The U.S. Geographical Indications System: Building GI Brands Office Of International Relations United States Patent and Trademark Office Tel: (571) 272-9300

What are Trademarks? Words, designs, numbers, letters, colors, three-dimensional forms, sounds, scents, etc. APPLE, XEROX, IDAHO, FLORIDA, 311, the color pink, shape of a Coke bottle… Trademark laws protect the commercial investment by the trademark owner to associate sign with goods/services in the minds of consumers.

What are Geographical Indications (GIs)? Indications that “identify a good as originating in the territory of a WTO Member where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” GIs are intellectual property. Therefore, a geographic term is merely a place name and not intellectual property until it is used to identify a good or service with certain characteristics (including origin) rather than merely the place where the goods or services originate, and consumers use that sign as material information when making purchasing decisions.

Trademarks and Geographical Indications Geographical indications and trademarks serve the same functions: source-identifiers quality guarantees business interests …so the United States protects them under the same system – the trademark system – as trademarks, certification marks, or collective marks.

Trademark System Provides Maximum Flexibility and Maximum Protection for GIs Common Law Protection: Rights accrue as soon as the GI is used in commerce on goods or services Federal Registration: provides additional benefits such an evidentiary presumption of ownership, validity, and right to use, border enforcement, right to use ® for notice, and registration can be used as a basis for obtaining registration in foreign countries. U.S. Reg. No. 0987576 SOLINGEN cutlery “COGNAC” common-law certification mark Institut National Des Appellations v. Brown-Forman Corp, 47 USPQ2d 1875, (TTAB 1998)

What do we call GIs in the US? Flexible US system gives you several options: 1) Trademarks - under certain conditions 2) Certification Marks - certifier sets standards that users must meet 3) Collective Marks – used by members of a collective U.S. Certification Mark Reg. No. 1414598 “JAMAICA BLUE MOUNTAIN” U.S. Collective Mark Reg. No. 0889138 Black Rooster design U.S. Trademark Reg. No. 1266492

GIs as Trademarks Geographic designations can be registered as trademarks under certain conditions: 1) not generic; 2) extensive use in commerce on specific goods/services; and/or 3) obscure or remote place that consumers don’t recognize or believe produces those goods Trademark protection provides the flexibility for all kinds of indications of geographic origin to be protected. U.S. Trademark Reg. No. 0178829 (1924) US Trademark Reg. No. 0533033 “TILLAMOOK” cheese U.S. Trademark Reg. No. 1527146

GIs as Certification Marks A certification mark is a type of trademark that can certify: geographic origin (geographic place names can be registered without extensive use, unlike with trademarks); materials used, quality, method of manufacture, and accuracy; or products made under the auspices of, or by members of a specific trade union or organization. Certification mark can be cancelled if the owner discriminately refuses to certify goods/services. U.S. Reg. No. 2853642 U.S. Reg. No. 2448047

Collective Marks A collective mark indicates commercial origin of goods or services in members of a group rather than origin in one party. Geographic terms cannot be registered as collective marks without extensive use in commerce, but other geographical indications can be (e.g., outline of a region or landmark, a fanciful name, or name of the collective). U.S. Collective Mark Reg. No. 0889138 Black Rooster design U.S. Collective Mark Reg. No. 1097779 Frankfurter Äpfelwein

Opposition and Cancellation Available to anyone: 1) domestic or foreign, 2) who would be damaged by the registration, or the continued existence of a U.S. registration. Opposition is used to prevent the issuance of a registration of a mark. Cancellation is used to cancel an existing registration of a mark. Trademark Trial and Appeal Board (“TTAB” or “Board”), of the U.S. Patent and Trademark Office (USPTO).

Examples of U.S. GIs Protected In the United States Florida Citrus Owned by the State of Florida’s Department of Citrus U.S. Reg. No. 1559414 “The mark certifies that the goods bearing the mark either consist of citrus fruit grown in the State of Florida, under specified standards, or are processed or manufactured wholly from such citrus fruit.”

Examples of U.S. GIs Protected In the United States Vidalia VIDALIA for onions Owned by the State of Georgia’s Department of Agriculture U.S. Reg. No. 1709019 “The certification mark is intended to be used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia onion act of 1986.”

