TMEP 1402.03(g): Name and/or Acronym of Trademark Protection System or Scheme for Geographical Indication Appearing in Identification

This is the October 2015 Edition of the TMEP

Previous: §1402.03(f) | Next: §1402.04

1402.03(g)    Name and/or Acronym of Trademark Protection System or Scheme for Geographical Indication Appearing in Identification

A geographical indication of origin identifies goods as originating in a territory known for a given quality, reputation, or other characteristic associated with the goods. WTO Agreement on Trade-Related Aspects of Intellectual Property Rights, Art. 22.1, Apr. 15, 1994. Geographical indications are used in connection with wines and spirits, foodstuffs, and agricultural products. They are typically names of geographic places and identify the goods as having characteristics associated with the named places, e.g., “Parmigiano Reggiano” for cheese, “Barolo” for wine, “Colombian” for coffee, and “Parma” for ham. See TMEP §§1210.08 and 1306.02.

Different countries, as well as governmental organizations such as the European Union, have different legal systems or schemes to protect geographical indications of origin. They also have different terminology that has significance in the relevant territories. The following are examples of acronyms and their full names used to designate a protection system or scheme in a particular territory:

COUNTRY ACRONYM FULL NAME
Brazil GI Geographical Indication
Chile DO Denominacion de Origen
European Union AOP L'Appellation d'Origine Protégée
European Union PDO Protected Designation of Origin
European Union PGI Protected Geographical Indication
France AOC Appellation d'Origine Contrôlée (also referred to as appellation of origin)
Italy DOC Controlled Designation of Origin (Denominazione di Origine Controllata)
Italy DOCG Controlled and Guaranteed Designation of Origin
Italy DOP Protected Designation Origin
Italy IGP Protected Geographic Indication
Portugal DOC Denominação de Origem Controlada
Romania DOC Denumire de origine Controlată
Spain DO Denominacion de Origen (also referred to as designation of origin)

The identification should only contain the common commercial or generic name of the goods and/or services, using terminology that is generally understood by the average consumers in the United States. See TMEP §1402.01. Therefore, if the identification refers to a protection system or scheme, such wording should not be part of the identification of goods and/or services featuring those goods. This includes not only when the protection system or scheme is indicated by an acronym and/or full name along with reference to a region-specific or particular protection system or scheme (e.g., “DO wines with a protected designation of origin Rioja”), but also when the full name is used in a general or broad sense and without reference to a region-specific or particular protection system or scheme (e.g., “wines protected by appellation of origin” or “distilled spirits protected by geographical indication”).

The examining attorney must issue an identification requirement instructing the applicant to submit an amended identification that is definite and complies with the USPTO identification practice. Applicant may not delete the reference to a protection system or scheme entirely from the identification because such an amendment would impermissibly broaden the scope of the goods and/or services. See TMEP §§1402.06, 1402.07. The amended identification must indicate that the goods are made or produced, or the services feature goods made or produced, in accordance with certain, specific, or adopted standards. The language used to describe the goods and/or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. Id.

Examples of original identifications and the amended wording that may be recommended are:

ORIGINAL ID RECOMMENDED AMENDMENT
DOC wines protected by the designation of origin Barolo, Italy Wines produced in the Barolo region of Italy in accordance with adopted standards
AOC wines, namely, wines with protected appellation of origin Wines made from grapes from {insert geographic name or region} in accordance with specific standards
Distilled spirits protected by appellation of origin Distilled spirits produced in {insert geographic name or region} in accordance with certain standards
PGI distilled spirits made from grains from a protected geographical indication Distilled spirits made from grains from {insert geographic name or region} in accordance with adopted standards
Grape brandy protected by the appellation of origin (AOC) Beaujolais Brandy from the Beaujolais region of France made in accordance with adopted standards
Cheeses complying with the characteristics of the Franche-Comté registered designation of origin Cheese made in the Franche-Comté region of France in accordance with specific standards
Retail store services featuring cheese with the protected designation of origin Franche-Comté Retail store services featuring cheese from the Franche-Comté region of France made in accordance with specific standards

Please note that, occasionally, the acronym and/or full name of a non-English region-specific protection system or scheme may be part of the mark and appear on the drawing. In such cases, a translation and/or disclaimer of the non-English wording must be made of record, as appropriate, the same as with other marks comprising foreign matter that is descriptive or generic. See TMEP §§809–809.03 regarding translations and TMEP §§1213–1213.11 regarding disclaimers.