Letters and Comment

Geographic certification marks - common misperceptions

As an Attorney-Advisor at the United States Patent and Trademark Office (USPTO), I read with interest your feature on the Ethiopian and Colombian coffee stories (Making the Origin Count: Two Coffees, Issue no 5/2007). In that story, and in press reports surrounding the Ethiopian coffee initiative, I find serious misperceptions of the U.S. certification mark system - even among our own stakeholders. I would like to put the record straight here on some common misperceptions:

- Anyone meeting the standards can use the mark, so there is less control over a geographic term with certification marks than with trademarks.

No. It is true that if a producer meets the standards, the certification mark owner cannot refuse to certify that producer’s goods. This provides fairness in the system and enables producers throughout the region to benefit. However, just because you think you meet the standards in the registration certificate on the USPTO website, it does not mean you can use the mark. In order to get permission your goods have to go through the owner’s certification process, which, depending how this process is set up, is analogous to a licensing situation.

- Certified parties can register composite marks containing the registered certification mark since the use is ‘accurate.’

No. Once registered, these geographic certification marks are private property rights - they are no longer just descriptive terms. As such, the certification mark owner has the duty to control the use of the term by certified parties so as to preserve the ability of the mark to signify goods meeting certain quality standards or possessing other characteristics. USPTO policy precludes approval of subsequent applications for the same goods for composite marks that contain a registered certification mark without the certification mark owner’s consent.

- Geographic certification marks do not protect against use with "blend," "type," or "style."

Wrong. A geographic certification mark, if properly controlled down the distribution chain, can provide grounds to foreclose use of the term with "blend," "type" or "style." Any such use by competitors suggests that they are unaware of the certification mark owner’s claim of exclusive rights to the mark. This could...