International Standards for the Protection of Intellectual Property

Rights: Trademarks and Geographical Indications

Cynthia Henderson, Attorney-Advisor

U.S. Patent and Trademark Office

(571) 272-9300

Cynthia.henderson@uspto.gov

Trademarks and Geographical Indications –

TRIPs

Trademark Subject Matter (TRIPs)

Well-known marks (TRIPs)

Geographical Indications (TRIPs)

Agreement on Trade Related Aspects of International Property Rights (the TRIPs Agreement)

The most detailed and comprehensive multilateral agreement on intellectual property yet negotiated

TRIPs – What’s the big deal?

– In a single agreement, it establishes minimum standards of protection for the most important forms of intellectual property, including trademarks and geographical indications.

– It establishes standards for enforcement of those forms of intellectual property.

– It provides a binding, enforceable dispute settlement mechanism.

TRIPS Substantive Provisions

Articles 15 – 21 Trademarks

Articles 22 – 24 Geographical Indications

Article 15“

Any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.

Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs shall be eligible for registration as trademarks.”

Eligible Subject Matter

In the U.S., trademarks can be slogans, letters, numbers, logos, three dimensional designs, colors, scents, and sounds that indicate the source of a good or service to consumers.

Eligible Subject Matter, cont.Slogans: “Plop, Plop, Fizz, Fizz, Oh What a Relief it is”.. for

medicine for stomach upset

Letters: IBM for personal computers or FRISBEE for flying discs.

Numbers: 311 for entertainment services – the name of a rock band.

Logos: Nike Swoosh for athletic apparel.

Three dimensional designs:Hershey’s Kisses for chocolate candy

Colors: Pink for Fiberglass Insulation

Scents: Cherry scented motor oil

Sounds: NBC chimes for TV programming

Trademarks are linked to a good or service Coca-Cola is a trademark for soft

drinks. Nike is a trademark for athletic shoes

and clothing. Marlboro is a trademark for cigarettes. ESPN is a service mark for television

sports shows.

Article 15

“Any sign, or combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.”

Capable of

Distinguishing Goods or Services?

F a n c ifu l o r A rb itra ry W o rds"X E R O X "

In h e re n tly d is tin c tive

S u gg e stive"S U N K IS T "

In h e re n tly D ist in c tive

M e re ly D e sc rip tive"C H O C O L A T E F U D G E "

N o t Inh e re n tly D ist in c tiveC a n A cq u ire D is tin c tive n e ss

G e n e ric"S O D A "

N o S o u rce Id e n tifying C ap a c ity

S o u rce In d ica ting C ap a c ityS p ec trum

TRIPS Article 16

“The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods and services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.”

Trademark Rights Based on Use In the United States, this means that the first user

of a mark has the ability to prevent later unauthorized users of the same or similar marks for the same or similar (or “related” – discussed later) goods or services from continuing the use of the mark.

This is not an absolute and exclusive right to use the trademark, just to prevent unauthorized users. Fair uses of the mark by others are allowed.

Note “user”, not “registrant.”

Likelihood of Confusion

The United States’ Trademark Act, the Lanham Act, says that the USPTO must refuse registration of an application for a mark when it is likely--when the mark is used on or in connection with the goods of the applicant--to cause confusion, to cause mistake, or to deceive. 15 USC Section 1052.

Two main considerations: Similarity of marks and relatedness of the goods/services.

Related Goods or Services

Confusion is not determined based on the same Nice Classification but on the nature of the goods or services and their relatedness.

Shoes (Class 25) and Shoelaces (Class 26) – Related Goods but Different Classes.

Computers (Class 9) and life-saving buoys (Class 9) - Unrelated Goods but the same Class.

Well-Known Marks

Paris Convention Article 6bis

Members must protect well-known marks from infringement whether registered or unregistered.

This obligation is incorporated into Article 16 of the TRIPS Agreement

Well-Known Marks and Relatedness

Relatedness of goods and services is less important in infringements well-known marks.

TRIPs Article 16(3): A well-known mark will be found to be infringed even if used on unrelated goods if consumers would be confused and the well-known mark holder would likely be damaged.

“Buick” Aspirin“Kodak” Shoes

Well-Known Marks – Non-exhaustive List of Factors for Judges to Consider

• Degree of Distinctiveness

• Duration and extent of use of the mark

• Duration and extent of advertising of the mark

• Extent of geographical trading area

• Channels of trade

• Degree of recognition of the mark in those channels of trade

• Nature and extent of use of the same or similar marks by third parties

• Whether the mark is registered

WIPO Joint Recommendation on Well-Known Marks

Adopted in 1999 by WIPO Member States

Guidelines for use by Member States: a non-exhaustive and non-exclusive list of factors to use in determining whether a mark is well-known.

GEOGRAPHICAL INDICATIONS (GIs)

TRIPs Arts. 22-24

TRIPs Article 22GIs are…

“Indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.”

Idaho potatoes, Napa Valley wine, Washington State apples

Geographical Indications as Certification Marks

The U.S. view is that GIs are a subset of trademarks because they are both: source-identifiers, guarantees of quality, and business interests.

In the U.S., GIs are protected within the trademark system as certification or collective marks.

Certification Marks

Can certify: 1) geographic origin; 2) materials used, quality, method of

manufacture, and accuracy; or 3) products made under the auspices

of, or by members of a specific trade union or organization

Opposition and Cancellation Available to anyone:

– 1) domestic or foreign,– 2) who would be damaged by the

registration, or the continued existence of a U.S. registration.

Trademark Trial and Appeal Board (“TTAB” or “Board”), of the U.S. Patent and Trademark Office (USPTO).

Common Law Geographical Indications

Protected through common law trademark law without registration.

“COGNAC” protected as a common-law (unregistered) certification mark in the United States.

Institut National Des Appellations v. Brown-Forman Corp, 47 USPQ2d 1875, (TTAB 1998).

Examples of Geographical Indications Protected in the U.S.

Roquefort Cheese (France) - U.S. Registration No. 0571798

Idaho Potatoes (U.S.) - U.S. Registration No. 1,735,559

Stilton Cheese (U.K.) - U.S. Reg. No. 1959589

Parma Ham (Italy) - U.S. Reg. No. 2014628 Cognac (France) – common law certification

mark

Benefits of the U.S. System

Efficiency – utilizes the existing trademark regime

Meets TRIPs obligations. System is self-policing - no additional

enforcement resources necessary.

Trademark information: http://www.uspto.gov

Trademark Examination Search System (TESS) is available online at http://.tess.uspto.gov

TESS contains all pending applications for registration and all registered marks.

www.uspto.gov

Thank you!