Geographical Indications to Protect IP:

Overcoming Challenges in Registering and

Enforcing GIs

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THURSDAY, OCTOBER 18, 2018

Presenting a live 90-minute webinar with interactive Q&A

Rebeccah Gan, Partner, Wenderoth Lind & Ponack, Washington, D.C.

J. Scott Gerien, Partner, Dickenson Peatman & Fogarty, Napa, Calif.

Mary Witzel, Attorney, Dunlap Bennett & Ludwig, Leesburg, Va.

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October 18, 2018

GEOGRAPHICAL INDICATIONS TO PROTECT IP

FRAMEWORK FOR GI PROTECTION; THE NAPA VALLEY STORY

TRIPS – Article 22

Geographical indications are, for the purposes of this Agreement, 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.

6

TRIPS – Article 22

Geographical

Indications

Geographical

Certification

Marks

Appellations/

Denominations

Of Origin

7

TRIPS – Article 22

WTO Members shall provide the legal means for interested parties to prevent:

➢ The use of any means in the presentation of product that would mislead the public as to geographic origin.

➢ The registration of a mark containing a geographical indication if use of the GI in the mark would mislead the public as to geographic origin.

8

Lanham Act Post-TRIPS Article 22

➢ Requirements of Article 22 already in place in Lanham Act by virtue of Section 2(a) for registrations and 43(a) for use.

➢ Article 22 did not require any amendment to Lanham Act.

9

GI Protections in U.S. - AVAs

American Viticultural Areas, Petitions - 27 CFR 9.12

Establishment of an AVA in generalName evidence

i. Name usage

ii. Source of name and name evidence

Boundary evidence

Distinguishing viticultural featuresi. Climate, Geology, Soils, Physical features, Elevation

Maps and boundary descriptioni. U.S.G.S. topographic maps

ii. Boundary description

10

GI Protections in U.S. –Geographical Certification Marks

11

Worldwide Protection for NAPA VALLEY

12

Jurisdictions of Protection for NAPA VALLEY

Australia (CM)

Brazil (GI)

Canada (GI)

China (GI and CM)

EU (GI)

India (GI)

Israel (CM)

New Zealand (CM)

Norway (CM)

Singapore (CM)

South Korea (CM)

Taiwan (CM)

Thailand (GI)

Turkey (CM)

U.S. (CM)

U.K. (CM)GI = Geographical Indication Registration

CM = Certification Mark Registration

13

Europe Union Experience

➢ NVV applied immediately following the WTO decision against EU for not opening its GI system to protection of non-member GIs

➢ No application system in place when filed, special treatment by EU DG Ag

➢ Following registration EU developed system for foreign GI registration, difficult standards

➢ No GI registered under EU system since, only through bi-lateral agreements

14

China Experience

➢ Could not register as certification mark until U.S. certification mark registration issued

➢ Napa Valley first foreign wine GI registered in China by AQSIQ

➢ $100k+ in costs, travel, attorneys’ fees, expert fees

➢ Seven years

➢ Challenges of being first

15

Switzerland Experience

➢ Madrid extension of certification mark to CH

➢ Treated as equivalent to Swiss guarantee mark

➢ Refused, geographic terms descriptive, not registerable without acquired distinctiveness evidence

➢ Potential appeal to Federal Supreme Court

➢ Potential path through Canton system for recognizing wine appellations

16

Chile Experience

➢ Refusal of both GI and Certification Mark Apps

➢ GI refused for failure to demonstrate sufficient connection between product characteristics and region, expert report required

➢ Certification mark refused because “Napa Valley” was found to be geographically descriptive

17

Vietnam Experience

➢ GI application filed over 10 years ago

➢ Refused during TPP negotiations on basis U.S. needed to provide some equivalent concession

➢ No action taken during pendency of TPP, NOIP said would not issue until TPP signed

➢ Unclear what will happen now given Trump administration position on TPP

18

Russia Experience

➢ AOC initially refused at examination stage and Rospatent Board of Appeal

➢ Basis is AVA not evidence of appellation, certification mark not evidence of appellation, and two things are contradictory

➢ NVV appealed to IP Court, remanded to Rospatent saying certification mark could also be appellation

