General Practice, Solo & Small Firm DivisionMagazine
Intellectual Property Law
Certification Marks as a Means of Protecting Wine Appellations in the United States
By Milo G. Coerper
For almost 40 years, I have practiced in the area of intellectual property law, particularly trademarks and geographical indications of origin. Among other activities, I have been helping clients protect foreign wine appellations in the U.S. market through all means available and have written and lectured extensively on this subject. This article will focus on the use of certification marks in the United States.
Even though protection against use of false geographical indications has long been a part of the common law of the United States and, since the 1905 Trademark Act, also of its federal statutory law, it was only with the Trademark Act of 1946 (the Lanham Act) that certification marks, as such, were named, defined and protected. Although the certification mark is named and defined in a basic federal statute dealing primarily with trademarks, it is a distinct kind of mark, different from a trademark, and may be a geographical indication. Under the Lanham Act, certification marks receive substantially the same protection granted to trademarks.
Certification marks provide the only means for establishing a registered property right in a geographical indication, including a wine appellation, in the United States. Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "certification mark" as any word, name, symbol, or device, or any combination thereof (1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit another person to use in commerce and files an application to register on the principal register established by this act, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
A certification mark, as noted in In re Florida Citrus Commis-sion, 160 USPQ 495, 499 (TTAB 1968), "is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark...."
One type of certification mark certifies that goods and services originate in a specific geographic region. A recent search of active registered certification marks in the U.S. Trademark Office in Class A for goods revealed 827 registrations, of which 170 are for "indications of regional origin." Of these 170 registrations, 61 are for wine appellations, all European (mostly German, for which I was the registration lawyer), except one recently from the United States (which will be discussed briefly below).
The oldest registration is for VIN DE BORDEAUX for wine from the Bordeaux region of France which was issued in 1957 to the association that approves Bordeaux wines. It is possible that, because of this registration, Bordeaux was not listed along with certain other French wine appellations, namely Burgundy, Champagne and Chablis, as a "semi-generic" in the ATF regulations but rather was listed as a "distinctive designation."
As to the one U.S. certification mark for wine, a registration was granted to the Napa Valley Reserve Certification Board for "Napa Valley Reserve" for "still wines and sparkling wines" on April 11, 1995. Why was this registration sought? Several years ago, the European Union (EU) adopted legislation requiring that the term "Reserve" used on any imported wine must be defined by the rules of the country of origin of the wine, and the country of origin must also have some type of certification system in place to ensure the term is used in accordance with published rules. ATF tried unsuccessfully to define the term. As a compromise, the Napa Valley Vintners Association suggested a definition and volunteered to assure compliance with that definition (presumably the "Napa Valley Reserve" certification mark was part of this effort). The United States offered this compromise to the EU. The EU rejected it because it was not regulatory and the association was nongovernmental. It is believed that the wine trade relationship between the United States and the EU is now so badly strained that nothing short of a federal definition will satisfy the EU.
The foregoing is an example of the difference in approach between the EU and the United States in this area, which was highlighted at the International Trademark Association’s (INTA) first World Trademark Symposium in 1992. It was concluded that the protection of geographical indications varies enormously from country to country. An apparent lack of understanding and knowledge of this type of protection in other countries warrants an educational process to understand the problems and solutions offered in the different countries of the world. The group concluded that the term "geographical indications," as used in the symposium, which covers all kinds of names with a geographical connotation, including "appellation of origin," and "indication of source" should prevail. In talking about a "registration system," two kinds of such systems were envisaged: a governmental system, such as the one provided for by the European Commission; and a private initiative system developed by encouraging the use of collective, guarantee or certification marks.
The TRIPS has also had an impact on the protection of wine appellations in the United States. Pursuant to Article 63.2 of the TRIPS Agreement, the U.S. government notified to the TRIPS Council, certification marks, as defined in the Lanham Act and the ATF regulations, as the relevant federal regimes for the protection of geographical indications in the United States.
In addition, the United States has responded to a request of the TRIPS Council in connection with the work to be undertaken under Article 23.4, which provides that to facilitate the protection of geographical indications for wines, negotiations must be undertaken in the Council for TRIPS regarding the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those members participating in the system. There is no time schedule for such "negotiations," nor does it appear that any establishment of such a system need be mandatory – it could be merely informative – as regards the wine appellations notified and registered by the various members.
Accordingly, it is clear that both domestic and foreign wine appellations may best be protected in the United States through the use of registered certification marks.
Milo G. Coerper is a retired partner of the international law firm of Coudert Brothers in Washington, DC, and a counsellor in his areas of expertise.
- This article is an abridged and edited version of one that originally appeared on page 24 in IPL Newsletter, Spring 1998 (16:3).