T.M.E.P. § 1306.02
Certification Marks That Are Indications of Regional Origin
Executive summary:
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1306.02 Certification Marks That Are Indications of Regional Origin
A geographical term may be used, either alone or as a portion of a composite mark, to certify that the goods originate in the particular geographical region identified by the term. As noted in Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 497, 133 USPQ 633, 635 (2d Cir. 1962):
A geographical name does not require a secondary meaning in order to qualify for registration as a certification mark. It is true that section 1054 provides that certification marks are "subject to the provisions relating to the registration of trademarks, so far as they are applicable...." But section 1052(e)(2), which prohibits registration of names primarily geographically descriptive, specifically excepts "indications of regional origin" registrable under section 1054. Therefore, a geographical name may be registered as a certification mark even though it is primarily geographically descriptive.
When a geographical term is used in a composite certification mark to certify regional origin, the examining attorney should not require a disclaimer or refuse registration of the composite mark on the ground that the mark is primarily geographically descriptive. However, when a geographical term used in a composite certification mark is not used to certify regional origin (e.g., "California" used to certify that fruit is organically grown), the examining attorney should refuse registration or require a disclaimer, as appropriate.
Marks that may be used to certify regional origin are not necessarily limited to terms that comprise precise geographical terminology. A distortion of a geographical term, an abbreviation of a geographical term, or a combination of geographical terms can be used as, or in, a certification mark indicating regional origin. It is also possible for a term that is not technically geographical to have significance as an indication of origin solely in a particular region.
The issue in determining whether a designation is registrable as a regional certification mark is whether the public understands that goods bearing the mark come only from the region named in the mark, not whether the public is expressly aware of the certification function of the mark per se. If use of the designation in fact is controlled by the certifier and limited to products meeting the certifier's standards of regional origin, and if purchasers understand the designation to refer only to products produced in the particular region and not to products produced elsewhere, then the designation functions as a regional certification mark. Institut National Des Appellations D'Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998).
A mark that is geographically deceptive may not be registered as a certification mark of regional origin. See TMEP §§1210.05 et seq. regarding geographically deceptive marks.
1306.02(a) Indicating the Region
The examining attorney should examine the specimens of use and evidence in the record to determine whether the geographical term is being used as a certification mark to indicate the regional origin of the goods upon which it is used. If the record or other evidence available to the examining attorney indicates that a specific term in question has a principal significance as a generic term denoting a type of goods, registration should be refused. In re Cooperativa Produttori Latte E Fontina Valle D'Acosta, 230 USPQ 131 (TTAB 1986) (FONTINA held a generic name of a type of cheese rather than a certification mark indicating regional origin, in view of the fact that non-certified producers outside that region use the term to identify non-certified cheeses). The basis for refusal of registration on the Principal Register is 15 U.S.C. §§1052(e)(1), 1054, and 1127, and the basis for refusal of registration on the Supplemental Register is 15 U.S.C. §§1054, 1091 and 1127 (see TMEP §1209.02).
When a geographic term is being used as a certification mark to indicate regional origin, the application should define the regional origin that the mark certifies.
1306.02(b) Authority to Control a Geographical Term
When a certification mark consists solely, or essentially, of a geographical term, the examining attorney should inquire as to the authority of the applicant to control the use of the term, if the authority is not obvious. Normally the entity that has authority to exercise control over the use of a geographical term as a certification mark is a governmental body or a body operating with governmental authorization. The right that a private person can acquire in a geographical term is usually a trademark right, on the basis of exclusive use resulting in the term becoming distinctive of that person's goods. When, however, circumstances make it desirable or necessary for many or all persons in a region to use the name of the region to indicate the origin of their goods, there would be no opportunity for the name to become distinctive for only one person. The term would be used by all persons in the region, not as a trademark indicating commercial origin, but as a certification mark indicating regional origin.
When a geographical term is used as a certification mark, two elements are of basic concern: first, preserving the freedom of all persons in the region to use the term and; second, preventing abuses or illegal uses of the mark that would be detrimental to all those entitled to use the mark. Normally a private individual is not in the best position to fulfill these objectives. The government of a region would be the logical authority to control the use of the name of the region. The government, either directly or through a body to which it has given authority, would have power to preserve the right of all persons and to prevent abuse or illegal use of the mark.
1306.02(c) The Government as Applicant for a Geographical Certification Mark
The applicant may be the government itself (such as the government of the United States, a state or a city), one of the departments of a government, or a body operating with governmental authorization that is not formally a part of the government. There may be an interrelationship between bodies in more than one of these categories and the decision as to which is the appropriate body to apply depends on which body actually conducts the certification program or is most directly associated with it. The determination may be made by the applicant, provided the examining attorney does not find any inconsistency between the selection and the facts indicated in the record.