➢ Rospatent refused application, not meet requirements of appellation

19

Multilateral System

NVV supports Lisbon, but it is beyond control of NVV

Multilateral system for registration of geographical indications for wine per TRIPS

Madrid-Protocol type system

INTA Proposal for Multilateral System http://www.inta.org/Advocacy/Documents/INTAProposalforMultilateralGIRegister.pdf

20

Resources on International GI Protection

➢ INTA publishes country guides for members on geographical indication protection systems:

http://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspx

➢ WTO publication

https://www.origingi.com/images/stories/PDFs/English/E-Library/geographical_indications.pdf

21

J. SCOTT GERIEN

PARTNER, INTELLECTUAL PROPERTY

DICKENSON PEATMAN & FOGARTY

1455 FIRST STREET, SUITE 301 | NAPA, CA 94559T: 707.261.7070 | F: 707.255.6876

SGERIEN@DPF-LAW.COM | WWW.DPF-LAW.COM

22

GEOGRAPHICAL INDICATIONS FOR PROTECTING IP

October 2018

Geographical Indications

GIs identify a product’s regional origin where a specific characteristic of the good is due to that origin.

24

Geographical Indications

City

Territory

State

Region

Country

May include

a logo

25

What type of products are covered?

Wine and spiritsBeerCheeseVinegarMeat and seafoodSpicesCoffeeFruit and vegetables

BreadPastriesSausagePizzaApple pie filling

. . . and possibly non-food items like crafts, textiles, raw materials

26

How does regional origin affect products?

Natural Factors• Climate• Geographic features of the area• Quality of the water, soil or animal feed

Human Factors• Traditional knowledge• Preparation methods

27

Not just indications of geographic source

NOT GIs◦ "Made in Italy"

◦ "Product of India"

They don't indicate any particular characteristic of the goods.

28

No uniform law governs GIs

• There is no uniform international approach to GIs, but TRIPS signatories must protect them

• USA protects GIs through Lanham Act

• European Community protects GIs, member states differ

• Other countries have national laws

29

Background of Protection

Paris Convention◦ Recognized appellations of origin

TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights)◦ Protects GIs

Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration◦ Protects appellations of origin and now also GIs

30

TRIPS

GIs are "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."

- Article 22.1

31

TRIPS

✓TRIPS signatories must provide remedies against

- false and misleading use of GIs as to geographical origin of products

- any use that amounts to unfair competition

✓Valid good faith prior trademark rights – still valid even if similar GI

✓Additional protection for GIs for wines and spirits

162 signatories, including US and EU

32

Lisbon Agreement

An appellations of origin is a "geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors."

- Article 2(1)

33

Lisbon Agreement

Signatories must protect against "any usurpation or imitation" of appellations of origin

Not all GIs are appellations of origin◦ Only if the quality/reputation/other characteristic of the

product is due "exclusively or essentially" to the geographic environment

28 signatories, not U.S. or EU, but some EU member states, including France, Italy, Portugal

34

Registered Lisbon Appellations of Origin

France, 509

Italy, 109Czech Republic, 76

Bulgaria, 51

Other countries, 161

0

100

200

300

400

500

600

France Italy Czech Republic Bulgaria Other countries

35

Lisbon Agreement – 2015 Amendment

Geneva Act

▪ Will add protection for GIs, so less of a connection is required between the product and the geographical origin

▪ Includes non-food items such as pottery and cloth

36

GIS

Indicate source

Indicate a level of quality

Exclude others

TRADEMARKS

Indicate source

Indicate a level of quality

Exclude others

37

GISIdentify geographic origin of product

Under collective control

Cannot be transferred

Necessarily descriptive

TRADEMARKSIdentify a single source of production

Under single control

Can be licensed or transferred with goodwill

Best if arbitrary

38

USPTO refuses to register "primarily geographically descriptive" marks

Geographic term generally not registrable without secondary meaning if

➢ primary significance is place name known to public

➢ public would believe goods originate from that place

➢ goods or services actually come from that place

39

But U.S. does protect GIs –as regional certification marks

People, nations, states, municipalities can register certification marks that include "indications of regional origin" (15 U.S.C. § 1054)

- do not designate commercial source

- owner does not use mark but instead controls use by others

40

Regional certification marks

Statute allows good faith fair use (non-trademark use) by others to accurately describe product or service's geographical origin

