Trademarks

1
Trademarks Geographical Indications

• David Morfesi
• USPTO
• Office of International Relations
• 29 June 2005

2
International Perspectives on Trademarks

• Paris Convention for the Protection of Industrial
  Property
• Trademark Law Treaty (TLT) (regarding procedures
  and examination of trademark applications)
• The Madrid Protocol (an international treaty that
  allows a trademark owner to seek registration in
  any member country by filing a single
  application. Effective in U.S.A November 2,
  2003.)

3
Agreement on Trade Related Aspects of
International Property Rights (TRIPs)

• One of the principle guidelines in the realm of
  International Standards for the Protection of
  Trademarks is the Agreement on Trade Related
  Aspects of Intellectual Property Rights, better
  known as TRIPs.

4
TRIPs

• The substantive Trademark provisions within TRIPs
  are Articles 15-21.

5
Article 15 Any sign, or combination of signs,
capable of distinguishing the goods or services
of one undertaking from those of other
undertakings, shall be capable of constituting a
trademark. Such signs, in particular words
including personal names, letters, numerals,
figurative elements and combinations of colours
as well as any combination of such signs shall be
eligible for registration as trademarks.
6
Slogans Plop, Plop, Fizz, Fizz, Oh What a
Relief it is.. for medicine for upset
stomach. Letters IBM for personal computers or
FRISBEE for flying discs. Numbers 311 for
entertainment services the name of a rock
band. Logos Nike swoosh for athletic apparel.
Three dimensional designs Hersheys Kisses for
chocolate candy Coca-Cola bottle. Colors Pink
for fiberglass insulation brown for package-
delivery services.Scents Cherry-scented motor
oil.Sounds NBC chime for TV programming.
Intel chime for computers.
7
Article 15 Any sign, or combination of signs,
capable of distinguishing the goods or services
of one undertaking from those of other
undertakings, shall be capable of constituting a
trademark.
8
Capable of




Distinguishing Goods or Services?
9

• TRIPS Article 16
• The owner of a registered trademark shall have
  the exclusive right to prevent all third parties
  not having the owners consent from using in the
  course of trade identical or similar signs for
  goods and services which are identical or similar
  to those in respect of which the trademark is
  registered where such use would result in a
  likelihood of confusion.

10
Related Goods or Services
Confusion is not determined based on the same
Nice Classification but on the nature of the
goods or services and their relatedness. Shoes
(Class 25) and Shoelaces (Class 26) Related
Goods but Different Classes. Computers (Class 9)
and life-saving buoys (Class 9) - Unrelated
Goods but the same Class.
11
Well-Known Marks Paris Convention Article
6bis Members must protect well-known marks from
infringement whether registered or
unregistered. This obligation is incorporated
into Article 16 of the TRIPS Agreement
12
Well-Known Marks and Relatedness
Relatedness of goods and services is less
important in infringements of well-known marks.
TRIPs Article 16(3) A well-known mark will be
found to be infringed even if used on unrelated
goods if consumers would be confused and the
well-known mark holder would likely be
damaged. Microsoft Aspirin Kodak Shoes
13
Well-Known Marks Non-Exhaustive List of Factors
for Judges to Consider

• Degree of distinctiveness
• Duration and extent of use of the mark
• Duration and extent of advertising of the mark
• Extent of geographical trading area
• Channels of trade
• Degree of recognition of the mark in those
  channels of trade
• Nature and extent of use of the same or similar
  marks by third parties
• Whether the mark is registered

14
WIPO Joint Recommendation on Well-Known Marks

• Adopted in 1999 by WIPO Member States
• Guidelines for use by Member States a
  non-exhaustive and non-exclusive list of factors
  for use in determining whether a mark is
  well-known.

15
-- Trademark Information http//www.uspto.gov--
Trademark Examination Search System (TESS)
http//.tess.uspto.gov-- Trademark Electronic
Application System (TEAS) http//www.uspto.gov/t
eas/index.html-- Trademark Applications and
Registrations Retrieval (TARR)
http//tarr.uspto.gov/
16
Benefits of filing online

• In addition to a lower filing fee
• You get instant acknowledgement of receipt!
• You have 24-hour access to filing information!
• You can do it from here!!!!

17
(No Transcript)
18
(No Transcript)
19
(No Transcript)
20
(No Transcript)
21
(No Transcript)
22
Certification and Collective Marks
23
Certification Marks are a Subset of Trademarks

• A certification mark is a type of trademark that
  can certify
• geographic origin
• materials used, quality, method of manufacture,
  and accuracy or
• products made under the auspices of, or by
  members of a specific trade union or
  organization.

