Dewey & LeBoeuf LLP Geographical Indications: A United States Perspective AIPPI Hyderabad October...

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Geographical Indications:A United States Perspective

AIPPIHyderabadOctober 14, 2011

Stanton J. Lovenworth Chair, Trademark Practice and Life Sciences Practice

Dewey & LeBoeuf LLP | 2


United States Trademark System and TRIPS GI Requirements

Members must provide the legal means to prevent unauthorized registration or use of trademarks containing a GI for or on non-originating goods:

• May be implemented via trademark system to defend against unauthorized trademark applications OR

• May be implemented via court action to defend against unauthorized uses

US relies primarily on its federal trademark system

• Registration availability for appropriate GIs

Trademarks

Collective marks

Certification marks



Registration barred for inappropriate GIs

A mark may not be registered if it is:

• Primarily geographically deceptively misdescriptive

(1) the primary significance of the mark is a generally known geographic location

(2) the goods or services do not originate in the place identified in the mark

(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark and

(4) the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services



• Primarily geographically descriptive (except for collective or certification marks) -- same as above except the goods do originate in the geographic place

Also: Legal claims under federal and state statute and common law, such as false designation of origin, dilution, passing off, etc.



Why? US Policy is to:

● Promote national GI systems

● Promote GIs as private, not public, rights

● Avoid public money from being used for protecting private rights

● Preserve the role of the consumer as the barometer for protectability


Available Protection in the US

Choices for Protecting a Geographically Distinctive Product:

● Trademark - generally indicates a single commercial source

● Collective mark - owned by a collective and usable only by members - of limited use but similar to certification marks

● Certification mark - goods or services meet the standards of a third party certifier

These marks can be obtained either through

common law by use

by registration, or by both.

NO SUI GENERIS PROTECTION


Trademark

CertificationMark

Collective Mark

LicenseeConsumer

Licensee Consumer

CertifiedParty

CertifiedParty

CertifiedParty

CertifiedParty

MemberAgreement

MemberAgreement

MemberAgreement

MemberAgreement

Trademarks: requires a showing

of extensive continuous and

exclusive use in US commerce

Collective Marks: used by members of a collective – upon a showing of extensive

continuous and exclusive use in US

commerce

Certification Marks: certifier sets

standards that users must meet and

extensive continuous and

exclusive use in US commerce


Trademark

PROS

● Commercial royalties

● No set standards

● Owner may use or license

CONS

● Single source (or control of use by licensees)

● May not be primarily geographically descriptive, unless there is “secondary meaning”


Collective Mark

PROS

● May be primarily geographically descriptive

● Owner(s) may use

● Possess the primary attributes of a trademark – e.g., right to sue for infringement and to oppose conflicting marks (not necessarily identical)

● Standards must be applied

CONS

● Only members of collective may use



Certification Mark

● Certification marks are the form taken by most GIs in the US

● They serve a unique purpose within US trademark system

● Certification marks exist in over 60 countries

● US has approximately 265 live geographic-oriented certification marks or pending applications

● European Union has over 1,000 registered GIs


Certification Mark

PROS

● May be primarily geographically descriptive

● No discrimination


CONS

● Owner may not use

● Owner may not apply for an EU Gl (use vs non-use by owner)

● No discrimination



Trademark vs. Certification Mark

● Darjeeling (tea) / Colombian (coffee)

● Ethiopia

Harrar

Sidamo

Yirgacheffe


Certification Program

Causes for Cancellation:

• Lack of control over the mark

Extent of enforcement program?

• Production or marketing by owner of the mark of goods and services under the mark

Structure for other purposes?

• Allowing the mark to be used for purposes other than certification

Extends to trademark use or advertising?

• Discriminately refusing to certify conforming goods

May royalties/fees be collected?

In addition, as with all trademarks, cancellation due to prolonged non-use (or intent to discontinue use)



Standards

● The owner must adopt standards if there is a quality element to the certification

● Where do the standards come from?

- They may be designated and adopted by the owner (e.g. a cooperative, association or consortium)

- They may incorporate standards set forth in a statute or regulations



● Hawaiian Coffee:

– Multiple regional certification marks (KONA, MAUI, etc.)

