The GI System in the United States of America (USA)

Transcription

1 The GI System in the United States of America (USA) Manila February 28 and 29, 2012 Nancy Omelko, Attorney Advisor Office of Policy and External Affairs United States Patent and Trademark Office 1

2 What will be covered? Relevant TRIPS provisions How the U.S. protects Geographical Indications (GIs) Certification marks Collective marks Trademarks Benefits of U.S. registration The registration process Conclusion 2

3 Important TRIPS Tenets GIs are private rights like trademarks. Members can decide how to protect GIs a sui generis system is not required. 3

4 TRIPS Preamble: Recognizing that intellectual property rights are PRIVATE rights. Geographical indications are included in the list of intellectual property rights in TRIPS therefore they are private rights. A private right must have an owner. An owner can be a public authority. But it can also be an entity such as a private collective or certifier. 4

5 Members decide how to protect GIs TRIPS Article 1 permits Members to determine the appropriate method of implementing the provisions within their own legal system and practice. Members shall not be obliged to implement in their law more extensive protection than is required by this Agreement. This means that a sui generis system is not required for protecting GIs. 5

6 Why did the U.S. choose not to implement a sui generis system? After reviewing the TRIPS requirements and comparing them to our existing law, we found that our trademark system already protected GIs. We chose not to create a whole new system because there was no need to complicate our trademark laws with redundant protection. We also knew that creating two systems for the same protection could lead to miscommunication between trademark and GI offices and the possible result of diminishing or extinguishing prior trademark rights. 6

7 GIs are important but not more important than trademarks A GI provide consumers with an important positive association with a product. If it has reputation as a quality product, consumers will buy it and even tell others about how good it is free advertising. A GI is a great marketing tool for producers who will get more money for their efforts because consumers will pay premium dollars to buy their products instead of spending less on inferior ones. This all sounds like a trademark! 7

8 Is there any substantial difference between GIs and trademarks? No. A geographical indication identifies the geographic source of a product that has acquired its quality, reputation or other characteristics from that named region. A geographically distinctive trademark also identifies the geographic source of a product that has acquired its quality, reputation or other characteristics from that named region. 8

9 Why is a trademark system a good fit? A trademark system provides protection for source indicators: GIs and trademarks indicate the geographic source of the product to which a consumer has associated desirable characteristics. allows for a geographic term to acquire distinctiveness because of its reputation. (The term is no longer just a geographic designation it now has secondary meaning as a source indicator.) respects prior rights through ex parte examination procedures and inter partes proceedings prior owners should not have to relinquish the good will they have established in these marks. recognizes the importance of preserving generic terms for producers loss of generics can result in higher prices and customer confusion if the generic word needs to be renamed. 9

10 COCA COLA is probably the most famous trademark in existence. It was first registered in 1893 in the USPTO. Of all the company s assets around the world, it is said, that this trademark and the other COCA COLA marks are the company s biggest assets. The Coca Cola Company has spent huge amounts of money in advertising including placing its mark on collateral goods such as t shirts and hats. Because of brand recognition, the company is successful in getting top dollar for its products. Recognition and success are available for geographical indication trademarks as well. 10

11 No need for government involvement Exclusive intellectual property rights reward investment by the owner that benefits consumers. Would the Coca Cola company want the U.S. government to interfere with the expertise that led to the company s success? As mentioned, these are private rights our taxpayers should not be paying for private rights holders obligations to protect their marks or retain control. Intellectual Property policy balancing Does not award exclusivity due to soil characteristics or growing conditions but instead rewards those who exploit the soil to make a quality product for the benefit of consumers again, no need for government involvement. 11

12 Effect of government involvement With additional governmental red tape, it is very difficult to get protection for foreign products in countries where the government is involved. For example, the EU has protected less than 10 foreign GIs, as compared with over 800 of its own. Although the argument is made that not many non EU applications are filed the answer is that the process takes too long, costs too much and is not likely to end in success. The USPTO on the other hand has registered over 100 foreign GIs more than our domestic ones. 12