24
Features of Certification Marks

• A certification mark cannot be used by the owner
  of the mark because it is the owners
  responsibility to certify the standards set for
  use of the certification mark.
• The anti-use by owner rule recognizes that the
  owner cannot be an impartial certifier if it is
  competing with those it certifies.

25
Features of Certification Marks

• Any entity that undergoes certification and meets
  the certifying standards is entitled to use the
  certification mark. (Non-discrimination rule).
• Certification mark can be cancelled if the owner
  discriminately refuses to certify goods/services.

26
Features of Certification Marks

• Certification marks identify one certifier source
  (the owner) that certifies the goods of multiple
  manufacturers/producers.
• The owner may certify as to regional origin as
  well as other production standards.

27
Collective Marks

• A collective mark indicates commercial origin of
  goods or services in members of a group rather
  than origin in one party.
• An agricultural cooperative of produce sellers is
  an example of a collective organization, which
  does not sell its own goods, or render services,
  but promotes the goods and services of its
  members.

28
Features of Collective Marks

• 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.

29

• Geographical Indications

30
(No Transcript)
31
What are Geographical Indications (GIs)?

• Indications that identify a good as originating
  in the territory of a WTO Member where a given
  quality, reputation or other characteristic of
  the good is essentially attributable to its
  geographical origin. TRIPs Article 22.1

32
What are Trademarks?

• Any sign, or combination of signs, capable of
  distinguishing the goods or services of one
  undertaking from those of other undertakings,
  shall be capable of constituting a trademark.
  TRIPs Article 15.1

33
Trademarks and Geographical Indications

• Geographical indications and trademarks serve the
  same functions
• source-identifiers
• quality guarantees
• business interests

34
(No Transcript)
35
Certification Marks and Geographical Indications

• Since trademarks and geographical indications
  serve the same function, the United States
  protects them under the same system the
  trademark system.
• In the U.S., geographical indications are
  protected as certification marks which provide
  for one owner but use of the mark by many
  producers.

36
Who Can Own a Geographical Indication
Certification Mark?

• In the United States, a GI can be owned by
• A government
• A government-sanctioned certifying body
• A group of producers
• Even in rare cases an individual.

37
Who Can Own a Geographical Indication
Certification Mark?

• It has been the experience of the United States
  that a GI is almost always owned by a government
  or government-sanctioned certifying body.
• However, since TRIPs identifies GIs as
  intellectual property (i.e., private rights), the
  U.S. system offers the possibility of
  individual-owned GIs.

38
Benefits of Providing GI protection under a
Trademark System

• Employs the existing trademark regime for
  applications, registrations, oppositions,
  cancellations, adjudication, and enforcement
• System meets the requirement for national
  treatment and the obligations in TRIPs regarding
  enforcement
• System is self-policing so that countries do not
  have to commit additional enforcement resources
  to ensure compliance.

39
Examples of U.S. GIs Protected In the United
StatesVidalia

• VIDALIA for onions
• Owned by the State of Georgias 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.

40
Examples of U.S. GIs Protected In the United
StatesFlorida Citrus

• Owned by the State of Floridas 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.

41
Examples of U.S. GIs Protected In the United
StatesNapa Valley

• Owned by the Napa Valley Reserve Certification
  Board. U.S. Reg. No. 2192016
• The certification mark, as used by persons
  authorized by applicant, certifies that the wine
  meets the certifiers aging specifications and is
  of the Napa Valley
  appellation.

42

Examples of Foreign GIs Protected In the United
StatesParmigiano Reggiano

• Owned by Consorzio Del Fomaggio
  Parmigiano-Reggiano. U.S. Reg. Nos. 1,754,410
  1,892,496 1896,683 2,320,595
• The certification mark, as used by person
  authorized by the certifier, certifies that the
  goods originate in the Parma-Reggio region of
  Italy, specifically the zone comprising the
  territory of the provinces of Parma, Reggio
  Emilia, Modena and Mantua on the right bank of
  the river Po and Bolgona on the left Bank of the
  river Reno.

43
Examples of Foreign GIs Protected In the United
States 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.

44
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
  sheeps milk only, and has been cured in the
  natural caves of the Community of Roquefort,
  Department of Aveyron, France.

45
Examples of Foreign GIs Protected In the United
States Swiss

• SWISS for chocolate and products made from
  chocolate
• Owned by Chocosuisse, Union Des Fabricants
  Suisses de Chocolat, Inc. U.S. Reg. No. 1,570,455
• The certification mark, as used by persons
  authorized by the certifier, certifies geographic
  origin of the goods in Switzerland.

