1306.02 Geographic Certification Marks that Are Indications of Regional Origin
A geographic certification mark is a word, name, symbol, device, or some combination of these elements, used alone or as a portion of a composite mark, to certify that the goods or services originate in the geographical region identified by the term or, in some circumstances, from a broader region that includes the region identified by the term. See 15 U.S.C. §1127; TMEP §1306.02(b)(i)(A). As noted in Cmty 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.
A geographic certification mark may feature a recognized geographic term that identifies the relevant geographic region, as in the marks ROQUEFORT for cheese, DARJEELING for tea, and COLOMBIAN for coffee. Or the mark may contain a variation or abbreviation of a geographic term or a combination of different geographic terms, with or without other matter. Sometimes the mark will include or consist of a designation or figurative element that is not technically geographic, but nonetheless has significance as an indication of geographic origin solely in a particular region. For example, the mark CIAUSCOLO is not the name of a particular place, but it nevertheless certifies that the salami to which it is applied originates in various municipalities of certain Italian provinces. See TMEP §1306.02(k) for additional examples of geographic certification marks.
As with any type of certification mark, a geographic certification mark is not used by its owner in the same way a trademark or service mark is. Rather, the owner of a geographic certification mark controls use of the mark by other parties. These parties apply the mark to goods or services to indicate to consumers that the goods or services have been certified as meeting the standards set forth by the certifier. Thus, the goods or services to which a geographic certification mark is applied may emanate from a number of sources comprising various certified producers in the relevant region. See TMEP §§1306.01-1306.01(b), 1306.04.
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 Nat’l Des Appellations D’Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998). Regardless of an applicant’s intent, however, consumers may perceive some terms as identifying a type or category of the relevant goods or services, rather than indicating geographic origin. As discussed in TMEP §1306.02(c), these terms do not function as geographic certification marks and may not be registered as such.
Not every certification mark that features a geographic designation serves as a geographic certification mark. See TMEP §1306.02(f). But, as explained in TMEP §1306.02(d), those that do are specifically excluded from the provisions of Trademark Act §2(e)(2). Furthermore, for purposes of a §2(d) likelihood-of-confusion analysis, geographic designations that appear in a certification mark and function to certify regional origin should be treated like distinctive terms and should not be considered "weak." See TMEP §1306.02(g).
Applications for geographic certification marks must include all of the standard elements of a certification-mark application. See TMEP §1306.06(f). As discussed in TMEP §1306.02(b), additional considerations apply to some of the elements.
1306.02(a) Identifying Geographic Certification Mark Applications
If the applicant has used the appropriate application form, the application will clearly indicate that the mark is intended to be a certification mark and should include the required elements. For certification mark applications based on §66(a), the request for extension of protection will include a field indicating that the mark is a "Collective, Certificate or Guarantee Mark." See TMEP §1904.02(d) regarding requirements for §66(a) applications for certification and collective marks.
The examining attorney may also determine that the mark is a geographic certification mark based on a review of the information in the application, which should include a certification statement indicating the mark’s use, or intended use, in certifying regional origin. If the nature of the mark and its intended use are unclear, the examining attorney must seek clarification, through a Trademark Rule 2.61(b) requirement for additional information or, if appropriate, by telephone or e-mail communication. See 37 C.F.R. §2.61(b); TMEP §§1306.09-1306.09(b). Any clarification regarding the certification statement that is received by informal communication must be recorded in a Note to the File. In addition, certain required elements, such as those discussed in TMEP §1306.02(b), may be missing or unacceptable, and the applicant will be required to provide or amend them.
1306.02(b) Elements of Geographic Certification Mark Applications
1306.02(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. Thus, the mark is geographically deceptive as to those goods or services and must be refused accordingly. See TMEP §1306.02(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 §1306.06(f)(i). 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 authorized persons, certifies (or is intended to certify) . . . ." See TMEP §1306.06(f)(i). The following are examples of acceptable certification statements for geographic certification marks:
The certification mark, as used by authorized persons, certifies 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 by authorized persons, certifies 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.
1306.02(b)(ii) Certification Standards
A copy of the relevant certification standards must be submitted when the mark owner claims use of the mark. 37 C.F.R §2.45. The certification standards need not have been created by the mark owner, and may instead be standards established by another party, such as those promulgated by a government agency or developed by a private research organization.
The certification standards must, however, encompass the full scope of the goods or services identified in the application. So, if the application identifies the goods as "olive oil," but the submitted certification standards apply only to extra virgin olive oil, the applicant must amend the identification to limit it to "extra virgin olive oil" or, if possible, submit standards that cover various types of olive oil.
1306.02(b)(iii) Identification of Goods and Services
If the certification program, as described in the certification standards, is not limited to particular types of goods or services, the identification of goods and services need only indicate the general category of goods or services to which the mark will apply (e.g., "clothing," "electrical products," "restaurants," or "insurance services"). Thus, the usual level of specificity that is required for identifications in trademark and service mark applications is not required for certification mark identifications.
