1306.05(c) Mark Must Serve to Certify Geographic Origin
When reviewing an application for a geographic certification mark, the examining attorney must consider the specimen of record and any other available evidence to determine whether the relevant consumers understand the designation as referring only to goods or services produced in the particular region identified by the term and not those produced elsewhere as well. Consumers need not be expressly aware of the certification purpose of a designation. It is sufficient that they would perceive the designation as an indication of a particular regional origin; if so, the designation functions as a geographic certification mark and is registrable. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1483 (TTAB 2017).
However, if the available evidence shows that the relevant purchasing public perceives the primary significance of a term as identifying a type or category of the relevant goods or services, without regard to the origin of the goods or services or the methods and conditions for producing them, then the term is generic and does not serve to certify regional origin. See Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1887 (TTAB 2006). For example, the Trademark Trial and Appeal Board found that a mark did not function as a geographic certification mark for cheese because, although the identified cheese was originally produced in a particular part of Italy, the evidence showed that, to American purchasers, the word signifies a type of cheese with particular hardness, texture, and flavor characteristics, regardless of regional origin. In re Cooperativa Produttori Latte E Fontina Valle D'Acosta, 230 USPQ 131, 133-34 (TTAB 1986); see also Luxco, Inc., 121 USPQ2d at 1483-97 (finding opposer failed to establish genericness of TEQUILA, based on evidence that included federal regulations, advertising materials, product labels, recipes, news articles, retail-store signage, and consumer surveys).
To determine whether the relevant designation in an applied-for geographic certification mark is generic, the examining attorney should undertake the same analysis as would be applied to any potentially generic matter. See TMEP §1209.01(c)(i) for further information.
The burden is on the examining attorney to prove by clear evidence that a designation is generic. Relevant evidence may include the following:
- product information from the applicant or the producers of the relevant goods or services;
- definitions in dictionaries or other reference materials;
- trade publications, newspapers, magazines, and other periodicals that use the term generically; and
- any other competent evidence of generic use of the term in the marketplace by producers and consumers.
Tea Bd. of India, 80 USPQ2d at 1887; In re Cooperativa Produttori Latte E Fontina Valle D'Acosta, 230 USPQ at 133-34.
In addition, the fact that the term is commonly used to identify goods or services in third-party registrations may further support the conclusion that it is viewed in the relevant marketplace as generic, rather than as an indication of geographic origin. When considering the available evidence, the examining attorney must take particular care to distinguish evidence that shows true generic use of a designation from evidence that merely shows infringing or otherwise improper use of a certification mark.
When the certification mark consists solely of generic matter, or generic matter and other unregistrable matter, it should be refused under Trademark Act §§2(e)(1), 4, and 45, 15 U.S.C. §§1052(e)(1), 1054, 1127, if registration is sought on the Principal Register. If registration is sought on the Supplemental Register, the statutory bases for refusal are §§4, 23, and 45, 15 U.S.C. §§1054, 1091, 1127. If the mark contains registrable matter in addition to the generic matter, the examining attorney must require a disclaimer of the generic matter. See TMEP §1213.03(b).
Even if a proposed mark is not generic, the applicant’s specimen of use may fail to demonstrate that the mark functions as a certification mark, in which case registration should be refused under Trademark Act §§1, 2, 4, and 45. 15 U.S.C. §§1051, 1052, 1054, 1127. See TMEP §1306.05(b)(iii).
In response to a refusal on the ground that the mark is generic or otherwise does not function as a certification mark, an applicant may submit for the examining attorney’s consideration any information or evidence that the applicant believes would support registration.