- 15 U.S.C. § 1115(b)(4)

May be rejected as merely descriptive or generic

and FONTINA rejected, but not

41

Registered regional certification marks

NAPA VALLEY

42

More registered regional certification marks

43

Protection of GIs in the EU

Sui generis protection, legislation specifically for GIs

European Commission protects three types of indicators:◦ Protected Designations of Origin (PDO)◦ Protected Geographical Indications (PGI)◦ Traditional Specialty Guaranteed (TSG)

Special protection for wines, sparkling wines, spirit drinks

44

Protection of GIs in the EU

Registered names are protected against:◦ Commercial use in comparable products

◦ Commercial use that exploits the GI's reputation

◦ "Misuse, imitation or evocation" (cannot state that product is "like" a GI or the same "type" as a GI)

◦ False or misleading indications of the origin of a product

◦ Any other practice liable to mislead consumers as to GIs

Registered PDOs and PGIs cannot become generic under EU law

45

Validity and Limitations on GIs in the EU

No renewal requirement

Opposition possible on a few grounds, including genericness and whether registration would jeopardize existence of a trademark

Cancellation possible if ◦ no use for seven years

◦ compliance with product specifications "not ensured"

46

PDO = Protected designation of origin

Most strict category

Promoted agricultural and food products produced, processed and prepared entirely in a certain geographical area

Qualities of product must be essentially due to region of production

47

PDO example

Colline Pontine from Italy

◦ Extra virgin olive oil that is "intense green to yellow in colour with golden highlights" and "a medium to intense fruity green olive aroma, with an almond aftertaste and typical fragrant herbaceous notes"

◦ Specification on olive varieties, managing soil, harvesting, transporting, washing, extracting and bottling oil, all within listed municipalities

48

Registered PDOs – Total 600

Italy, 164

Spain, 99 France, 97

Greece, 75Portugal, 64

Other countries, 101

0

20

40

60

80

100

120

140

160

180

Italy Spain France Greece Portugal Other countries

49

PGI = Protected geographical indication

Specific quality or reputation or other characteristic of agricultural and food products "closely linked" to region of production

At least one stage of production, processing or preparation must take place in specified region

50

PGI example

Waterford Blaa from Ireland

◦ "A soft doughy white bread roll clearly identified by the white floury top on the product."

◦ Link between product and area is based on product reputation, traditional production method, specific characteristics of roll.

51

Registered PGIs – Total 664

France, 128Italy, 114

Spain, 84Germany, 73Portugal, 68

United Kingdom, 33

Other countries, 164

0

20

40

60

80

100

120

140

160

180

France Italy Spain Germany Portugal United Kingdom Other countries

52

TSG = Traditional specialty guaranteed

Goods with a traditional character, either in the composition of the products or how they are produced

There must be proven use for a period that has allowed tradition to be transmitted from generation to generation, a minimum of 30 years

No restriction on geographical origin needed

53

TSG example

Traditionally Farmed Gloucestershire Old Spots Pork from the UK

◦ Fresh pork, bacon, ham from purebred Gloucestershire Old Spots pigs

◦ Pigs are reared in the traditional manner to reduce their stress level

◦ Judgment by the butcher is very important to getting best presentation and value from the meat

54

Registered TSGs – Total 53

Poland, 9

Belgium, 5 Bulgaria, 4 Spain, 4

Other countries, 32

0

5

10

15

20

25

30

35

Poland Belgium Bulgaria Spain Other countries

55

Registered GIs in EU: Just food, drink . . . for now

October 6, 2015: Nonbinding resolution in European Parliament to expand to non-food products

Scottish tartan Cararra marble Murano glass

56

UNITED STATES IS “GOLDEN COUNTRY” FOR GIs

57

Enquiring (American Consumer) Minds Want to Know

58

(Not) Made in the USA

59

We Like Imported Food and We Cannot Lie!

60

Who Says the Roman Empire Has Fallen?

