIAS SECRET); Visa Int’l Service Ass’n v. JSL
Corp., No. 08-15206, 2010 WL 2559003, at *1 (9th Cir. Jun. 28, 2010) (use of domain name
eVisa.com likely to dilute VISA mark).
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in the district courts and before the TTAB will be necessary to
flesh out these issues.
VI. CONCLUSION
The FTDA’s protections for any “famous mark that is
distinctive, inherently or through acquired distinctiveness” should
be available for geographical indications—at least those that
qualify as certification or collective marks, even though such
designations traditionally were not considered “distinctive” in the
trademark sense of identifying a single source of the goods.
Although no case has yet squarely so held, the TTAB in the Tea
Board decision in 2006 recognized a type of “geographical
distinctiveness” that should be sufficient to trigger protection
under the dilution provisions of the Lanham Act, provided the
other requirements for dilution protection are met. Precisely which
geographical indications will qualify for such protection, however,
remains unclear.