13 Examples of geographically distinctive Italian marks registered in USPTO Cappero di Pantelleria capers Aceto Balsamico di Modena vinegar Zafferano di Sardegna saffron Miele della Lunigiana honey Riso Vialone Nano Veronese rice Deruta ceramic figures Farina di Neccio della Garfagnana chestnut flour 13

14 and other USPTO registrations for Italian Shallots Beans Pears Clementines preserved onions Cherries Kiwi Peaches Nectarines Hazelnuts Oranges Lentils Asparagus Lemons Grapes mushrooms 14

15 Examples of 4 of the 16 registrations for Parmigiano Reggiano in the USPTO 15

16 Certification marks for Thailand 16

17 Standards U.S. certification mark applications must include the certifier s standards used to determine whether a product is qualified to display the certification mark. These standards should be created bottom up, by the certifier and the growers not top down, by the governments. If the owners and producers need help from the government they can always ask for it it should never be imposed. Standards include the demarcations of the territory where the product is grown; the desirable characteristics; the climate and topography that produce those characteristics; testing qualifications 17

18 Self enforcing enforcing No government inspection is necessary except for health or safety reasons. The certification standards provide for inspection of the products by someone designated by the certifier. This can be an independent inspector. The logic for non involvement of government is that it is in the owner s best interest to ensure that its product retains the quality characteristics that consumers are paying top dollar for otherwise the diminished quality of the product could have a negative impact on sales. This would eventually lead to the devaluation of the mark and the diminishing of profits for producers. 18

19 The U.S. System: Regional Certification Marks protect geographical signs that certify goods originate in the region identified where use of the sign is controlled by the certifier limited to products meeting the certifier s standards of regional origin purchasers understand the sign to refer only to products from that region 19

20 Certification Marks Owners of certification marks determine the standards that each producer must meet in order to use the certification mark on its packaging. Owners cannot themselves use the mark because of the presumed bias in favor of their own products meeting the standards. Owners cannot discriminate against those producers who meet the certification standards these producers must be allowed to use the mark. 20

21 Example: Darjeeling tea DARJEELING for tea First use in US commerce: 1987 Registration Number Owner: Tea Board of India (Corporation of India) The Certification Mark, as used by authorized persons, certifies that the tea contains at least one hundred percent (100%) tea originating in the Darjeeling region on India, and that the blend meets other specifications established by the certifier. The application must also include copy of standards which, among other things, defines the territory where the product must be produced and quality requirements. 21

22 Collective Trademarks This type of mark is used by all members of the producer group; but no one member can own the mark, and the collective organization holds the title to the collectively used mark for the benefit of all members of the group. The collective organization itself does not sell the goods under the mark, but may advertise to publicize the mark and promote the goods sold by its members under the mark. For example, an agricultural cooperative of produce sellers does not sell its own goods, but promotes the goods of its members who do sell the goods. 22

23 SPE null Specimen servlet Example: Pecorino Romano CHEESE MADE FROM SHEEP'S MILK Registration Number Owner: CONSORZIO PER LA TUTELA DEL FORMAGGIO PERCORINO ROMANO UNINC. ASSOCIATION ITALY Priority Date February 2, 1982 NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "PECORINO ROMANO" APART FROM THE MARK AS SHOWN Map to the right shows where product originates. 23

24 Trademarks The are very few examples for registering marks of geographic origin as trademarks. The government of Ethiopia s obtained U.S. registrations for its three coffee products, including for SIDAMO, HARAR and YIRGACHEFFE. You can access the information on the USPTO website. 24

25 Example: Sidamo SIDAMO for coffee First use in US commerce: 1928 Registration Number Owner: Government of Ethiopia Trademark Proof of acquired distinctiveness 25

26 Advantages of U.S. registration Serves as constructive notice nationwide of TM owner's claim. Is evidence of ownership of the mark. Facilitates suing in U.S. court. Can be used as a basis for obtaining registration in foreign countries. May be recorded with U.S. Customs Service to prevent importation of infringing foreign goods. 26