46
Banshu Somen

• U.S. Trademark Registration No. 2,238,960
• For Noodles
• The certification mark, as used by authorized
  persons, certifies geographic origin of the goods
  in the area of Japan known as Banshu.

47
Cow Design

• U.S. Trademark Registration No. 2,445,395
• For Dairy products or dairy-based products
  manufactured with real Canadian milk, namely,
  milk, cream, butter, cheese, yogurt, ice cream

48
Circle-T Design

• U.S. Trademark Registration No. 2,519,259
• For Cheese
• The certification mark, as used by persons
  authorized by certifier, certifies that the goods
  originate in the Po Valley and Valley of
  Taleggio, specifically the provines of Bergamo,
  Brescia, Como, Cremona, Milano, Pavia, Novara,
  and Treviso

49
Halloumi

• U.S. Registration No. 1,591,489
• For Cheese
• The certification mark, as used by persons
  authorized by the certifier, certifies that the
  cheese product is produced only in Cyprus using
  historic method unique to that country.

• HALLOUMI

50
100 Kona Coffee

• U.S Registration No. 2,322,867
• For coffee
• The certification mark, as used by persons
  authorized by Applicant/Certifier, certifies that
  the goods originate (are grown) within the
  geographic borders of the North and South Kona
  Districts of Hawaii County, Hawaii.

51
JAMAICA BLUE MOUNTAIN COFFEE

• U.S. Trademark Registration No. 1,414,598
• For Coffee
• The certification markcertifies that the coffee
  in respect of which the mark is used is grown in
  the Blue Mountain Area of Jamaica by a person
  registered to grow coffee in that area pursuant
  to the coffee industry regulations 1953 of
  Jamaica

52
Colombian

• U.S. Registration No. 1,160,492
• For coffee
• The mark certifies that the coffee was grown in
  the republic of Columbia and that such coffee has
  been subjected to standard inspection authorized
  by applicant

• COLOMBIAN

53
Sonoma Grown

• SONOMA GROWN

• U.S. Registration No. 2,345,888
• For meats and processed foods natural
  agricultural products and wines and spirits,
  namely, apertif wines, champagne, hard cider,
  distilled spirits and wine.
• The certification mark, as used by authorized
  persons, certifies a particular regional origin
  of the goods that the goods are grown in Sonoma
  County, California.

54
Mosel

• U.S. Registration No. 1,008,252
• For wine
• The mark certifies origin in a geographical
  region in Germany, and characteristics of quality
  as most recently defined by the German wine law.

• MOSEL

55
Liebfraumilch

• LIEBFRAUMILCH

• U.S. Registration No. 1,008,251
• For wine
• The certification mark, as used by persons
  authorized by applicant, certifies origin in a
  geographical region in Germany and
  characteristics of quality as most recently
  defined by the German wine law.

56
Comte

• U.S. Registration No. 1,654,605
• For cheese
• The certification mark, as used by persons
  authorized by certifier, certifies that the goods
  come from the Comte division (an administrative
  division of France) that the goods are only made
  from cows' milk and that the cheese meets the
  hygiene, production methods or standards and
  appearance methods or standards of certifier.

57
Wisconsin Real Cheese

• U.S. Registration No. 1,548,738
• For dairy products, namely cheese
• The certification mark, as used by persons
  authorized by applicant, certifies that the
  cheese upon which the mark is used has been made
  entirely in the state of Wisconsin.

58
Idaho

• U.S. Registration No. 0802,418
• For potatoes and onions
• The mark certifies that goods so marked are
  grown in the state of Idaho.

• IDAHO

59
Stilton

• U.S. Registration No. 1,959,589
• For cheese made from milk according to the
  regulations
• The certification mark, as used by authorized
  persons certifies that the cheese is blue moulded
  or white cheese produced within the county
  boundaries of Leicestershire, Derbyshire and
  Nottinghamshire, England, with no applied
  pressure, forming its own crust or coat and made
  in cylindrical form, from full cream milk
  produced by English dairy herds.

• STILTON

60
Parma Ham

• U.S. Registration No. 2,014,628
• For ham products
• 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

61
Prociutto di Parma

• PROCIUTTO DI PARMA

• U.S. Registration No. 2,014,629
• For ham products
• 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.

62
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.

63
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

64
Cognac

• Common law (unregistered) certification mark in
  the United States.
• Institut National Des Appellations v.
  Brown-Forman Corp, 47 USPQ2d 1875, (TTAB 1998).

• COGNAC

65
Thank You!

• \
• David Morfesi
• United States Patent and Trademark Office
• Tel [phone]
• E-mail David.Morfesi_at_uspto.gov
• www.uspto.gov