When It Is More Than Just a Name – Trademark Significance of Geographic Indications
Issues of the geographic indications of products regularly turn up in the trademark context. Some well-known examples include COGNAC for brandy from France or ROQUEFORT for cheese manufactured from sheep’s milk only, and cured in the natural caves of the community of Roquefort, department of Aveyron, France. Notable U.S. geographic indications include Florida oranges, Idaho potatoes, and Washington State apples.
Geographical indications are considered a subset of trademarks, and they serve similar functions as source identifiers and proof of the product’s quality. As certification and collective marks, the United States Patent and Trademark Office protects geographical indications of either domestic or foreign origin through the trademark system.
Notably, the United States does not protect generic geographic terms for goods or services. A geographic term is considered generic when it is so widely used that consumers do not view the mark as a geographic indication, but rather as a category of goods and services.
Just last year, the U.S. Trademark Trial and Appeal Board (TTAB) found that “gruyere” is a generic name for a type of cheese and cannot be registered as a certification mark. Int’l Dairy Foods Assn. v. Interprofession du Gruyère & Syndicat Interprofessionel du Gruyère, No. 91232427 (T.T.A.B., entered August 5, 2020). In that case, Swiss and French associations sought registration of the certification mark to prevent the use of the term Gruyere for cheese that did not originate in the region of Gruyère. The attempt was rejected after the TTAB found that consumers did not associate the term with the region.
Another interesting example in the news recently is a dispute in Canada in which the Scotch Whisky Association (SWA) is suing Macaloney’s Caledonian Distillery in Saanich, a district municipality on Vancouver Island in British Columbia, for the use of the terms Caledonian and Macaloney. The SWA’s enforcement policies center around the significance and renown of “Scotch Whiskey.” In this particular dispute, the SWA argues that Scottish indications cannot be used about a product that is not produced in Scotland. According to the SWA’s website, through its global enforcement activities, it will ensure that products do not take advantage of the reputation of Scotland’s national drink.