Trademark Office Issues Tequila Certification Mark Just In Time For National Tequila Day

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

National Tequila Day is celebrated on Monday, July 24. Tequila is made with the distilled extract of the blue agave plant, which grows in and around the city of Tequila and other parts of the state of Jalisco, Mexico. Although agave has been used for the manufacture of fermented beverages since pre-Columbian times, the ancestor of what we now know as “tequila” was reportedly first made in the 16th century by Spanish conquistadors who had run out of imported brandy (which is why they originally called it “Mezcal Brandy”).

As far as we can tell, National Tequila Day is primarily an excuse for the promotion of two-for-one margarita deals. However, tequila manufacturers may be engaging in a little extra celebration this year because, in January 2017, a trade association of Mexican companies finally won their battle to register TEQUILA as a certification mark in the United States.

Certification Marks

A certification mark is a mark used by a person other than its owner to identify goods or services with particular characteristics. Unlike trademarks, which identify for consumers the specific manufacturer or supply source of goods, certification marks let consumers know that goods come from a particular geographic region (e.g., IDAHO POTATOES); or that they contain a certain type of material (e.g., GENUINE PORCELAIN); or that they were made according to certain labor standards (e.g., UFCW UNION MADE).

The owner of a certification mark, usually a trade organization or similar commercial entity, has an obligation to monitor and control the users of the certification mark in order to ensure that the appropriate standards are being followed. For example, the recently-registered NAPA VALLEY wine certification mark is owned by Napa Valley Vintners, a non-profit trade association of over 500 California wine makers.  Certification marks (along with collective marks) are generally considered to be the appropriate mechanism in U.S. trademark law for the protection of what international treaties refer to as “Geographical Indications,” that is, signs or symbols used to denote the geographical origin of a product, as well as the product qualities attributable to that origin.

Hecho en Mexico

In 2003, Consejo Regulador del Tequila, A.C., a trade organization authorized by the Mexican government to regulate tequila, applied to register the TEQUILA certification mark in the United States. According to the application, use of the mark would be limited to the manufacturers of distilled spirits made in Mexico from a specific variety of agave (the “Tequilana Weber, blue variety”) and in accordance with local manufacturing standards. Among the many other proposed requirements, all certified TEQUILA products must contain the words “Hecho en Mexico” (“Made in Mexico”).

The registration was opposed by U.S. liquor importer Luxco, which argued that the word “tequila” had become generic for a type of liquor. Luxco pointed to the prosecution history of other beverage trademark applications in which the United States Patent and Trademark Office had required applicants to disclaim the word “tequila” on the ground that it had become generic. Luxco also pointed to many third party uses of the term “tequila” to generically identify a class of alcoholic beverages. Luxco analogized tequila to vodka, which is associated with Russia generally, but not exclusively, because it is known to be made in other countries as well (Poland, Sweden, United States, etc.).

However, the Trademark Trial and Appeal Board also heard plenty of evidence that the term “tequila” was not generic, but rather was recognized as referring to a distinctive product of Mexico. This evidence included U.S. alcohol labeling regulations that prohibit the use of the term “tequila” by non-Mexican manufacturers; dictionary definitions referring to specific geographic and botanical origins; and a survey showing that 54% of consumers believed that the word “tequila” indicated a beverage made in Mexico.

Because the burden was on Luxco to prove genericness, and the record contained evidence going both ways, the opposition was dismissed. Luxco v. Consequo Regulador del Tequila, A.C., Opposition No. 91190827 (Trademark Trial & App. Bd., Jan. 23, 2017). Luxco has appealed, seeking de novo review in the Eastern District of Virginia, and that appeal is still pending. In the meantime, the registration certificate for the TEQUILA certification mark issued just a few weeks ago, on June 20, 2017, just in time for a little extra National Tequila Day celebration.


Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.