GIs can be seen as a subset of trademarks. They are also source identifiers and valuable business assets. Geographical Indications in the US are usually protected as certification and collective marks. An important feature of the US trademark and GI system is that it prevents the unauthorized use of the mark/GI by third parties. Thus, giving the owner exclusivity over their product.
Benefits of protecting GI through the trademark system
Protection of GI as trademarks, collective marks, or certification marks uses the existing trademark regime. Most businesses, both domestic and foreign are aware of this system and it also saves the government resources as no additional resources have to be used. Moreover, this system accommodates GI as not only place names but also signs, words, slogans, and designs.
It also saves the government from resources spent on compliance as the system takes care of itself. Private owners can take action against infringement or any unauthorized use without waiting for the government.
GIs as certification marks
A certification mark is a word, name, symbol, or device used by a party or parties other than the owner to certify some aspect of the owner’s products. Certification marks can be used to indicate the region, material, and work which was performed on the product by a member of an organization. The main purpose of the certification mark is to show consumers that the product meets certain standards or qualifications. The applications made for the registration of certification marks are examined by the United States Patent and Trademark Office (USPTO).
GIs as collective marks
In the United States, there are two types of collective marks:
1. Collective trademarks or service marks: It is a mark adopted by the collective for use only by its members who use the mark to identify and distinguish their products from non-members.
2. Collective membership marks: This mark is used for the purpose of indicating membership in an organized collective group.
The collective membership mark is not used to distinguish the products. It only shows that the person displaying the mark is a member of the organized collective group.
GIs as trademarks
GIs can be protected as a trademark. The geographic sign can be used in such a way as to show the source of the product. In time, if the consumers start to relate the product to the manufacturer or company, the geographic sign acquires a secondary meaning. Customers not only identify the geographical origin of the product but also the company’s name.
Opposition and cancellation
If a third party is aggrieved by the registration of a trademark, service mark, or certification mark, the party can institute proceedings at the Trademark Trial and Appeal Board (TTAB). The TTAB, a body of the USPTO has jurisdiction over opposition and cancellation proceedings. An opposition proceeding can be initiated after the mark is published in the official gazette of the USPTO. In a cancellation proceeding, the party seeks to cancel an existing registered mark.
The party may appeal against the decision of the TTAB to the Court of Appeals for the Federal Circuit. This court has jurisdiction over matters of intellectual property. If the party loses again, they may finally appeal to the US Supreme Court.
Common law GI
GIs are also protected by the common law without needing registration from the USPTO. For instance, COGNAC is a name protected as common law certification in the US. It is not a generic term because consumers in the US understand Cognac as a brandy originating in the Cognac region of France and not elsewhere.