Furthermore, the identification in an application for a geographic certification mark need not refer to the relevant geographic origin of the goods or services. For example, the identification of goods for the geographic certification mark WISCONSIN REAL CHEESE is simply "dairy products, namely, cheese."
1306.02(b)(iv) Classification of Goods and Services
Section 1 and §44 Applications
Certification mark applications based on Trademark Act §1 or §44 classify goods in Class A and services in Class B. 37 C.F.R. §6.3.
Section 66(a) Applications
In a §66(a) certification mark application, the goods or services will be classified in the relevant international class by the International Bureau; the USPTO will not reclassify the goods and services into U.S. Classes A and B. See TMEP §1401.03(d). However, a §2(d) search conducted in accordance with appropriate USPTO search procedures will return all relevant marks, whether the goods and services are classified in U.S. classes or international classes.
1306.02(b)(v) 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. 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. Thus, the entity that has authority to exercise control over the use of a geographic certification mark will generally be a governmental body or a body operating with governmental authorization.
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.
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.
1306.02(b)(vi) Specimens of Use
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 advertising or rendering 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. 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).
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 §1306.02(k), 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 §1306.02(k), 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.
1306.02(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 to refer 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.
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).
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 mark is not generic, the applicant’s specimen of use may fail to demonstrate that the mark functions as a certification, in which case the registration should be refused accordingly. See TMEP §1306.02(b)(vi).
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.
1306.02(d) Section 2(e)(2) Does Not Apply to Geographic Certification Marks
Trademark Act §2(e)(2), 15 U.S.C. §1052(e)(2), bars registration of primarily geographically descriptive marks, but specifically excludes from this prohibition those marks that serve as indications of regional origin. Thus, when a mark consists of or includes a geographic designation that functions to certify regional origin, the examining attorney must not refuse registration or require a disclaimer on the basis that the designation is primarily geographically descriptive of the goods or services. See TMEP §1210.09. However, a requirement to disclaim other matter in the mark may be appropriate. See TMEP §1213.03(b). For instance, for the geographic certification mark WISCONSIN CHEESE, which certifies that cheese products originate in Wisconsin, a disclaimer of the generic term "CHEESE" is appropriate.
1306.02(e) Geographically Deceptive Marks Not Registrable as Geographic Certification Marks
A geographic certification mark that is geographically deceptive may not be registered on either the Principal or Supplemental Register and must be refused under Trademark Act §2(a), 15 U.S.C. §1052(a), or §2(e)(3), 15 U.S.C. §1052(e)(3), as appropriate. See TMEP §1210.05 regarding geographically deceptive marks.
1306.02(f) Geographic Designations that Do Not Certify Regional Origin
Sometimes, a geographic designation in a certification mark is not used to certify the geographic origin of the goods or services. For example, a certification mark includes the word "California," but is used to certify that the fruits and vegetables to which it is applied are organically grown. The word "California" may or may not describe the geographic origin of the goods, but, in this instance, it is not being used to certify that the goods originate in California. If a geographic designation in a certification mark is primarily geographically descriptive of the goods or services, and the certification mark’s purpose, as indicated by the certification statement, is to certify something other than geographic origin, the examining attorney must refuse registration under Trademark Act §2(e)(2), 15 U.S.C. §1052(e)(2), or require a disclaimer, as appropriate. If a geographic designation in a non-geographic certification mark is geographically deceptive as applied to the goods or services, the mark must be refused under §2(a) 15 U.S.C. §1052(a), or §2(e)(3), 15 U.S.C. §1052(e)(3), as appropriate.
See TMEP §§1210-1210.07(b) for information on refusals under §§2(a), 2(e)(2), and 2(e)(3), including when it is appropriate to issue refusals in the alternative.
1306.02(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 § 1306.02(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. See Institute 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); Brown-Forman Corp., 47 USPQ2d at 1891; TMEP §1306.06. 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. See TMEP §1306.06.
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.
1306.02(g)(i) 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 §1306.06(f)(iii). 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.
1306.02(g)(ii) 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 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. 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 Institute 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.
1306.02(h) Same Mark Not Registrable as a Certification Mark and Another Type of Mark
Because a certification mark’s purpose and function differ significantly from those of other types of marks, registration as a certification mark precludes the same owner from registering the same mark as any other type of mark (e.g., a trademark or a service mark) for the same goods or services. See 15 U.S.C. §1064(5)(B) (providing for cancellation of a registered certification mark if the registrant engages in the production or marketing of any goods or services to which the certification mark is applied); In re Monsanto Co., 201 USPQ 864, 868-69 (TTAB 1978); TMEP §1306.05(a). Likewise, if a mark is registered as something other than a certification mark, the same owner may not register the mark as a certification mark for the same goods or services. In these circumstances, the applied-for mark must be refused under Trademark Act §§4 and 14(5)(B). 15 U.S.C. §§1054, 1064(5)(B); see also 37 C.F.R. §2.45; TMEP §1306.05(a).
