Certification and Collective: Indicating Geographic Origin

1. Certification and Collective: Indicating Geographic Origin

2. Geographic Signs 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

3. Geographic Signs as Trademarks Geographic designations can be registered as trademarks under certain conditions: 1) not generic; 2) extensive use in commerce on specific goods/services (acquired distinctiveness); and/or 3) obscure or remote place that consumers don’t recognize or believe produces those goods U.S. Trademark Reg. No. 0178829 (1924) US Trademark Reg. No. 0533033 “TILLAMOOK” cheese U.S. Trademark Reg. No. 1527146

4. Certification Marks A certification mark is a type of trademark that can certify, among other things: • geographic origin • (geographic place names can be registered without acquired distinctiveness, unlike registration of trademarks, or collective marks—which must include showing of acquired distinctiveness); U.S. Reg. No. 2853642 U.S. Reg. No. 2448047

5. 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 acquired distinctiveness (or with a disclaimer of the geographic term) in the US, but other geographic signs can be (e.g., design element, 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

6. Generic Terms are NOT registrable A term that has principal significance to consumers as a generic term denoting a type of goods cannot function as a certification mark or a collective mark, a source-identifier. • FONTINA held a generic name of a type of cheese rather than a certification mark indicating regional origin, in view of the fact that non-certified producers outside that region use the term to identify non-certified cheeses).

7. Certification Marks of Regional Origin - Ownership • Governmental bodies or agencies • Individuals • Private organization/association • 1) demonstrate ability to control the use of the mark and • 2) establish that they do not engage in discriminatory practices. • e.g., no economic interest in the actual sales of the product • In many cases, a governmental body or a body operating with governmental authorization is in the best position to be the “owner” because it has authority to exercise control over the use of a geographical term as a certification mark and can prevent abuse or illegal use of the mark.

8. Grounds for Refusal and/or Cancellation of a Certification Mark • If the applicant is not exercising legitimate control over the use of the certification mark, an objection to registration may be filed. A statement of such control is required for the application to be approved for publication. • If the applicant is engaged in, or will be engaged in, the production or marketing of any goods or servicesto which the certification mark is applied, an objection to registration may be filed. A statement that the owner is not engaged in these activities is required for the application to be approved for publication. • If the certification mark owner permits use of the certification mark for purposes other than to certify. • Not a grounds for refusal in examination but available in opposition/cancellation proceeding. • If the certification mark owner discriminately refuse to certify. • USPTO does not generally investigate or refuse registration based on discrimination on the face of the standards provided by the applicant. Discriminatory practices in actual use would provide grounds for cancellation.

9. Exercising Legitimate Control • The applicant must assert that it is exercising legitimate control over the use of the certification mark in commerce. • The purpose of requiring a certification mark owner to control use of its mark is to protect the value of the mark and to prevent the public from being misled. • There is a substantial risk of misleading the public because a certifier makes specific representations about the characteristics of the certified goods or services. Thus, the certification mark owner has an affirmative duty to monitor the activities of those who use the mark in order to ensure the compliance with its standards.

10. Reasonable Efforts The Certification mark owner is required to take reasonable steps to prevent the public from being misled. • It is not necessarily reasonable for the owner to inspect the work of every technician providing auto repair services or every bottle of wine for consistency with the standards; or to require DNA typing on each bag of rice. • It has been considered reasonable in US courts for a company involved in certifying a vast number and variety of products to evaluate and test a representative sampling of those products.

11. Certification Standards • The applicant (certifier) must submit a copy of the standards established to demonstrate how they exercise control over the use of the markand to establish that they are, in fact, engaged in a certification program. • The standards do not have to be original with the applicant. They may be standards established by another party, such as specifications promulgated by a government agency or standards developed through research of a private research organization.

12. Certification Statement • The applicant must also submit a certification statement that will be included on the registration certificate. • “The mark, as used by persons authorized by the certifier, certifies that…[the goods originate from X region]” followed by a description of the characteristics certified by the mark. The standards themselves do not have to be identified in the certification statement.

13. Classification and Identification of Goods and Services • In the U.S., certification marks are classified in either “Class A” for goods or “Class B” for services. • Broader terminology is permitted for certification marks than for regular trademarks, but the wording must be definite enough to inform the public regarding the nature of the goods/services. • If the certification program is limited to specific goods, the identification should be restricted accordingly.

14. The Owner May NOT Be Engaged in Production or Marketing ANTI-USE BY OWNER • The owner of a certification mark does not apply the mark to his or her goods or services. The mark is generally applied by other persons to their goods or services, with authorization from the owner of the mark. • The “anti-use by owner” rule recognizes that the owner cannot be an impartial certifier if it is competing with those it certifies. • The owner may not obtain trademark registration on same goods as those bearing the certification mark. Certification mark must retain its ability to identify and distinguish the certified goods from other goods.

15. Features of Collective Marks • The "collective" itself neither sells goods nor performs services under a collective mark, but the collective may advertise or otherwise promote the goods or services sold or rendered by its members under the mark. • All members of the group use the mark; therefore, no one member can own the mark, and the collective organization holds the title to the collectively-used mark for the benefit of all members of the group.

16. Prior Descriptive Uses Can Defeat Distinctiveness Claim • An application for a regional origin certification mark or collective mark that conflicts with a prior registration (even a composite mark with the geographic term disclaimed) should be refused. • Prior unconsented-to registrations/applications show a lack of control by the certification mark applicant, undermining their claim of control. • And, even as descriptive terms, unless authorized, are likely to confuse consumers as to the source of the goods/services. • However, if applicant can show that prior registrations/applications are authorized/consented to, the certification mark can be registered.

17. 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) decides oppositions and cancellations.

18. Examples of U.S. GIs Protected In the United StatesFlorida 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.”

19. Examples of U.S. GIs Protected In the United StatesVidalia • 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.”

20. Examples of U.S. GIs Protected In the United StatesNapa 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.”

21. Examples of U.S. GIs Protected In the United StatesIdaho • 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.”

22. Foreign GIs Protected In the United StatesCOMTÉ • 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.”

23. Foreign GIs Protected In the United StatesTHAI HOM MALI RICE • Owned by Department of Foreign Trade, Ministry of Commerce of Thailand U.S. Reg. Nos. 2816123 • “The certifier states that the certification mark "THAI HOM MALI RICE" and design as used by authorized persons, certifies that the rice is THAI HOM MALI RICE harvested in Thailand per the standards set by the Ministry of Commerce of Thailand in "Regulations of the Department of Foreign Trade Re: Usage of the Certification Mark of Thai Hom Mali Rice".

24. Examples of Foreign GIs Protected In the United StatesProsciutto 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.

25. 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.”

26. 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.”

27. 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.”

28. 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

29. 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.”

30. For more information… www.uspto.gov Nancy Omelko Office of International Relations United States Patent and Trademark Office Nancy.omelko@uspto.gov 571 272-9300 To see an application online, go to: http://teas.uspto.gov/