The use of GIs has become a contentious international trade issue, particularly for U.S. wine, cheese, and sausage makers involved in trade between the United States and the European Union (EU). Accordingly, GIs are among the agricultural issues that have been raised in the ongoing Transatlantic Trade and Investment Partnership (T-TIP) negotiations, a potential reciprocal free trade agreement that the United States and the EU are negotiating. Many U.S. food manufacturers view the use of common or traditional names as generic terms and the EU’s protection of its registered GIs as a way to monopolize the use of certain wine and food terms and as a form of trade protectionism. Specifically, several industry groups have expressed concern that the EU is using GIs to impose restrictions on the use of common names for some foods—such as parmesan, feta, and provolone cheeses and certain wines—and limit U.S. food companies from marketing these foods using these common names. Complicating this issue further are GI protections afforded to registered products in third country markets. This has become a concern for U.S. agricultural exporters following a series of recently concluded trade agreements between the EU and countries such as Canada, South Korea, South Africa, and other countries that are, in many cases, also major trading partners with the United States.
In the United States, GIs are treated as brands and trademarks and administered by the U.S. Patent and Trademark Office (PTO). In addition, labeling requirements for wine, malt beverages, beer, and distilled spirits are under the jurisdiction of the Alcohol and Tobacco Tax and Trade Bureau (TTB). U.S. trade policy is actively engaged in addressing concerns in the United States regarding the EU’s GI protections to ensure that they “do not undercut U.S. industries’ market access” and to defend the use of certain “common food names.” In general, the United States is seeking protection for current U.S. owners of trademarks that overlap with EU-protected GIs, the ability to use U.S. trademarked names in third countries, and the ability to use U.S. trademarked names in the EU.
In the United States, GIs generally fall under the common law right of possession or “first in time, first in right” as trademarks, collective, or certification marks under the purview of the existing trademark regime administered by PTO and protected under the U.S. Trademark Act. Trademarks “protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.” Trademarks registrations are renewable for 10-year terms. Trademarks are distinctive signs that are used by a company to identify itself and its products or services to consumers and can take the form of a name, word, phrase, logo, symbol, design or image, or a combination of these elements. Trademarks may refer to a geographical name to indicate the specific qualities of goods as either certification marks or collective marks.
PTO defines GIs, consistent with TRIPS, as “indications that 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 geographic origin.” According to PTO, a GI can take many forms, including a geographic place name (such as “Napa Valley”), a symbol (such as a picture of the Eiffel Tower, the Statue of Liberty, or an orange tree), the outline of a geographic area (e.g., the outline of the state of Florida or a map of the Dominican Republic), a color, or “anything else capable of identifying the source of a good or service.” GIs are protected under U.S. trademark laws against unfair competition and trademark infringement regardless of whether they are registered with PTO. According to PTO, GIs “serve the same functions as trademarks, because like trademarks they are: source-identifiers, guarantees of quality, and valuable business interests.” Establishing a product based on its geography can be complicated, involving establishing a trademark or a brand name through an extensive advertising campaign.
PTO does not have a special register for GIs in the United States. PTO’s trademark register, the U.S. Trademark Electronic Search System (TESS), contains GIs registered as trademarks, certification marks, and collective marks. Statements by USTR claim that EU farm products hold nearly 12,000 trademarks in the United States. These register entries are not designated with any special field (such as “geographical indications”) and cannot be readily compiled into a complete list of registered GIs. Thus, there does not appear to be specific data available about GIs registered in the United States in the way that there are for the EU. Some GI names protected under U.S. trademark laws include Idaho Potatoes, Florida Oranges, Vidalia Onions, Napa Valley Wines, and Washington State Apples.
Specifically, Section 4 of the Trademark Act of 1946 (as amended) provides protection for GIs as certification and collective marks indicating regional origin. And, although the vast majority of GIs are protected under Section 4, GIs can also be protected as trademarks with an adequate showing of acquired distinctiveness through use. Importantly, in addition to ex officio refusal based on prior existing rights, the United States trademark system requires ex officio refusal or disclaimer of the generic term(s). A disclaimer indicates that no exclusive rights are claimed to any generic terms. In addition, the register can be searched before filing and application and registration files are viewable online. All GIs are published for opposition; all opposition proceeding documents can be viewed online. The GIs must be used in commerce–at the time of registration for domestic applicants; and no later than six-and-a-half years after registration for foreign applicants.
Conclusion
Geographical indications also are protected through common law trademark law without being registered by the USPTO. For example, the TTAB has held that “COGNAC” is protected as a common-law (unregistered) certification mark in the United States. In the United States, GIs are generally treated as brands and trademarks. The TRIPS Section on GIs represents a delicate balance between different interests that was reached during the Uruguay Round. While the negotiations on certain aspects of TRIPS could, to a large extent, be characterized as a North-South debate, the negotiations on GIs, particularly on wines and spirits, were characterized by what was then described as an ‘Old World-New World’ debate. The Geographical Indications play a crucial role in protecting the commodities that have specifications and relation to a particular territory.