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Trademarks / Trademark Law / Geographical Indications
 

Certification Marks


The United States offers protection for GIs, whether of domestic or foreign origin, registered or unregistered. [13] In the United States, Certification trademarks have been utilized to protect GIs. [14] Examples of geographical indications protected as Certification Marks in the United States include DARJEELING for tea and ROQUEFORT for cheese.

Indeed, Certification Marks are and have been utilized in various countries, including India, but only a minority of countries globally. These marks are used to “certify” the nature or origin of the goods or services, including as to region or location, method or mode of manufacture, standard of performance, quality, accuracy, etc. as well as to identify goods/ services provided by a particular union or association. Such marks cannot be owned by the person and/or company trading in the actual goods and/or services and must fulfill certain regulations, maintain certain certification standards and face more limitations than encountered by the owner of a standard trade or service mark. Certification Marks, for example, may be required to be assignable only with governmental consent and/or be granted only if the mark is in the public interest. In practice, Certification Marks provide cost-effective value only in a handful of special situations such as the UNDERWRITERS LABORATORY logo in the United States and DARJEELING tea in India. Traditional trademarks are much more important to the business owner who wishes to foster brand recognition in the marketplace for his or her own particular goods and/or services.


[13] The United States protects GIs that are not registered as well. For example, the Trademark Trial and Appeal Board, an administrative appeal body within the USPTO, recently held that COGNAC is protected as an unregistered certification mark in the United States. Institut National Des Appellations v. Brown-Forman Corp. , (COGNAC is a valid common law regional certification mark, rather than generic term because U.S. purchasers primarily understand the COGNAC designation to refer to brandy originating in the Cognac region of France, and not to brandy produced elsewhere, and since opposers in this proceeding control and limit use of the designation). 47 U.S.P.Q.2d 1875 (T.T.A.B 1998).
[14] Under United States law, “‘certification mark’ means 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 intent to permit a person other than the owner to use in commerce and files an application to register on the principal register..., 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.” 15 § U.S.C. 1227. See The Trade Marks Act, 1999, Chap. IX, §§ 69-78 (regarding certification marks under India’s trademark law, also soon to be enacted officially at the time this of this writing).


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© Copyright 2002 Ian J. Kaufman - Posted July 2002
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