61

They Try to Make Me Eat Kraft Dinner and I Say: Slow, Slow, Slow

62

Buying Loco-Specific: Not Just for Millennials

63

Farm-to-Table

64

Cheese (Product) Conundrum

65

U.S. Appellations of Origin

Federal regulation: TTB

– 130 American Viticultural Areas in 27 states

– At least 75% of grapes must come from AVA

– Concept of “semi-generic” designations

State regulation, e.g., California rules

66

Other Regulatory Schemes

Unfair Competition Law

Consumer Protection Laws

Labelling Regulations

Customs enforcement, e.g., “Honeygate”: MI and TX companies engage in “honey laundering” to avoid $180 million in anti-dumping duties. Ersatz honey labelled “Pure Clover Honey “ but actually Chinese, non-clover honey filled with unauthorized antibiotics – resulted in $3 million in fines; class action lawsuit from competitors. MI company filed for bankruptcy and renamed itself “Natural American Foods.”

67

Unfair Competition and Consumer Protection Law

Unfair competition and consumer protection laws:

Deceptive labeling and advertising prohibited (misleading indications as to the origin of the products)

However, use permitted when:

•not misleading (with disclaimers such as “style”,

“imitation”, “as produced in”)

•the term is considered generic (e.g., “feta” or “parmesan”)

•Pom Wonderful LLC v. Coca-Cola Co., 134 S. Ct. 2228 (2014)

68

Example: Geographic Indications (“Built in Detroit”) and Consumer Protection Law

Shinola was started by non-Detroiters (Fossil watches co-founder and Swiss movements manufacturer Ronda AG) in Detroit in 2011, and intentionally aligned itself with Detroit as synecdoche for U.S. manufacturing.

While deciding where to locate Shinola, the company commissioned a focus group and asked people if they preferred a $5 pen from China, a $10 pen made in the U.S or a $15 pen made in Detroit. People picked the Chinese pen over the USA pen because it was cheaper, but were willing to pay the premium for a Detroit-made product.

Shinola employees assemble pieces for all Shinola watches (which typically retail from $475 to $1,125) and bikes (which retail from $1,000 to $2,950) at its Detroit factory, at its flagship Detroit retail store. The company has grown to about 525 employees — 357 of them in Detroit.

Crucial components used to assemble the timepiece movements in all Shinola watches are actually manufactured in Switzerland and Thailand, and the watches' dials, hands and crystals are made in China.

The FTC, which polices the use of "Made in USA" and similar marketing claims, requires all products with such a label be "all or virtually all" made in the U.S. An FTC spokeswoman said that "Built in Detroit" is tantamount to making a "Made in USA" claim.

69

SHINOLA:Companies that repeatedly make false Made in USA claims can face FTC fines.

In November 2015, the FTC opened an investigation into Kansas City-based Niall Luxury Goods, claiming the company marketing overstated the extent to which its watches were made in the U.S. Even though Niall gets most of its watch parts from U.S. sources, its watches' movements are made in Switzerland.

The FTC ended its investigation after Niall implemented a "remedial action plan" involving tacking on the phrase "with Swiss movements" to the previous "USA Made" label on the watches.

The FTC noted that "Though the cost of a Swiss movement may be small relative to Niall's overall U.S. manufacturing costs, without a movement, a watch cannot tell time."

During the investigation, the FTC provided guidance for Niall in a letter published by the FTC, which appears to be the agency's first guidance in recent memory for marketing timepieces with non-U.S. parts.

With respect to Shinola, the FTC said: “It seems likely – without consumer perception evidence showing otherwise – that consumers would interpret a “Built in” claim as equivalent to a “Made in” claim, and a “Built in [insert name of U.S. city]” as equivalent to a “Made in USA” claim," "Therefore, the same “all or virtually all” standard ... would apply.”

Shinola vows to keep “Built in Detroit” slogan. BUT: revised consumer disclosure section on website. Notably, Shinolarevised its previous claim that “all the components are produced in Switzerland” to “one-third of the watch movement parts are made in Thailand. The rest comes from Switzerland.”

Compare: Under Swiss law, a watch movement counts as “Swiss made” if its components of actual Swiss manufacture are at least 50% of the item's value and it was assembled and inspected in Switzerland. (soon rise to 60%.) Therefore, a watch that contains a qualifying Swiss-made movement and is cased up in Switzerland qualifies as a "Swiss watch."

70

FDA Standards of Identity Provisions

21 U.S. Code § 343 (food is deemed mislabeled, including if advertising is false or misleading in a material respect).

FDA says “MAYO”-formative

brand names must include

eggs.