Examples of U.S. GIs Protected In the United States Napa Valley Owned by the Napa Valley Reserve Certification Board U.S. Reg No. 2853642 “The certification mark, as used by persons duly authorized by Certifier, certifies that the goods meet the Certifier's production specifications and emanate from a specific geographic region, namely, the Napa Valley American Viticultural Area located in California.”

Examples of U.S. GIs Protected In the United States Idaho IDAHO for potatoes Owned by the State of Idaho Potato Commission U.S. Reg No. 2914308 “The Certification mark, as used by authorized persons, certifies that goods identified by the mark are grown in Idaho and that the goods conform to quality, grade and other requirements, pursuant to standards designated by the Applicant.”

Foreign GIs Protected In the United States COMTÉ Owned by Comite Interprofesionnel du Gruyere de Comte U.S. Reg. Nos. 1473687 “The certification mark is used by persons authorized by the certifier to certify that the goods come from the Comté division (an administrative division of France); that the goods are only made from milk that comes only from the Montbeliarde breed of dairy cattle, which are fed fresh grass or dry hay; and that the cheese meets the hygiene, production methods or standards and appearance methods or standards of the certifier.”

“Parma Ham” is also registered in English—U.S. Reg. No. 2014628. Examples of Foreign GIs Protected In the United States Prosciutto Di Parma Owned by Consorzio Del Prosciutto Di Parma Association U.S. Regs. Nos. 2014629; 2014628; 2014627 “The certification mark is used by persons authorized by the certifier to certify the regional origin of the product to which the mark is applied.” “Parma Ham” is also registered in English—U.S. Reg. No. 2014628.

Examples of Foreign GIs Protected In the U. S Examples of Foreign GIs Protected In the U.S. Vino Nobile Di Montepulciano Owned by the Consorzio del Vino Nobile di Montepulciano; U.S. Reg. No. 2251165. “The certification trademark, as used by persons duly authorized by Certifier, certifies the region or origin of the goods as emanating from a specific geographic region, namely, Montepulciano, a region in Italy.”

Examples of Foreign GIs Protected In the U.S. Darjeeling Owned by Tea Board of India U.S. Reg. No. 2,685,923 Word Mark (Word “DARJEELING” protected) “As used by authorized persons, certifies that the tea contains at least 100% tea originating in the Darjeeling region of India and that the blend meets other specifications established by the certifier.”

Examples of Foreign GIs Protected In the United States Roquefort Owned by the Community of Roquefort U.S. Reg. No. 571,798 (Registered March 10, 1953) “The certification mark is used upon the goods to indicate that the same has been manufactured from sheep’s milk only, and has been cured in the natural caves of the Community of Roquefort, Department of Aveyron, France.”

Owned by the Consorzio Vino Chianti Classico Association; Examples of Foreign GIs Protected In the United States –Collective Marks The protected mark is the design incorporating the Black Rooster with the words “Chianti Classico Consorzio Vino ChiantiClassico”; Owned by the Consorzio Vino Chianti Classico Association; U.S. Reg. No. 0889138

Examples of Foreign GIs Protected In the United States Examples of Foreign GIs Protected In the United States Collective Marks “Frankfurter Apfelwein”; Owned by Verband Der Deutschen Fruchtwein-Und Schaumwein-Industrie E.V.; U.S. Reg. No. 1097779; “The mark certifies origin in the city of Frankfurt in the Federal Republic of Germany.”

Exporting U.S. GIs Register TMs and GIs in your export markets! But tread carefully: there is currently no international consensus on how to protect GIs at the national level.

No International Consensus Conflicts between GIs and trademarks: Budvar v. Budweiser Scope of Protection: misleading use or confusing use? Eligible Subject Matter: country names, fanciful terms, logos? Generic Terms: champagne? Territoriality Protection through the Trademark System answers all of those questions!

International Controversy: Agriculture Interest or Intellectual Property? WTO Talks on GIs: AG Committee and TRIPS Council EU CAP Reform Subsidy Shift

WTO Proposals Extension of TRIPS Article 23 beyond wines and spirits International Register of GIs, universal, mandatory effect Claw-back of Generic Terms

USG Efforts Education of U.S. businesses Outreach to foreign governments Free trade agreement negotiations Proposal for Multilateral System Database

Thanks for your attention! For more information, contact: Amy Cotton Office of International Relations United States Patent and Trademark Office Amy.cotton@uspto.gov 571 272-9300 www.uspto.gov To file an application online, go to: http://teas.uspto.gov/