1306.05(g) Likelihood-of-Confusion Search and Analysis

When comparing marks in a typical §2(d) likelihood-of-confusion analysis, terms that are geographically descriptive of the relevant goods or services are sometimes given less weight. See TMEP §§1207.01(b)(iii), 1207.01(b)(ix). However, as indicated in TMEP §1306.05(d), a registered certification mark containing a geographic designation that functions to certify regional origin is not considered geographically descriptive. See §15 U.S.C. §1052(e)(2) (barring registration of any mark that is primarily geographically descriptive of goods or services, but providing an exception for indications of regional origin). Rather, it is treated as if it is distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or services. "Consequently, a registered geographic certification mark should not be considered 'weak' or subject to a narrower scope of protection." In re St. Julian Wine Co., 2020 USPQ2d 10595, at *5 (TTAB 2020) (citing Inst. Nat’l Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1889-91 (TTAB 1998).

Furthermore, the likelihood-of-confusion analysis is generally the same for certification marks as it is for trademarks or service marks, in that all of the relevant du Pont factors should be considered. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) ; Motion Picture Ass’n of Am. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559 (TTAB 2007); Inst. Nat’l Des Appellations d’Origine, 47 USPQ2d at 1891; TMEP §1306.04. "The classification as a certification mark ‘has very little effect on [a] determination as to whether or not there is a likelihood of confusion.’" In re St. Julian Wine Co., 2020 USPQ2d 10595, at *3 (citing In re Accelerate s.a.l., 101 USPQ2d at 2049)). However, "because a certification mark may not be used by the owner of the mark, but is instead used by authorized users, the analysis is based on the authorized users' goods [or services]" and their relevant trade channels and classes of consumers. Id.; see TMEP §1306.04.

The following guidelines, which focus on the similarity-of-the-marks du Pont factor, are provided to aid the examining attorney in considering the issues when a likelihood-of-confusion search and analysis involves a geographic certification mark. The facts and evidence will vary in each application, affecting the relevance and weight of the various du Pont factors. But, for the purposes of these guidelines, assume that any other relevant du Pont factors, including the relatedness of the parties’ goods and services, either support a finding that source confusion is likely or otherwise do not outweigh the factors that support such a finding.

1306.05(g)(i) Considerations When the Proposed Mark Is a Geographic Certification Mark

When the application is for a geographic certification mark, the examining attorney should consider citing not only any prior mark with distinctive elements (e.g., suggestive, arbitrary, or fanciful wording, or distinctive design elements) that are confusingly similar to those in the applied-for geographic certification mark, but also any prior mark of any type that contains a geographic designation (whether disclaimed or not) that is confusingly similar to the designation in the applied-for mark.

Thus, if the geographic certification mark certifies that figs originate in Wyoming, and consists of a stylized cowboy hat above the wording WYOMING CERTIFIED (with CERTIFIED disclaimed), the potential cites may include (i) a geographic certification mark that is applied to Wyoming figs and is composed of the wording WYOMING’S OWN and (ii) a trademark that is applied to figs and consists of a cowboy-hat design that is nearly identical to the design in the applied-for mark.

Or, if the geographic certification mark certifies that pecans originate in Shenandoah County, Virginia, and consists of the wording SHENANDOAH COUNTY, potential cites may include (i) a trademark for roasted mixed nuts, consisting of the wording T.MARKEY’S SHENANDOAH MIXED NUTS (with SHENANDOAH MIXED NUTS disclaimed) and (ii) a trademark for pecans, composed of a stylized depiction of a pecan and the wording PETE’S PRICELESS PECANS OF SHENANDOAH (with PECANS OF SHENANDOAH disclaimed).

If there are numerous registrations and prior applications containing the same geographic designation (whether disclaimed or not) as the geographic certification mark, then, in the absence of the consent of the relevant registrants and applicants, a §2(d) refusal citing all of the relevant registrations and an advisory citing the prior applications may be appropriate. In addition, the examining attorney should consider refusing registration under Trademark Act §§4 and 45, 15 U.S.C. §§1054, 1127, on the basis 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 applied-for mark. See 15 U.S.C. §1054; 37 C.F.R. §2.45; TMEP §1306.04(b)(i). The applicant may respond to these refusals by submitting information or evidence that supports registration, including information and evidence regarding the relationship between the applicant and the owners of the cited marks.

1306.05(g)(ii) Considerations When the Proposed Mark Contains a Geographic Designation but Is Not a Geographic Certification Mark

When the application is for a mark that contains a geographic designation but is not a geographic certification mark, the examining attorney should consider citing not only any prior mark with distinctive elements (e.g., suggestive, arbitrary, or fanciful wording, or distinctive design elements) that are confusingly similar to those in the applied-for mark, but also any prior geographic certification mark containing a geographic designation that is confusingly similar to the geographic designation in the applied-for mark. Even if the geographic designation in the applied-for mark is not the dominant element, is relatively inconspicuous, or appears with a number of other elements, it may nonetheless be appropriate to cite a prior geographic certification mark that contains the same designation. By contrast, if there are no prior geographic certification marks containing the geographic designation, but there are numerous prior trademarks or service marks that contain and disclaim the designation, then a §2(d) refusal based on the fact that the respective marks share the designation is likely not appropriate.

As an example of the analysis when a prior geographic certification mark is involved, consider an applied-for mark that is used as a trademark for fresh bamboo shoots, consisting of the wording ZZZ BAMBOO in large lettering appearing above EVERGLADES in small lettering (with BAMBOO and EVERGLADES disclaimed). A potential cite might be a geographic certification mark consisting of the wording CERTIFIED EVERGLADES BAMBOO (with CERTIFIED and BAMBOO disclaimed), which certifies that live bamboo plants originate in the Everglades. Citing the prior geographic certification mark, and only that mark, may be appropriate even if there are also a few prior trademarks that contain the word EVERGLADES and are applied to bamboo products.

Of course, "if other matter in the applied-for mark changes the commercial impression of what might otherwise be a geographic designation (e.g., GEORGE WASHINGTON FRUITS vs. WASHINGTON STATE RAISINS), then that factor would weigh against citing prior marks containing the geographic term." In re St. Julian Wine Co., 2020 USPQ2d 10595, at *5 (TTAB 2020) (quoting TMEP §1306.05(g)(ii)) (affirming the guidance in this section); see TMEP §1207.01(b)(iii).

Confusion as to sponsorship, affiliation, or connection may be likely even when the applicant’s goods or services have been certified by the owner of the certification mark or would otherwise be considered genuine. See Inst. Nat’l Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1890-91 (TTAB 1998) . Thus, the mere fact that the applied-for mark is, or will be, applied to goods or services that originate in the relevant geographic region covered by a confusingly similar registered certification mark, and otherwise meet the certification standards of the registrant, is not, by itself, sufficient to overcome a §2(d) refusal. See id. at 1889-91.