71

Advanced Protection - EUWith the registration in special protection systems, GIs obtained

additional protection.

Art. 13(1)(a) EU Reg. 1151/2012 protects registered GIs against:

- any direct or indirect commercial use of a registered name in

respect of products not covered by the registration in so far as:

those products are comparable to the products

registered under that name

or

the use of the name exploits the reputation of the

protected name, including when those products are used

as an ingredient

Art. 13(2) EU Reg. 1151/2012:

- Protected names may not become generic

72

Semi-Generic Wine Terms in U.S.

•Label must disclose true origin of grapes

•US TTB regulations permit use of terms once purely geographic but now generically descriptive of type or style

•“Semi-generics” include chablis, burgundy,

chianti, marsala, madeira, moselle, claret, port, sauterne, rhine wine

73

Post-March 10, 2006 COLAsUnder the “grandfather” provision, any person or their successor of interest may continue to use a semi-generic name on a label of wine not originating in the EU, provided the semi-generic name appeared on a Certificate of Label Approval (COLA) that was issued prior to March 10, 2006.

The Internal Revenue Code of 1986 (IRC) defines each semi-generic name as a name of geographic significance that is also a designation of class and type for wine. The IRC further states that a semi-generic name may be used to designate wine of an origin other than that indicated by its name, only if there appears, in direct conjunction with the designation, an appropriate appellation of origin disclosing the true place of origin, and the wine so designated conforms with the standard of identity. These provisions of law ensure that the consumer will not be misled regarding what the product consists of or where it came from.

74

Obtaining GI Protection

75

EUROPE: PARMIGANO REGGIANO PARADOX2008: PARMESAN - European Court of Justice (Case 132/05), EU

Commission vs Federal Republic of Germany

- PARMIGIANO REGGIANO is a registered GI since 1996 in the EU

- PARMESAN is a prohibited evocation of PARMIGIANO REGGIANO

- Phonetic, visual, conceptual similarities

- Used for similar products

- PARMESAN is not a generic term for grated cheese

76

2010: PARMESO - Court of Oviedo (Spain, case 65/2010)

- PARMESO is a prohibited evocation of PARMIGIANO REGGIANO- Also infringement of national unfair competition law- Confirmation of the ECJ decision of 2008 by a national Court

77

This Cheese Stands Alone

In Europe, the registered GI “PARMIGIANO” (and its evocations)

can only be used for cheese produced in a delimited area of

Northern Italy, according to the established product specification.

- Outside Europe, PARMESAN mostly remains a free generic term.

78

FETA FAUX PAS

2005: European Court of Justice (Cases C-465, 466/02)

- FETA is not generic (Denmark, France and Germany claimed it was)

- FETA can be protected in the European GI system for cheese

exclusively produced from sheep/goat milk in Greece

79

FETA FALL-OUT

Consequences

- Danish company Arla Foods had to change the name of their

FETA product in Europe. Now, they use APETINA with pictures

alluding to Greece.

- Outside Europe, they still use the name FETA – often in connection with cow’s milk cheese (i.e., not traditional means), e.g., Kraft “ATHENOS” Brand.

80

BIG FAT, NOT SO GREEK…

81

YiaYia No-Nos

82

Look Ma, No Refrigeration!

83

KRAFT IN GERMANY

84

85

A Tale of Two Syrups: Le sirop d’érable: Les Différences entre le Vermont et le Québec

Sap-soil chemistry yields distinct terroir taste

Quebec produces 70% world’s maple syrup. Primarily sells in bulk, mixing syrups from every region. Canada produces about six and a half million gallons of syrup a year, and 6.3 million of that comes from Quebec.

Vermont focuses on small-batch production, backed by USDA grant, determined terroir differences in Vermont syrup, including variety of environmental factors. Vermont, on the other hand, produced about 1.3 million gallons in 2013, which was about half of the U.S. production. Vermont adopted Canadian labelling system in 2014 to become more competitive with Canada.

Other Maple Powerhouses: Maine (2nd), Michigan (5th), Massachusetts (6th)

86

“The Extraordinary Italian Taste” and “Pure Michigan”

After the adoption of the Geneva Act, the Italian Government presented at EXPO Milan (2015) “The Extraordinary Italian Taste”, atrademark that – according to a statement from the Italian Ministry of Agriculture – shall be used to distinguish Italian food products at an international level and will help to challenge the so called “Italian sounding”, i.e., foreign-made goods that cash in on Italian food’s fame and popularity by using names that make them sound Italian (e.g., Parmesan).

