Geographical Indications at the National Level: Collectivization and Control

1
Geographical Indications at the National Level
Collectivization and Control

• Geographical Indications Symposium Beijing, China
• June 26-28, 2007

2
Why Do GIs Matter to Us?

• Higher prices for producers
• Higher quality for consumers
• Promotes efficiencies in the marketplace by
  minimizing search costs for consumers.

SWITZERLAND Swiss for chocolate U.S. Reg. No.
1,570,455
FRANCE Roquefort for cheese U.S. Reg. No.
571,798
INDIA Darjeeling and Design for tea U.S. Reg.
No. 2,685,923
3
So How Do We Achieve that?

• Preserve customer expectation for the goods via
• Collectivization
• Control

Black Rooster design for wine U.S. Reg. No.
1860163 Italy

• Brunello di Montalcino for wine U.S. Reg. No.
  1860163
• Italy

Frankfurter Äpfelwein for wine U.S. Reg. No.
1097779 Germany
4
GIs are Private Property Rights

• Geographic place names are just place names and
  not intellectual property rights.
• GIs are IP rights because they can indicate
• Origin
• Producers
• Characteristics
• Production methods
• Je ne sais quoi
• Consumers buy goods with GIs on them because the
  GIs represent material information used in the
  purchasing decision.

Parma and design for ham - U.S. Reg. No.
2014627 - Italy
Parmigiano-Reggiano for cheese - U.S. Reg. No.
1754410 - Italy
Vino Nobile di Montepulciano for wine - U.S.
Reg. No. 2251165 - Italy
5
Imprinting GIs

• GIs must provide shorthand communicative signals
  in order to influence consumers purchasing
  decisions.
• How do we imprint GIs with this information?
• By controlling the use of the geographic terms by
  those producers meeting certain quality or
  production standards for specific goods.
• How do we control the use of geographic terms?
• Collectivize the producers.

COGNAC common-law certification mark for brandy
- Institut National Des Appellations v.
Brown-Forman Corp, 47 USPQ2d 1875, (TTAB 1998) -
France
6

Market Forces Encourage Collectivization and
Control

• Collectivization allows producers to join
  together for the purpose of selling their goods
  efficiently at a premium price.
• Control ensures consistent quality or
  production standards for the goods.
• Consistent quality and control preserve consumer
  expectations.
• If appropriately commercialized and promoted, the
  controlled use of GIs by collective producers can
  lead to increased consumer demand for niche
  products and can lead to the ability to charge
  premium prices.

• The Florida Sunshine Tree for citrus - U.S.
  Reg. No. 1559414 - US

design for raisins from California - U.S.
Trademark Reg. No. 1527146 - US
7
TMs and Collective Marks Collectivization Leads
to Control

• Trademarks and Collective Marks Acquired
  distinctiveness required for geographic terms.
• Delayed grant of exclusivity only to those who
  have exclusively and continuously used the
  geographic term as a source identifier.
• Rewards producers and collectives who have
  already commercialized a geographic term as a
  source identifier.
• Collectives or cooperatives are usually the owner
  already collectivized and subsequently control
  the use of the term by their members.

Solingen for cutlery U.S. Reg. No. 0987576
Germany
8
Certification Marks Control Can Lead to
Collectivization

• Certification marks no acquired distinctiveness
  required for geographic terms.
• Owner is usually a governmental body or
  association of producers working on behalf of
  producers in a geographic region.
• Certifier certifies conforming goods.
• Certifier may not discriminately refuse to
  certify goods that meet the standards.
• Latecomers to the collective group of users are
  allowed entrance no discrimination.

Juan Valdez design for coffee - U.S. Reg. No.
1266492 Colombia for coffee - U.S. Reg. No.
1130792 Colombia
California and design for strawberries - U.S.
Reg. No. 2448047 - US
9
Collectivization and Control Create Value for the
GI and for Consumers

• Market forces incentivize producers in a region
  to collectivize in order to benefit from the
  controlled use of a distinctive term, rather than
  having all use it in a non-controlled and
  potentially non-meaningful manner.
• Value (via higher prices) created when the GI is
  meaningful to consumers by virtue of the
  information conveyed beyond mere origin of the
  goods, i.e., quality or characteristics.
• The value of the GI grows as the link between
  the place, the goods, the producers, and the
  quality gets stronger and more meaningful to
  consumers in that territory.
• Moreover, controlled use prevents terms from
  sliding into genericism.

