1. Geographical Indications: Protection through a Trademark System
John Rodriguez, Attorney–Advisor
Office of Policy and External Affairs
United States Patent and Trademark Office

2. What will be covered? Relevant TRIPS provisions
How the U.S. protects Geographical Indications (GIs)
Certification marks
Collective marks
Trademarks
Benefits of U.S. registration
The registration process
Conclusion

3. Important TRIPS Tenets
GIs are private rights – like trademarks.
Members can decide how to protect GIs – a sui generis system is not required.

4. A private right must have an “owner.”
TRIPS Preamble: “Recognizing that intellectual property rights are PRIVATE rights….”
Geographical indications are included in the list of intellectual property rights in TRIPS – therefore they are private rights.
A private right must have an “owner.”
An owner can be a public authority.
But it can also be an entity such as a private collective or certifier.

5. Members decide how to protect GIs
TRIPS Article 1 permits Members “to determine the appropriate method of implementing the provisions…within their own legal system and practice.”
Members “shall not be obliged to implement in their law more extensive protection than is required by this Agreement….”
This means that a sui generis system is not required for protecting GIs.

6. Why did the U.S. choose not to implement a sui generis system?
After reviewing the TRIPS requirements and comparing them to our existing law, we found that our trademark system already protected GIs.
We chose not to create a whole new system because there was no need to complicate our trademark laws with redundant protection.
We also knew that creating two systems for the same protection could lead to miscommunication between trademark and GI offices – and the possible result of diminishing or extinguishing prior trademark rights.

7. GIs are important – but not more important than trademarks
A GI provide consumers with an important positive association with a product. If it has reputation as a quality product, consumers will buy it and even tell others about how good it is – free advertising. 
A GI is a great marketing tool for producers who will get more money for their efforts because consumers will pay premium dollars to buy their products instead of spending less on inferior ones.
This all sounds like a trademark!

8. Is there any substantial difference between GIs and trademarks? No.
A geographical indication identifies the geographic source of a product that has acquired its quality, reputation or other characteristics from that named region.
A geographically-distinctive trademark also identifies the geographic source of a product that has acquired its quality, reputation or other characteristics from that named region.

9. Why is a trademark system a good fit?
provides protection for source indicators: GIs and trademarks indicate the geographic source of the product to which a consumer has associated desirable characteristics.
allows for a geographic term to acquire distinctiveness because of its reputation. (The term is no longer just a geographic designation – it now has secondary meaning as a source indicator.)
respects prior rights through ex parte examination procedures and inter partes proceedings – prior owners should not have to relinquish the good will they have established in these marks.
recognizes the importance of preserving generic terms for producers – loss of generics can result in higher prices and customer confusion if the generic word needs to be renamed.

10. COCA-COLA is probably the most famous trademark in existence
COCA-COLA is probably the most famous trademark in existence.  It was first registered in 1893 in the USPTO.
Of all the company’s assets around the world, it is said, that this trademark and the other COCA-COLA marks are the company’s biggest assets.
The Coca-Cola Company has spent huge amounts of money in advertising – including placing its mark on collateral goods such as t-shirts and hats.
Because of brand recognition, the company is successful in getting top dollar for its products.
Recognition and success are available for geographical indication trademarks as well.

11. No need for government involvement
Exclusive intellectual property rights reward investment by the owner that benefits consumers. Would the Coca Cola company want the U.S. government to interfere with the expertise that led to the company’s success?
As mentioned, these are private rights – our taxpayers should not be paying for private rights holders’ obligations to protect their marks or retain control.
With additional governmental “red tape,” it is very difficult to get protection for foreign products in countries where the government is involved.
Intellectual Property policy balancing
Does not award exclusivity due to soil characteristics or growing conditions
but instead rewards those who exploit the soil to make a quality product for the benefit of consumers – again, no need for government involvement.