“The Extraordinary Italian Taste” has no legal link with GIs and AOs, although it shares with them the purpose to identify the geographical origin of a product, and the qualitative link between the product and its place of origin.

It is not even a “collective trademark”, i.e., a trademark registered by associations and used to distinguish the goods and services of their members, pursuant the associations regulations.

As a part of a wider special plan for the internationalization of the Italian products (“Decreto Sblocca Italia”), - an “umbrella” trademark , owned by the Italian Trade Agency and the Ministry of Agriculture that will serve to identify Italian food products in international exhibitions, and will also be used for promotional and in-store activities abroad, in communication campaigns on TV, traditional media, the Internet and social media.

PURE MICHIGAN Regs– owned by Michigan Economic Development Corp.

For tourism and economic development, but used on a variety of goods and services in practice.

87

GIs: Future Approaches and Strategies

Sui Generis Protection in the US likely impossible…

EU and USA will need to manage the expectations of their domestic industries and reach a compromise, a la CETA or TRIPs Wine and Spirts that neither “side” loves – in actuality already 95% of indications not challenged by US.

Increased enforcement under labelling, e.g., FDA identity requirements?

More muscular FTC/FDA labelling enforcement?

More robust unfair competition post-Pom Wonderful?

ICE/HSI Enforcement, possible if no lost duties?

Consumer-driven ethical marketplaces?

GI-sponsored education, e.g., PIZZA NAPOLETANA (TSG)

88

Thank You/Grazie/Merci.

http://www.bolognawelcome.com/

http://www.nytimes.com/2015/10/04/travel/what-to-do-in-36-hours-in-bologna-italy.html

www.michigan.org

http://us-keepexploring.canada.travel/

www.vermont.com/activities/travel-guide/

89

Rebeccah GanPartner

WENDEROTH, LIND & PONACK, L.L.P.1030 15th Street, NW, Suite 400 EastWashington, DC 20005Telephone: (202) 721-8227 Email: rgan@wenderoth.comwww.wenderoth.com

Geographical Indications: Enforcement

Mary Witzelmwitzel@dbllawyers.com

• In Federal Courts

• At the Trademark Trial and Appeal Board

• Darjeeling Tea: A Study in Enforcement

• There is a paucity of caselaw addressing geographical indications in the United States.

• Only a handful mention the concept of geographical indications, and then, only in the context of other analyses.

• The few federal cases that do consider geographical indications provide some helpful guidelines for enforcement, however.

10/18/2018 92

Federal Caselaw

© 2018 DUNLAP BENNETT & LUDWIG PLLC

Sarco Creek Ranch v. Greeson,

36 F. Supp. 3d 726 (S.D. Tex. 2014)

• Plaintiff operated a 200–acre ranch called Sarco Creek Ranch in Goliad County, Texas.

• It first opened in 1959, and following its opening, Plaintiff sold special Appaloosa horses under the Sarco Creek Ranch name.

• Defendants also operated a Sarco Creek Ranch in Goliad County, ten miles from Plaintiff’s ranch.

• Defendants provided high-quality hunting services, and did not sell Appaloosa horses.

SarcoCreek Ranch

• The Court analyzed Plaintiff’s motion for a preliminary injunction under the framework for geographically descriptive marks, ultimately denying the motion.

• “The historic rule therefore [is] that trademarks did not attach to geographically descriptive names . . . . This remains the general rule today, but exceptions exist for geographic names when ‘it could be proven that customers would not associate the goods with that place named.’” (quoting McCarthy).

• Notable in that the Court appears to have considered whether Plaintiff’s marks could be a geographical indication.

• Plaintiff ultimately lost the motion, however, because of the specifics of its claim for trademark protection.

Sarco Creek Ranch

• Plaintiff ultimately lost the motion, however, in part because of the specifics of its claim for trademark protection.

10/18/2018 © 2018 DUNLAP BENNETT & LUDWIG PLLC 95

• Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, 101 U.S.P.Q.2d 1731 (T.T.A.B. 2012) [precedential].