27 Notice to third parties The USPTO s electronic database is a valuable source for providing notice to third parties that the registrant has exclusive rights to the mark. Applicants routinely search the database prior to filing. The prudent applicant will forego filing if a confusingly similar mark is uncovered. This benefits both the rights holder and the applicant because it eliminates the need to litigate. TRIPS Article 63 requires transparency. The USPTO system provides that and additional benefits to its users. 27

28 The application process Electronic application filed with the USPTO Application examined by an attorney If refused registration, an opportunity to appeal that decision within the USPTO is provided. If approved, interested parties can oppose registration. If no opposition, or the applicant prevails, then the registration will issue. Although relatively rare, a third party may petition to cancel the registration. 28

29 Opposition and Cancellation Available to anyone domestic or foreign, who believes that he would be damaged by the registration, or the continued existence of a U.S. registration. Opposition is used to prevent the issuance of a registration of a mark. Cancellation is used to cancel an existing registration of a mark. The Trademark Trial and Appeal Board ( TTAB or Board ), of the U.S. Patent and Trademark Office (USPTO) is available to hear this cases as are federal courts. 29

30 Selecting the application basis There are 5 bases for foreign applicants in the US: Bona fide intent to use the mark in commerce Use in commerce Priority based on an application filed in home country within the prior 6 month period Foreign registration Madrid Protocol 30

31 Most likely basis for foreign applicants Producers in most countries who do not have a market in the US choose to file the U.S. application based on a foreign registration or if still within the 6 month priority period starting with the initial filing date in the country of origin based on that filing. They can also file based on a Madrid Protocol international registration. Both of these bases require the foreign applicant to state a bona fide intention to use the mark in U.S. commerce. In other words a business plan for introducing this product in the U.S. 31

32 Applicant has time to use the mark in U.S. commerce If the U.S. application is based on a foreign filing, the foreign owner does not have to use the mark in U.S. commerce until at 3 years after registration; but more likely 6 years after registration, when a declaration of use must be filed. This is not true for American applicants because they must use the mark in U.S. commerce before it can be registered. TRIPS Article 3 requires WTO Members to afford nationals of other Members no less favorable treatment the U.S. actually treats foreign rights holders more favorably. 32

33 Inexpensive!! Filing fee for paper filing: Filing fee for e filing: $375 per class of goods/services $325 per class of goods/services if filed using the regular TEAS form available $275 per class of goods/services if filed using the TEAS Plus form 33

34 Benefits of Filing Online fast efficient accurate! In addition to a lower filing fee You minimize chances of making a mistake! You get instant acknowledgement of receipt! You re assured that the data you provide will be properly entered into the USPTO databases, since the data entry is accomplished electronically by the applicant, not manually by the office. 34

35 Fast!! FISCAL YEAR 2011 (October 1, 2010 thru September 30, 2011) Examination: 3.1 months from filing to 1st Office Action Registration: 10.5 months after filing 35

36 Maintaining rights in the U.S. Once the registration issues, a showing of use in commerce with the United States during the fifth and sixth year of registration is necessary. Cost: 100 USD per class. This is also required for renewing a registration every 10 years. Cost: 400 USD per class. Electronic forms can be completed very easily; much of the data is entered automatically. The owner must exercise control over use of the mark otherwise it may become generic. 36

37 Protecting intellectual property rights in the U.S. Register marks and maintain the registrations. License use of marks, in writing, with manufacturers, distributors, and any other authorized third party users. Exercise quality control over the licensees products. Monitor the online USPTO Official Gazette (and similar publications in other countries), monitor the marketplace, and STOP unauthorized third party uses. 37

38 Conclusion An existing trademark system can protect geographical indications either as certification marks, collective marks or trademarks. Trademark systems are user friendly countries, consumers and producers are familiar with them. They protect prior rights. They recognize that generic terms must be available for all producers to use. The U.S. trademark system is TRIPS compliant, efficient, transparent and economical. 38

39 Important links Trademarks home page for links to searching, status, documents, electronic forms. Trademark manual of examining procedure Complete Darjeeling file example 39

40 Thank you Questions? 40