1306.05(b) Additional Considerations in Geographic Certification Mark Applications
1306.05(b)(i) Certification Statement
Indicating the Region
When a geographic term is being used as a certification mark to indicate regional origin, the application must define the regional origin that the mark certifies. The identified region might be as large as a country or as small as a village, and an applicant may define it in general terms in the certification statement (e.g., "the Darjeeling region in India" or "the community of Roquefort, Department of Aveyron, France"). The certification standards, however, will usually be more specific as to the particular geographic boundaries involved.
If the available evidence indicates that the region identified by a geographic designation in the mark is well known for the identified goods or services, or that the goods or services are principal products of the region, the certification statement must limit the defined region to the region identified by the designation in the mark. When the certification statement is not appropriately limited in these instances, it is possible that the mark will be applied to goods or services that do not originate in the region named in the mark. See In re St. Julian Wine Co., 2020 USPQ2d 10595, at *3 n.2 (TTAB 2020) (a certification statement to indicate regional origin "must be sufficiently detailed" or the geographic certification mark "could improperly be applied to goods [or services] not originating from that region" and be subject to a geographically deceptive refusal). Thus, the mark is geographically deceptive as to those goods or services and must be refused accordingly. See TMEP §1306.05(e). The applicant may overcome the refusal by amending the certification statement to limit the defined region to the region identified by the geographic designation in the mark.
If there is insufficient evidence to conclude that the region identified in the mark is known for the goods or services, or that the goods or services are principal products of the region, the region defined in the certification statement may be broader than the region named in the mark. However, the region named in the mark must still be encompassed by the larger region specified in the certification statement.
Other Characteristics
The certification statement must be sufficiently detailed to give proper notice of what is being certified, which may include other characteristics in addition to geographic origin. See TMEP §1306.03(a). For example, the registration for ROQUEFORT indicates the mark certifies that the cheese to which it is applied "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."
Form of Certification Statement
The certification statement must start with the following wording or the equivalent: "The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods/services provided have . . . ." See TMEP §1306.03(a). The following are examples of acceptable certification statements for geographic certification marks:
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier.
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the cheese on which the mark is used has been made entirely in the State of California with cow's milk produced entirely within the State of California.
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the agricultural products are aquacultural seafood products from the waters in the Gulf of Mexico off the Florida coast that are determined to be safe from oil.
See TMEP §1306.03(a) for information regarding certification statements in general.
1306.05(b)(ii) Authority to Control a Geographic Certification Mark
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. Sometimes, however, circumstances make it desirable or necessary for various persons in a region to use a geographic designation for that region not as a trademark indicating commercial origin in one particular source, but to certify the regional origin of all the parties’ goods. And, when geographic designations are used to certify regional origin, a governmental body or government-authorized entity is usually most able to exert the necessary control to ensure all qualified parties in the region are free to use the designation and to discourage improper or otherwise detrimental uses of the certification mark.
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 entitled to use the mark and to prevent abuse or illegal use of the 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 examining attorney should not question the identity of the applicant, unless the record indicates that the entity identified as the applicant is not the certifier.
If an applicant’s authority to control use of a geographic certification mark featuring a geographic designation is not obvious, or is otherwise unclear, such as when the applicant is not a governmental entity, the examining attorney must request clarification, using a Trademark Rule 2.61(b) requirement for information. 37 C.F.R. §2.61(b). One acceptable response would be an explanation that the relevant governmental body has granted the applicant the authority to implement the certification program. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1497-1501 (TTAB 2017) (finding that applicant, a nonprofit civil association accredited under Mexican law to certify tequila and authorized by the Mexican government to apply to register TEQUILA as a certification mark, had the authority to control use of the term).
If the applicant’s response does not establish applicant’s authority to control the mark, registration may be refused under Trademark Act Sections 4 and 45, 15 U.S.C. §§1054, 1127, on the ground that the application does not satisfy all of the statutory requirements for a certification mark because the applicant does not appear to exercise legitimate control over the use of the mark or does not have a bona fide intent to do so.
1306.05(b)(iii) Specimens
Users of certification marks typically apply them to goods and services in a manner similar to trademarks and service marks. That is, certification marks appear on labels, tags, or packaging for goods, or on materials used in the sale or advertising of services. Thus, specimens of use in certification mark applications generally are examined using the same standards that apply to specimens for trademarks and service marks. See TMEP §§904–904.07(b)(i) regarding specimens for trademarks and §§1301.04-1301.04(j) regarding specimens for service marks. However, because it is improper for certification marks to be used by their owners, any specimen of use submitted in support of a certification mark application must show use of the mark as a certification mark by an authorized user. 37 C.F.R. §2.56(b)(5). See TMEP §1306.02(a)(i)(B) for more information regarding specimens for certification marks.
Because geographic certification marks certify regional origin, and thus often consist primarily of a geographic term, they may appear in an inconspicuous fashion on specimens (see TMEP §1306.05(j), Examples 4 and 8) and they may not look the same as other types of certification marks, which typically include wording, such as "certified," or design elements, such as seals or similar matter. In other instances, the geographic certification mark may be the only mark displayed because the authorized user has chosen to market its goods or services without using a trademark or service mark. See TMEP §1306.05(j), Example 2. If the significance of the mark as used on the specimen is not apparent, the examining attorney may require the applicant, pursuant to 37 C.F.R. §2.61(b), to explain the circumstances surrounding the use of the mark so that the examining attorney may determine whether the mark truly functions as a certification mark.
If the examining attorney concludes either that the specimen does not show the mark being used by a person other than the applicant or that the specimen does not demonstrate the mark functioning as a certification mark, registration should be refused under Trademark Act §§1, 2, 4, and 45, 15 U.S.C. §§1051, 1052, 1054, 1127. The applicant may overcome the refusal by submitting an acceptable substitute specimen or amending the filing basis to §1(b), if appropriate. See TMEP §§806.03(c), 904.05.