• Involved a petition for cancellation of certification mark registrations for SWISS and SWISS MADE as used with watches, clocks, and watch and clock parts and fittings

• Petition relied in part upon claims under Sections 14(5)(A), (C), and (D) of the Lanham Act

10/18/2018 96

Trademark Trial and Appeal Board Cases

© 2018 DUNLAP BENNETT & LUDWIG PLLC

Specific Grounds for Cancellation of a Certification Mark Registration:

“A petition to cancel a registration of a mark, stating the grounds relied upon, may . . . be filed as follows by any person who believes that he is or will be damaged . . . by the registration of a mark on the principal register[:]

(5) At any time in the case of a certification mark on the ground that the registrant

(A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies[.]”

10/18/2018 97

Swiss Watch International, Inc.

© 2018 DUNLAP BENNETT & LUDWIG PLLC

Claim under Section 14(5)(A): Petitioner claimed that Respondent did not and could not exercise control over use of SWISS by third parties.

• The Board found that absolute control isn’t possible and isn’t required.

Claim under Section 14(5)(C): Petitioner claimed that Respondent wrongfully permitted uses of the marks for purposes other than certification.

• The Board found that Respondent did not err in permitting uses of SWISS that included SWISS ARMY, because this use was not "identical or substantially or virtually identical" to the certification mark.

Claim under Section 14(5)(D): Petitioner claimed that Respondent’s certification standards were incorrect and unnecessary.

• The Board found, however, that certification standards are “not dependent upon whether the Board or a third party likes the standards, or sees the need for them.”

10/18/2018 98

Swiss Watch International, Inc.

© 2018 DUNLAP BENNETT & LUDWIG PLLC

• Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477 (TTAB 2017) [precedential].

• Involved an opposition to an application for the mark TEQUILA as a certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.”

• Opposer Luxco brought claims of genericness, lack of legitimate control, and fraud upon the Patent and Trademark Office.

10/18/2018 99

Trademark Trial and Appeal Board Cases

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Genericness: Opposer claimed that Applicant’s mark was geographically descriptive. did not and could not exercise control over use of SWISS by third parties.

• The Board noted that geographic certification marks are exempted from the geographical descriptiveness bar, and so Opposer had a high burden to prove that the TEQUILA mark is generic.

Control: Opposer claimed that Applicant could not exercise control over TEQUILA, particularly because the Tobacco Tax and Trade Bureau exercises authority over the use of tequila on liquor labels. Opposer claimed that TEQUILA therefore could not function as a certification mark.

• The Board noted that the Tobacco Tax and Trade Bureau’s labelling requirements are irrelevant to the question of trademark registrability.

Fraud: Opposer claimed that Applicant misled the Trademark Examiner by stating that TEQUILA is a term with special status and functions as an “appellation of origin.”

• The Board held that Applicant sufficiently demonstrated to the Trademark Examiner that TEQUILA is a distinctive product of Mexico.

10/18/2018 100

Luxco, Inc.

© 2018 DUNLAP BENNETT & LUDWIG PLLC

• At p. 13: “A certification mark used to certify regional origin as well as qualities and characteristics associated with the origin will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods.” Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006)

• At p. 13 n. 4: “It is clear that unlike a trademark that identifies and distinguishes a single source, a certification mark appears on the products of several ‘sources’ which are certified so as to designate geographic origin . . . [T]he focus [of a Genericness inquiry] must be whether the certification mark has lost its significance as a designation of geographic origin.”

10/18/2018 101

Luxco, Inc. –GIs and the Risk of Genericness

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Enforcement Examples: Darjeeling Tea

• Tea grown in the Darjeeling District of West Bengal, India with a unique history and flavor profile

• By the 1990s, DARJEELING increasingly used to market adulterated tea

• The DARJEELING GI enforcement strategy was pioneering and remains relevant

102

Darjeeling Tea: A Timeline

• 1986 – The DARJEELING Logo was created. The mark was registered in 13 countries, including the USA.

• 2004 – DARJEELING TEA becomes the first Indian product to be awarded Geographical Indication status by the Indian Patent Office.

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Darjeeling Tea: Enforcement Strategies

• Global scale of enforcement

• Tools used: • Trademark monitoring

• Opposition and cancellation proceedings

• Lawsuits

• (Behind the scenes): demand letters

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