12. The U.S. System: Regional Certification Marks
protect geographical signs that certify goods originate in the region identified
where use of the sign
is controlled by the certifier
limited to products meeting the certifier’s standards of regional origin
purchasers understand the sign to refer only to products from that region

13. Certification Marks
Owners of certification marks determine the standards that each producer must meet in order to use the certification mark on its packaging.
Owners cannot themselves use the mark because of the presumed bias in favor of their own products meeting the standards.
Owners cannot discriminate against those producers who meet the certification standards – these producers must be allowed to use the mark.

14. Standards
U.S. certification mark applications must include the certifier’s standards used to determine whether a product is qualified to display the certification mark.
These standards should be created bottom up, by the certifier and the growers – not top down, by the governments. If the owners and producers need help from the government they can always ask for it – it should never be imposed.
Standards include the demarcations of the territory where the product is grown; the desirable characteristics; the climate and topography that produce those characteristics; testing qualifications…

15. Self-enforcing
No government inspection is necessary – except for health or safety reasons.
The certification standards provide for inspection of the products – by someone designated by the certifier. This can be an independent inspector.
The logic for non-involvement of government is that it is in the owner’s best interest to ensure that its product retains the quality characteristics that consumers are paying top dollar for – otherwise the diminished quality of the product could have a negative impact on sales.
This would eventually lead to the devaluation of the mark and the diminishing of profits for producers.

16. Examples of Foreign GIs protected in the U. S
Examples of Foreign GIs protected in the U.S. as regional certification marks
HALLOUMI
Owner: Ministry Of Commerce And Industry Of The Republic Of Cyprus
U.S. Reg. No.: 1,591,489
Goods: Cheese
Certification: 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.
Owner: Community of Roquefort
U.S. Reg. No.:
Goods: Cheese
Certification: The certification mark is used upon the goods to indicate that the same has been manufactured from sheep’s milk only, and has been cured in the natural caves of the Community of Roquefort, Department of Aveyron, France.
Owner: Tea Board of India
U.S. Reg. No.:
Goods: Tea
Certification: 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.

17. Georgian regional certification marks at the USPTO
12 registered certification marks for wines from Georgia
5 pending applications

18. Collective Trademarks
This type of mark is used by all members of the producer group; but 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.
The collective organization itself does not sell the goods under the mark, but may advertise to publicize the mark and promote the goods sold by its members under the mark.  For example, an agricultural cooperative of produce sellers does not sell its own goods, but promotes the goods of its members who do sell the goods.

19. Example: Pecorino Romano
CHEESE MADE FROM SHEEP'S MILK
Registration Number
Owner: CONSORZIO PER LA TUTELA DEL FORMAGGIO PERCORINO ROMANO UNINC. ASSOCIATION ITALY
Priority Date February 2, 1982
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "PECORINO ROMANO" APART FROM THE MARK AS SHOWN
Map to the right shows where product originates.

20. Trademarks   
The are very few examples for registering marks of geographic origin as trademarks.
The government of Ethiopia’s obtained U.S. registrations for its three coffee products, including for SIDAMO, HARAR and YIRGACHEFFE. 
You can access the information on the USPTO website.

21. Example: Sidamo SIDAMO for coffee First use in US commerce: 1928
Registration Number
Owner: Government of Ethiopia
Trademark
Proof of acquired distinctiveness

22. Advantages of U.S. registration
Serves as constructive notice nationwide of TM owner's claim.
Is evidence of ownership of the mark.
Facilitates suing in U.S. court.
Can be used as a basis for obtaining registration in foreign countries.
May be recorded with U.S. Customs Service to prevent importation of infringing foreign goods.

23. Notice to third parties
The USPTO’s electronic database is a valuable source for providing notice to third parties that the registrant claims exclusive rights to the mark.
Applicants routinely search the database prior to filing. The prudent applicant will forego filing if a confusingly-similar mark is uncovered.
This benefits both the rights holder and the applicant because it eliminates the need to litigate.
TRIPS Article 63 requires transparency. The USPTO system provides that and additional benefits to its users.

