1210.08    Geographical Indications Used on Wines and Spirits

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),  prohibits the registration of a designation that consists of or comprises "a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996]." This provision was added by the Uruguay Round Agreements Act, implementing the Trade-Related Intellectual Property ("TRIPs") portions of the General Agreement on Tariffs and Trade ("GATT"). This provision does not apply to geographic indications that were first used in commerce on or in connection with wines or spirits prior to January 1, 1996.

The term "spirits" refers to "a strong distilled alcoholic liquor" (e.g., gin, rum, vodka, whiskey, or brandy). Random House Webster’s Unabridged Dictionary 1839 (2nd ed. 1998). This provision does not apply to designations used on or in connection with beer, nor does it apply to goods that are not wines or spirits, but are partially composed of wines or spirits (e.g., wine vinegar, wine sauces, wine jelly, rum balls, bourbon chicken).

This provision of §2(a) applies if the applicant’s identification of goods: (1) specifically includes wines or spirits; or (2) describes the goods using broad terms that could include wines or spirits (e.g., alcoholic beverages).

Section 2(a) is an absolute bar to the registration of these geographical designations on either the Principal Register or the Supplemental Register. Neither a disclaimer of the geographical designation nor a claim that it has acquired distinctiveness under §2(f) can obviate a §2(a) refusal if the mark consists of or comprises a geographical indication that identifies a place other than the origin of the wines or spirits.

See TMEP §1210.08(a) regarding geographical indications used on wines and spirits that do not originate in the named place, TMEP §1210.08(b) regarding geographical indications used on wines and spirits that originate in the named place, TMEP §1210.08(c) regarding geographical indications that are generic for wines and spirits, and TMEP §1402.03(g) regarding situations in which the name and/or acronym of a trademark protection system or scheme for a geographical indication appears in an identification.

1210.08(a)    Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place

In implementing the TRIPs Agreement through the Uruguay Round Agreements Act ("URAA"), Pub. L. No. 103-465, 108 Stat. 4809 (1994), Congress approved a Statement of Administrative Action ("SAA") which provides, in part, that:

"Geographical indications" are defined in TRIPs Article 22.1 as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin." The Administration expects that this definition will be applied in the context of trademark registration and that a "geographical indication" as used in this provision will be interpreted to comprise only those areas which have a reputation for being associated with the specific goods at issue. Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration (emphasis added).

Statement of Administrative Action, Agreement on Trade-Related Aspects of Intellectual Property Rights, H.R. Doc. No. 103-316, §B.1.e (1994); 19 U.S.C. §§3511(a)(2)  and 3512(d).

A designation is considered a geographical indication under §2(a) if it identifies the applicant’s wines or spirits as originating in a territory known for a given quality, reputation, or other characteristic associated with wines or spirits. A mark for wines or spirits that includes a geographical indication is unregistrable if: (1) purchasers would erroneously believe that the goods originate in the relevant geographic location; and (2) the quality, reputation, or characteristic associated with wines or spirits from that location would materially affect the purchaser’s decision to buy the goods.

To establish a prima facie case for refusal to register a mark under the "wines and spirits" provision of §2(a), the following is required:

  • (1) The primary significance of the relevant term or design is geographic, e.g., a place name, abbreviation, nickname, or symbol; or an outline or map of a geographic area (see TMEP §§1210.02(a)–1210.02(b)(iv));
  • (2) Purchasers would be likely to think that the goods originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place association (see TMEP §§1210.04–1210.04(d));
  • (3) The goods do not originate in the place identified in the mark (see TMEP §1210.03);
  • (4) A purchaser's erroneous belief as to the geographic origin of the goods would materially affect the purchaser's decision to buy the goods (see TMEP §§1210.05(c)–1210.05(c)(ii)); and
  • (5) The mark was first used in commerce by the applicant on or after January 1, 1996.

Section 2(a) is an absolute bar to the registration of false geographical indications used on wines or spirits on either the Principal Register or the Supplemental Register. Neither a disclaimer of the geographic term or design nor a claim that it has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f),  can obviate a §2(a) refusal if the mark consists of or includes a geographical indication that identifies a place other than the true origin of the wines or spirits.

Requirement for First Use On or After January 1, 1996

For all applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a),  where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the applicant’s first use of the mark in commerce is or will be on or after January 1, 1996, unless the application record indicates otherwise.

If the examining attorney determines that a mark featuring a false geographical indication was in use prior to January 1, 1996, the examining attorney must refuse registration because the mark is primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3),  and deceptive under §2(a). See TMEP §1210.05(a).

1210.08(b)    Geographical Indications Used on Wines and Spirits That Originate in the Named Place

If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under §2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate. See TMEP §§1210.01(a) and 1210.06(a).

Sometimes, a geographic term is used to certify the geographic origin of wines or spirits. If the proposed mark is used to certify the goods, the applicant may convert the application to one for a certification mark of regional origin under §4 of the Trademark Act, 15 U.S.C. §1054.  See TMEP §1306.06(b) regarding amendment to a different type of mark, and TMEP §§1210.09 and 1306.05-1306.05(c) regarding geographic certification marks.

1210.08(c)    Geographical Indications That Are Generic for Wines and Spirits

When a geographic term or design in the mark is generic for a type of wine or spirit, the examining attorney must refuse registration under §2(e)(1) on the Principal Register or §23 on the Supplemental Register, as appropriate, because the term or design is generic. See TMEP §§1209.02-1209.02(b). Or, if appropriate, the examining attorney must require a disclaimer of the generic term or design. See TMEP §§1213–1213.11 regarding disclaimer.

A geographic term or design is considered generic if United States consumers view it as designating the genus of the goods, rather than their geographic origin. See TMEP §§1209.01(c)–1209.01(c)(iii). If a geographic term or design is used in connection with wines or spirits, the examining attorney may submit a search request to the Trademark Law Library to determine whether there is evidence indicating that the term or design is generic for the applicant’s goods.