For these purposes, two marks need not be identical, but any differences must be so insignificant that the marks would still be viewed as essentially the same. Even small variations in wording or design, if meaningful, can create different marks that may coexist on the register. See TMEP §1306.05(a).
1306.02(i) American Viticultural Areas
American Viticultural Areas (AVA) are defined grape-growing regions in the United States, created on petition by interested parties through the federal rulemaking process. AVA designations appear on wine labels and "allow vintners and consumers to attribute a given quality, reputation, or other characteristic of a wine made from grapes grown in an area to its geographic origin." Thus, these designations facilitate the accurate description of wine origins and aid consumers in identifying wines. See U.S. Dept. of the Treasury, Alcohol and Tobacco Tax and Trade Bureau, American Viticultural Area (AVA), http://www.ttb.gov/wine/ava.shtml (accessed June 30, 2014). The currently recognized AVA designations can be found at 27 C.F.R. §§9.22-9.233. In addition, the Alcohol and Tobacco Tax and Trade Bureau of the U.S. Department of the Treasury provides an up-to-date alphabetical list of the designations at http://www.ttb.gov/appellation/us_by_ava.pdf.
Although AVA designations are similar to geographic certification marks in terms of their purpose and function, these designations raise complex issues when included in applied-for marks of any type. Thus, if an applied-for mark of any type contains an AVA designation, the assigned examining attorney must consult the Administrator for Trademark Policy and Procedure before taking any action on the application.
1306.02(j) Certification Marks Containing §2(b) Matter
Trademark Act §2(b), 15 U.S.C. §1052(b), bars the registration of marks that contain the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation. If a geographic certification mark includes this matter, it must be refused registration. See TMEP §§1204–1204.05 regarding refusing registration under §2(b).
1306.02(k) Examples of Geographic Certification Marks
Example 1
Mark: IDAHO (typed drawing)
Specimen
Goods: Potatoes and potato products, namely, fresh, frozen, refrigerated and dehydrated potatoes
Certification Statement: "The Certification mark, as used by authorized persons, certifies that goods identified by the mark are grown in Idaho and that the goods conform to quality, grade and other requirements, pursuant to standards designated by the Applicant."
Example 2
Mark
Specimen
Goods: Potatoes and potato products, namely, fresh, frozen, refrigerated and dehydrated potatoes
Certification Statement: "The certification mark, as used by person[s] authorized by the certifier, certifies 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."
Example 3
Mark
Specimen
Goods: Cheese
Certification Statement: "The certification mark is used upon the goods to indicate that the same has been manufactured from sheep’s milk only, and has been cured in the nature caves of the community of Roquefort, Department of Aveyron, France." See TMEP §1306.02(b)(i) regarding the preferred form and content of the certification statement.
Example 4
Mark
Specimen
Goods: Oranges; grapefruit, tangerines, orange juice; grapefruit juice; orange juice concentrate and grapefruit juice concentrate, both frozen and unfrozen; and citrus salad
Certification Statement: "The mark certifies that the goods bearing the mark either consist of citrus fruit grown in the state of Florida, under specified standards, or are processed or manufactured from or with such fruit." See TMEP §1306.02(b)(i) regarding the preferred form and content of the certification statement.
Example 5
Mark: RECIOTO (standard characters)
Specimen
Goods: Alcoholic beverages, namely, wine
Certification Statement: "The certification mark, as used by persons authorized by the certifier, certifies a wine produced in the Valpolicella region of Italy."
Example 6
Mark
Specimen
Goods: Butter and cheese
Certification Statement: "The mark certifies that the goods are produced in Denmark and meet standards and quality established by applicant." See TMEP §1306.02(b)(i) regarding the preferred form and content of the certification statement
Example 7
Mark
Specimen
Services: "Retirement communities in Texas, development of retirement communities in Texas, and retirement homes in Texas"
Certification Statement: "The certification mark, as used or intended to be used by persons authorized by the certifier, certifies that the services provided originate in the State of Texas, and meet community, tax, housing, safety, employment, healthcare, public transportation, educational, leisure, and recreational standards as set by the certifier."
Example 8
Mark
Specimen
Goods: Tea
Certification Statement: "The certification mark, as used by persons authorized by certifier, certifies that a blend of tea contains at least sixty percent (60%) tea originating in the Darjeeling region of India, and that the blend meets other specifications established by the certifier." See TMEP §1306.02(b)(i) regarding the preferred form and content of the certification statement.
Example 9
Mark: VIDALIA (typed drawing)
Specimen
Goods: Fresh onions
Certification Statement: "The certification mark is intended to be used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia onion act of 1986."