– Multiple standards and marks (EXTRA FANCY, FANCY, etc.) depending upon grade of coffee

– The government of Hawaii has prepared a summary chart of these standards, reproduced on the next page


MADE IN ALASKA - Certification Requirements

(1) locates and maintains the handicraft or product making or manufacturing operation with the state:

(2) produces a handicraft in the state or a product in which the value-added processes were accomplished in the state;

(3) uses Alaska resource and materials in the manufacturing or production of the product or handicraft, or provides documentation that the raw resources and materials do not exist with the state either in the form, quality, or quantity required for the production of the product or the handicraft;

(4) has a current Alaska business license if required by AS 43.70;

(5) submits a completed application and the required annual fees;

(6) permits the inspection of the production or manufacturing site by the commissioner or a MADE IN ALASKA agent; and

A permit to the MADE IN ALASKA certification mark will be issued to an applicant who:


MADE IN ALASKA - Certification Requirements (cont’d)

(7) complies with the requirements of AS 45.65.010—45.65.070 and 3AAC 58.005--.900 to determine the eligibility of the product.

A finished product that is only partially manufactured within the state may be authorized to use the MADE IN ALASKA emblem if:

(1) the producer demonstrates that no manufacturing facility exists in this state with the capacity or expertise to do the work being accomplished outside the state; the commissioner or MADE IN ALASKA agent will not consider cost alone as a valid justification for using out-of-state manufacturing facilities; and

(2) the majority of the value-added processes are accomplished in the state. The printing industry is not eligible for a permit to use the MADE IN ALASKA emblem for routine printing projects that involve printing or duplication or items or writings not created by the printer.


NAPA VALLEY WINE – Certification Standards

The Certification Mark certifies that 100% of the wine is derived from grapes grown in the Napa Valley AVA and that 100% of the winemaking, from the crushing of the grapes through the bottling of the wine, occurred in the Napa Valley AVA.

Use of the Certification Mark is limited to wine identified as Class 1 (Grape Wine), Class 2 (Sparkling Grape Wine), or Class 3 (Carbonated Grape Wine) as defined in Title 27, Chapter 4, Section 4.21 of the Code of Federal Regulations.

Any spirit which is added to these wines shall be derived from grapes grown in the Napa Valley AVA and/or from wine which meets the above standards, the distilled spirits operations as defined in Title 27, Part 19, Section 19.11 of the Code of Federal Regulations shall occur in the Napa Valley AVA.

Finally, the labels of certified wine must include Napa Valley as the appellation or origin, either alone or in conjunction with another qualifying appellation (e.g., Stags Leap District – Napa Valley), in accordance with applicable laws and regulations.

Collectively, these are referred to as the Certification Standards.


Correcting problems with the US certification system as a first step

● PTO errors in approving conflicting trademarks

● Limited protection

● Cost

● Non-use by owner


Proposals for Making US Certification Marks More Attractive and User-Friendly

1. Problem: PTO history of registration of marks which include or are confusingly similar to GI certification mark

Proposed Solution: Registration Restrictions

● PTO to police its approval of new registrations which conflict with existing certification marks

● Applications for trademarks which include a registered certification mark to be administratively denied registration


Proposals

PROS

● Limit obligation to challenge even most obviously offending marks

CONS

● Creates separate standard for certification marks

● PTO can already refuse on basis of pre-existing registration


Proposals

2. Problem: Limited Protection

Proposed Solution: Extended Protection for Certification Marks

● Extend certification mark protection to include phrasing such as "like" or "style" or "kind" (already mandated by TRIPS for wines and spirits)


Proposals

PROS

● Increased protection for certification marks to generate increased rewards for producers in view of costs

CONS

● Controversial in US; would require Congressional action


Proposals

3. Problem: Enforcement Costs

Proposed Solution:

● Attorney's fees to the prevailing party in oppositions


Proposals

PROS

● Avoid frivolous applications/oppositions

CONS

● Highly unusual in US context

● Already available in district court trademark litigations, but only under “exceptional” circumstances


Proposals

4. Problem: Non-use by owner

Proposed Solution:

● Permit the owner of a certification mark to use the mark


Proposals

PROS

● Financing for expenses (maintaining and enforcing the mark)

● Eliminate the conflict with the EU system for GIs

● Note: discrimination in certifying is already grounds for cancellation

CONS

● Would require significant changes in current law.● Who will oversee the certification process objectively?

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