United States Patent and Trademark Office OG Notices: 06 June 2006
Exam Guide 2-06
Geographical Indications
Used on Wines and Spirits
Issued May 9, 2006
Introduction
The purpose of this exam guide is to clarify the circumstances under
which an examining attorney must refuse to register a mark for wines or
spirits that includes a geographical indication. This exam guide supersedes
current TMEP Sec. 1210.08.
Section 2(a) of the Trademark Act, 15 U.S.C. Sec. 1052(a), prohibits
the registration of a designation that includes "a geographical
indication which, when used on or in connection with wines or spirits,
identifies a place other than the origin of the goods."1 The term "spirits"
refers to any distilled alcoholic beverage (e.g., gin, rum, vodka, whiskey,
brandy).2 The procedures set forth below apply if the applicant's
identification of goods 1) specifically includes wines or spirits, or
2) describes the goods using broad terms that could include wines or
spirits (e.g., alcoholic beverages).
The provision does not apply to geographical indications that the
applicant first used on or in connection with wines or spirits prior to
January 1, 1996, and does not apply to designations used on or in
connection with beer. The provision also does not apply to goods that are
not wines or spirits, but are partially composed of wines or spirits (e.g.,
wine vinegar; wine sauces; wine jelly; rum balls; bourbon chicken).
Examination procedure when the goods do not originate in the named place
A designation is considered a geographical indication under Sec. 2(a)
if it identifies the applicant's wines or spirits as originating in a
territory known for a given quality, reputation, or other characteristic
associated with wines or spirits.3 A mark for wines or spirits that
includes a geographical indication is unregistrable if 1) purchasers would
erroneously believe the goods originate in the relevant geographic
location; and 2) the quality, reputation, or characteristic associated with
wines or spirits from that location would materially affect the purchaser's
decision to buy the goods.
To establish a prima facie case for refusal to register a mark under the
"wines and spirits" provision of Sec. 2(a), the following is required:
(1) the primary significance of the relevant term or design is
geographic, e.g., a place name, abbreviation, nickname, or symbol; or
an outline or map of a geographic area (see TMEP Sec. 1210.02(a) and
Sec. Sec. 1210.02(b) et seq.);
(2) purchasers would be likely to think that the goods originate in the
geographic place identified in the mark, i.e., purchasers would make
a goods/place association (see TMEP Sec. Sec. 1210.04 et seq.);
(3) the goods do not originate in the place identified in the mark (see
TMEP Sec. 1210.03);
(4) a purchaser's erroneous belief as to the geographic origin of the
goods would materially affect the purchaser's decision to buy the goods
(see TMEP Sec. 1210.05(b) et seq.); and
(5) the mark was first used in commerce by the applicant on or after
January 1, 1996.
Section 2(a) is an absolute bar to the registration of false geographical
indications used on wines or spirits on either the Principal Register or
the Supplemental Register. Neither a disclaimer of the geographic term or
design nor a claim that it has acquired distinctiveness under Sec. 2(f) of
the Trademark Act, 15 U.S.C. Sec. 1052(f), can obviate a Sec. 2(a) refusal
if the mark consists of or includes a geographical indication that
identifies a place other than the true origin of the wines or spirits.
Requirement for first use on or after January 1, 1996
For all applications filed under Sec. 1(b), Sec. 44, or Sec. 66(a)
of the Trademark Act, 15 U.S.C. Sec. 1051(b), Sec. 1126, or Sec. 1141f(a),
or for applications filed under Sec. 1(a) of the Trademark Act, 15 U.S.C.
Sec. 1051(a), where the application fails to indicate the applicant's date
of first use of the mark in commerce, the examining attorney should presume
that the applicant's first use of the mark in commerce is or will be on or
after January 1, 1996, unless the application record indicates otherwise.
If the examining attorney determines that a mark featuring a false
geographical indication was in use prior to January 1, 1996, the examining
attorney should refuse registration because the mark is primarily
geographically deceptively misdescriptive under Sec. 2(e)(3) of the
Trademark Act, 15 U.S.C. Sec. 1053(e)(3), and deceptive under Sec. 2(a).
See TMEP Sec. Sec. 1210 et seq.
Examination procedure when a geographic term or design is generic for
the goods
When a geographic term or design in the mark is generic for a type of
wine or spirit, the examining attorney must refuse registration under
Sec. (2)(e)(1) on the Principal Register or Sec. 23 on the Supplemental
Register, as appropriate, because the term or design is generic. See TMEP
Sec. 1209.02. Or, if appropriate, the examining attorney must require a
disclaimer of the generic term or design. See TMEP Sec. Sec. 1213 et seq.
A geographic term or design is considered generic if U.S. consumers
view it as designating the genus of the goods, rather than as a geographic
origin. See TMEP Sec. 1209.01(c) et seq. If a geographic term or design
is used in connection with wines or spirits, the examining attorney may
submit a search request to the Trademark Law Library to determine whether
there is evidence indicating that the term or design is generic for the
applicant's goods.