Jamaica Blue Mountain for coffee - U.S. Reg.
No. 1414598 Jamaica
Comté for cheese - U.S. Reg. No. 1473687 France
10

Descriptive Uses Defeat Distinctiveness Claim

• Unauthorized prior uses of a geographic term in a
  trademark-like manner will defeat a later claim
  to distinctiveness for that geographic term and
  defeat a claim of exclusivity.
• Using USPTO registration system as an example
• For trademarks and collective marks, prior
  unauthorized third party registrations for marks
  comprising or consisting of a geographic term
  (even with geographic terms disclaimed) block a
  later application to register the mark because
  those registrations uses show that the term is
  geographically descriptive for the goods and
  therefore non-distinctive.
• For certification marks, prior unauthorized
  registrations for marks comprising or consisting
  of a geographic term (even with geographic terms
  disclaimed) block an application to register
  because those registrations are evidence of lack
  of control over the use of the term by the
  certifier and thus, a lack of distinctiveness.

11
Trademarks and GIs are Private Property Rights

• Under the United States Constitution, the USG may
  not take private property rights away from
  citizens without compensation. That means that we
  cannot cancel ex officio, or impinge on, the
  rights of validly granted prior trademark owners
  based on a later filed GI application, either
  foreign or domestic.
• A prior trademark registration consisting of or
  comprising a geographic term, even disclaimed,
  can block a later filed certification mark or
  collective mark application. USPTO cannot issue a
  registration over the existing prior trademark
  registration. Such an action would negatively
  impact the rights of the earlier holder without
  compensation.

Napa Valley and design for wine - U.S. Reg. No.
2853642 - US
12
Example

• Trademark Registration for Davids Springfield
  Cookies with disclaimer of Springfield cookies
  (geographically descriptive for cookies from
  Springfield, USA). Assume validly granted
  trademark.
• Certification mark application filed by Steve for
  Springfield for cookies made 100 in
  Springfield according to certain production
  method standards.
• Steves certification mark application is refused
  - not exercising legitimate control over the
  mark.
• If David is actually affiliated (or wishes to be)
  with the certification mark applicant and meets
  the standards already (or wishes to for purposes
  of increasing the value of his trademark), Steve
  can ask David for consent to register the
  certification mark and submit that consent to the
  USPTO. USPTO will evaluate whether consent will
  be sufficient to allow registration of the
  certification mark application.
• However, if David does not meet the production
  standards contained in the certification mark
  and does not wish to the USPTO may not issue
  the certification mark registration over Davids
  prior trademark
• Certification mark indicates control. If
  certifier isnt controlling all uses, then the
  certification mark isnt valid.
• Prior trademark registrant could face enforcement
  action by the later in time certifier to force
  him to meet the standards diminishes the value
  of his prior valid rights.
• Consumers would get two sets of inconsistent
  signals by virtue of the two differing uses of
  the same sign.
• No one wins in the end as neither mark has much
  significance to consumers anymore and demand for
  both products decrease.
• The US does not allow coexistence without consent
  for these reasons.
• NOTE If the trademark was actually registered
  contrary to U.S. law, then it is up to an
  interested third party to raise that issue in a
  cancellation proceeding at the USPTO or at
  federal court.

13
Who Controls Whom?

• International debate is about who should control
  the use of geographic terms
• Owners?
• Governments?
• Remember owners can be governments as private
  right holders.

Vidalia for onions U.S. Reg. No. 1709019 US
Idaho for potatoes U.S. Reg. No. 2914308 US
14

Collectivize and Get Consent

• Examples
• Government of Ethiopia Licensing Initiative for
  specialty coffees
• Colombian Coffee Federation Licensing Program for
  Juan Valdez Logo
• Idaho Potato Commission Licensing Program
• Florida Citrus Department Licensing Program
• Vidalia Onion Licensing Program

15
May the best cheese win.

• Governmental control and regulation of GIs as
  public rights with public funds is a policy
  choice, not an international mandate.
• There are other options that serve owners,
  consumers, and producers just as well, if not
  better, and which do not require public funds to
  subsidize private property rights.
• Market forces encourage collaboration and
  collectivization for the benefit of all.
• Let the market decide.