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 as referring 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.

See

Luxco, Inc. v. Consejo Regulador del Tequila, A.C.

, 121 USPQ2d

1477, 1483 (TTAB 2017).

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

Int’l Dairy Foods Ass’n v. Interprofession du Gruyère

, 2020 USPQ2d

10892, at *21 (TTAB 2020);

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 [sic]

, 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

ar hardness, texture, and flavor

characteristics, regardless of regional origin.

In re Cooperativa Produttori Latte E

Fontina Valle D'Acosta [sic]

, 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 establish a prima facie case that a

designation is generic by providing a reasonable predicate (or basis) that the

relevant purchasing public would primarily use or understand the matter sought to be

registered to refer to genus of goods or services in question. 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.

Int’l Dairy Foods Ass’n

, 2020

USPQ2d 10892, at *18-22;

Tea Bd. of India

, 80 USPQ2d at 1887;

In re Cooperativa Produttori Latte E Fontina Valle D'Acosta

[sic]

, 230 USPQ at 133-34;

see also

Luxco, Inc

, 121 USPQ2d at 1483-97 (holding opposer failed to

establish genericness of TEQUILA, based on evidence that included federal

regulations, advertising materials, product labels, recipes, news articles,

retail-store signage, and consumer surveys). 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

ce that included federal

regulations, advertising materials, product labels, recipes, news articles,

retail-store signage, and consumer surveys). 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 proposed mark is not generic, the

applicant’s specimen of use may fail to demonstrate that the mark functions as a

certification mark, in which case registration should be refused under Trademark Act

§§1, 2, 4, and 45.

15 U.S.C. §§1051

,

1052

,

1054

,

1127

.

See

TMEP §1306.05(b)(iii)

.

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.