Examination procedure when the goods originate in the named place
If the wines or spirits originate in the identified place, and the
primary significance of the mark is a generally known geographic location,
the examining attorney should presume the requisite goods/place
association, and refuse the mark under Sec. 2(e)(2) as geographically
descriptive, or require disclaimer of the geographic term, as appropriate.
See TMEP Sec. 1210.01(a) and TMEP Sec. 1210.06(a).
Sometimes a geographic term is used to certify the geographic origin of
wines or spirits. If the proposed mark is used to certify the goods, the
applicant may convert the application to one for a certification mark of
regional origin under Sec. 4 of the Trademark Act, 15 USC Sec. 1054. See
TMEP Sec. 1306.06(g)(vi). See also TMEP Sec. 1210.09 and TMEP Sec. 1306.02
et seq. for a discussion of geographic certification marks.
Comparison of refusals
The following chart highlights the differences between the refusals that
may apply when a geographical indication used on or in connection with
wines and spirits identifies a place other than the true origin of the
goods:
Refusal Marks it Standard Options Office action
applies to procedure
Sec. 2(a) Marks first 1) Primary Total bar to If a Sec.2(a)
"wines and used in significance registration "wines and
spirits" commerce is geographic; on Principal spirits"
on or after 2) the goods do or Supplemen- refusal is
1/1/96. not originate tal Register. issued, then
in the place; Disclaimer Sec. 2(a)
3) purchasers is not an deceptive and
would believe option. Sec. 2(e)(3)
the goods come refusals are
from the place; not necessary.
and
4) the origin
of the goods
would be a
material factor
in the purchasing
decision.
Sec. 2(a) All marks. Same as above. Total bar to If a Sec. 2(a)
deceptive registration "wines and
on Principal spirits"
or Supplemen- refusal is
tal Register. inapplicable
Disclaimer because the
is not an mark was first
option. used prior to
1/1/96, then
Sec. 2(a)
deceptive and
Sec. 2(e)(3)
refusals may
be issued, if
applicable.
2(e)(3) All marks. Same as above. Total bar to Same as above.
primarily registration, If the
geographically unless the applicant
deceptively applicant has use in
misdescriptive alleges use commerce
in commerce before
before 12/8/93, and
12/8/93 amends to the
and amends Supplemental
to the Supp- Register, or
lemental Reg- establishes
ister, or that the
establishes mark acquired
that the mark distinctive-
acquired dis- ness before
tinctiveness 12/8/93, then
under Sec. the Sec.
2(f) before 2(e)(3)
12/8/93. refusal will
be withdrawn,
but the Sec.
2(a) deceptive
refusal will
be continued.
TMEP Sec.
1210.05(a).
Generic All marks. Mark designates Total bar to Refusal of
a genus of registration registration
wines or on Principal on the
spirits rather or Supple- Principal
than geographic mental Register under
origin. Register. Sec. 2(e)(1),
Disclaimer or on the
may be an Supplemental
option. Register under
Sec. 23, or
requirement
for dis-
claimer, if
appropriate.
1 The provision regarding geographical indications used on wines and
spirits was added by the Uruguay Round Agreements Act, implementing
the Trade Related Intellectual Property ("TRIPS") portions of the General
Agreement on Tariffs and Trade ("GATT"). Article 23 of the World Trade
Organization's Agreement on Trade-Related Aspects of Intellectual Property
Rights ("TRIPS Agreement") prohibits the registration of geographical
indications for wines or spirits that identify a place that is not the
origins of the goods.
2 This is the ordinary dictionary meaning of the term. Neither the Trademark
Act nor the TRIPS Agreement define the term "spirits."
3 In implementing the TRIPS Agreement through the Uruguay Round Agreements
Act ("URAA"), Pub. L. 103-465, 103 Stat. 4809, Congress approved a
Statement of Administrative Action ("SAA") that provided, in part:
"Geographical indications" are defined in TRIPS Article 22.1 as
"indications which identify a good as originating in the territory of a
Member, or a region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially attributable
to its geographical origin." The Administration expects that this
definition will be applied in the context of trademark registration and
that a "geographical indication" as used in this provision will be
interpreted to comprise only those areas which have a reputation for being
associated with the specific goods at issue. Obscure areas or those that
do not have a reputation or other characteristics generally associated
with wines or spirits should not be prohibited from registration (emphasis
added).
Statement of Administrative Action, Agreement on Trade-Related Aspects
of Intellectual Property Rights, H. Doc. 103-316, Vol. 1, at 1000, Sec.
B.1.e, (Sept. 27, 1994). 19 U.S.C. Sec. Sec. 3511(a)(2) and 3512(d).