24. The application process
Electronic application filed with the USPTO
Application examined by a USPTO attorney
If refused registration, an opportunity to appeal that decision within the USPTO is provided.
If approved, interested parties can oppose registration.
If no opposition, or the applicant prevails, then the registration will issue.
Although relatively rare, a third party may petition to cancel the registration.

25. Opposition and Cancellation
Available to anyone – domestic or foreign, who believes that he would be damaged by the registration, or the continued existence of a U.S. registration.
Opposition is used to prevent the issuance of a registration of a mark. Cancellation is used to cancel an existing registration of a mark.
The Trademark Trial and Appeal Board (“TTAB” or “Board”), of the U.S. Patent and Trademark Office (USPTO) is available to hear this cases – as are federal courts.

26. Selecting the application basis
There are 5 bases for foreign applicants in the US:
-Bona fide intent to use the mark in commerce
-Use in commerce
-Priority based on an application filed in home country within the prior 6-month period
-Foreign registration
-Madrid Protocol

27. Most likely basis for foreign applicants
Producers in most countries who do not have a market in the US choose to file the U.S. application based on a foreign registration – or if still within the 6-month priority period starting with the initial filing date in the country of origin - based on that filing.
They can also file based on a Madrid Protocol international registration.
Both of these bases require the foreign applicant to state a bona fide intention to use the mark in U.S. commerce. In other words – a business plan for introducing this product in the U.S.

28. Applicant has time to use the mark in U.S. commerce
If the U.S. application is based on a foreign filing, the foreign owner does not have to use the mark in U.S. commerce until at 3 years after registration; but more likely 6 years after registration, when a declaration of use must be filed.
This is not true for American applicants because they must use the mark in U.S. commerce before it can be registered.
TRIPS Article 3 requires WTO Members to afford nationals of other Members no less favorable treatment – the U.S. actually treats foreign rights holders more favorably.

29. Inexpensive!! Filing fee for paper filing: ___________ e-filing:
$375 per class of
goods/services
_______________
$325 per class of
goods/services if filed
using the “regular” TEAS
form – available
$275 per class of
using the TEAS Plus
form

30. Benefits of Filing Online… fast – efficient – accurate!
In addition to a lower filing fee…
You minimize chances of making a mistake because you are prompted when input is questionable or missing!
You get instant acknowledgement of receipt!
You’re assured that the data you provide will be properly entered into the USPTO databases, since the data entry is accomplished electronically by the applicant, not manually by the office.

31. (October 1, 2011 thru September 30, 2012)
Fast!!
FISCAL YEAR 2012
(October 1, 2011 thru September 30, 2012)
Examination: 3.2 months from filing to 1st Office Action
Registration: 10.2 months after filing

32. Maintaining rights in the U.S.
Once the registration issues, a showing of use in commerce with the United States – during the fifth and sixth year of registration – is necessary. Cost: 100 USD per class.
This is also required for renewing a registration every 10 years. Cost: 400 USD per class.
Electronic forms can be completed very easily; much of the data is prepopulated.
The owner must exercise control over use of the mark – otherwise it may become generic.

33. Protecting intellectual property rights in the U.S.
Register marks and maintain the registrations.
License use of marks, in writing, with manufacturers, distributors, and any other authorized third-party users.
Exercise quality control over the licensees’ products.
Monitor the online USPTO Official Gazette (and similar publications in other countries), monitor the marketplace, and STOP unauthorized third-party uses.

34. Conclusion
An existing trademark system can protect geographical indications – either as certification marks, collective marks or trademarks.
Trademark systems are user-friendly – countries, consumers and producers are familiar with them.
They protect prior rights.
They recognize that generic terms must be available for all producers to use.
The U.S. trademark system is TRIPS compliant, efficient, transparent and economical.

35. Important links Trademarks home page
for links to searching, status, documents, electronic forms….
Trademark manual of examining procedure

36. Thank you! Questions?