Geographical indications

TRIPS does not require members to implement a separate system of protection for GIs–although most WTO members have, or are planning to. Because the United States was protecting GIs decades before TRIPS, there was no need to develop a new system specific to GIs. Further, practitioners, stakeholders and courts were already familiar with the trademark system. So, the United States decided to continue to protect GIs as trademarks through the United States Patent and Trademark Office (USPTO) register and under United States common law, which is discussed below.

Specifically, Section 4 of the Trademark Act of 1946 (as amended) provides protection for GIs as certification and collective marks indicating regional origin. And, although the vast majority of GIs are protected under Section 4, GIs can also be protected as trademarks with an adequate showing of acquired distinctiveness through use.

GIs can be viewed as a geographic subset of trademarks serving the same function as trademarks. They are source identifiers (geographic source of production); measures of quality; and can be valuable business interests. The USPTO is an intellectual property agency responsible for protecting GIs. In many other countries, agricultural departments decide registrability. This is because the majority of GIs are food and agricultural products, due to the direct connection with the geographic area they are named for. However, the universe of GIs includes other products such as textiles, handicrafts, cutlery, as well as services, as long as a nexus to the geographic area can be established.

Importantly, in addition to ex officio refusal based on prior existing rights, the United States trademark system requires ex officio refusal or disclaimer of the generic term(s). A disclaimer indicates that no exclusive rights are claimed to any generic terms. In addition, the register can be searched before filing and application and registration files are viewable online. All GIs are published for opposition; all opposition proceeding documents can be viewed online. The GIs must be used in commerce–at the time of registration for domestic applicants; and no later than six-and-a-half years after registration for foreign applicants. Registrations can be cancelled on certain grounds and must be renewed–just like trademark registrations. Further, there is an opportunity to appeal a USPTO administrative decision to a United States court. The USPTO register and website provide total transparency from the time of filing the application through post registration, including Trademark Trial and Appeal Board (TTAB) proceedings and subsequent appeals.

Generally, geographic matter cannot be considered inherently distinctive. However, Section 2(e)(2), providing for refusals based on geographic descriptiveness, specifically exempts certification marks indicating regional origin. For example, the TTAB found the term DARJEELING to be inherently distinctive as a certification mark “as it inherently identifies the geographic source of the tea.” Tea Board of India v. The Republic of Tea, Inc., 80 U.S.P.Q.2d 1881, 1899 (TTAB 2006). If a certification mark indicating regional origin includes a generic term, a disclaimer of that term will be required. For example, TEA would require a disclaimer in the certification mark for DARJEELING TEA. A disclaimer will also be required for a generic geographic term. These geographic terms originally designated where the product once came from but now it can be produced anywhere. For example, brie cheese originally came from Brie, France, but now it is produced anywhere, therefore, it is generic for a type of cheese. So, if BRIE is part of the mark, the identification of goods must be limited to brie cheese because the mark can only be used on that specific product; otherwise, it could deceive the consumer as to the type of cheese.

Beyond what is required for a trademark or service mark application, a complete application for a certification mark indicating regional origin includes: a statement indicating what the mark is certifying; a statement that the applicant (certifier) is the owner of the mark and is not using the mark in commerce on the product or services, but is authorizing use by authorized users; a copy of the standards of production, which include the delineated area of production; and specimens showing use by an authorized user. The certifier can only use the mark to advertise or promote recognition of the certification program and cannot, itself, produce or sell the certified goods or services.

When a geographic term or design is used to certify regional origin, the owner of the certification mark is usually a governmental body or government-authorized entity because it is most able to exert the necessary control to ensure all qualified parties in the region are free to use the designation and to discourage improper or otherwise detrimental uses of the certification mark.

It is equally important that the owner exercise control over use of the geographic certification mark and on products to ensure they conform to the certification standards. Failure to monitor use of the geographic term can lead to the designation becoming the common name for a product that can be produced anywhere. For example, brie and camembert once only came from Brie and Camembert, France, but now these cheeses can be legitimately produced anyway.

The applicant (certifier) must submit a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services. The standards do not have to be originally created by 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. Learn more about geographic certification marks. 

GIs can also be protected as collective marks and trademarks. But, unlike certification mark registration, the owners of collective marks and trademarks must show that the geographic term has acquired distinctiveness through use. If the owner cannot prove that the geographic term has acquired distinctiveness, the owner must disclaim the geographic term. An example of a GI protected as a collective mark is shown to the right. It is a depiction of a ewe’s head and PECORINO ROMANO–with the wording disclaimed. An example of a GI protected as a trademark is SIDAMO. The country of Ethiopia, as owner of the mark, showed that the geographic term SIDAMO had acquired distinctiveness for a specialty coffee sold in the United States since 1928.

USPTO registration is not required in order for a GI to be protected in the United States. Rights acquired through substantially exclusive use for a significant period of time are also recognized. For example, the USPTO’s Trademark Trial and Appeal Board held that COGNAC is protected as a “common law” certification mark in the United States. Institut National Des Appellations v. Brown-Forman Corp, 47 USPQ2d 1875, 1884 (TTAB 1998) (“Cognac” is a valid common law regional certification mark, rather than a generic term, since purchasers in the United States primarily understand the “Cognac” designation to refer to brandy originating in the Cognac region of France, and not to brandy produced elsewhere, and since opposers control and limit use of the designation which meets certain standards of regional origin).

Some EU GIs–when encountered outside the EU–are the names of types of products rather than a specialty product from a specific area. For example, ASIAGO is a GI in the EU but it is the common name for a type of cheese in the United States and in other countries. When European farmers migrated to the United States, they continued to produce the cheese and wine they made in Europe. They called these products by the names used in Europe: feta, asiago, munster, gorgonzola, and bologna, for example. The same was true for migrant farmers from Europe to other countries such as Australia, New Zealand, Canada, and Argentina.

One important aspect of protecting GIs through a trademark system is preserving generic terms. Unfortunately, TRIPS does not require members to refuse to protect GIs even when they are the common name of the product. The impact on international trade is quite extensive. Once TRIPS members agree to protect EU GIs such as FETA, ROMANO, ASIAGO, PARMESAN, FONTINA, GORGONZOLA, and others, those markets for both domestic and import producers are routinely phased out. In other words, the producers using those common names will be given a certain period of time in which to discontinue use of the terms.

The USPTO issued guidance for examination of applications containing geographic generic terms for cheese and processed meat. 

Another international treaty on the protection of GIs entered into force on February 26, 2020: the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. The United States has no intention to join this treaty unless further amendments are introduced to accommodate a trademark system for protecting GIs.