The United States Patent & Trademark Office (USPTO) issues new guidance for trademark applications covering certain cheese and processed meat products when an applied-for mark includes geographic wording that does not indicate geographic origin, but otherwise may be generic for such goods.
What’s in a name?
Certain geographic terms may be protected geographic indications of origin (e.g., Champagne, Roquefort) while others are generic for a product (e.g., French fries, Texas toast). Certain other terms, while previously geographic indications of origin, have now lost their geographic significance and can also be considered generic for the product (e.g., “cheddar” cheese, “brie” cheese, “bologna” meat).
New USPTO guidance relates to this third category – “geo-significant terms.” The U.S. Food and Drug Administration (FDA), U.S. Department of Agriculture (USDA), or international food standards body Codex Alimentarius (Codex) require producers to satisfy specific requirements (known as “standards of identity”) to market certain cheese or processed meat products with these geo-significant terms that are now common names of a product. These names include but are not limited to:
- CHEDDAR, EDAM, ROMANO, and PROVOLONE (regulated by FDA);
- FRANKFURTER, WIENER, BOLOGNA, and BRAUNSCWEIGER (regulated by USDA);
- BRIE, CAMEMBERT, EDAM, GOUDA, and HAVARTI (regulated by the Codex).
As standards of identity relate solely to production methods and ingredients, there is no requirement by FDA, USDA, or the Codex that a product come from a specific place, although many of these terms identify a product that once came only from the geographic location referred to by the name (e.g., cheddar cheese originated in Cheddar, England). As such, these terms are not certification or collective marks of regional origin (which refer to the place the product comes from and meet specific quality standards); they are instead standards of identity (food-labeling requirements intended to prevent consumers from being misled as to the nature of the product they are buying).
As these “geo-significant” terms no longer indicate a single source, the USPTO takes the position that the inclusion of these terms on lists of standards of identity in FDA, USDA, or Codex databases is strong evidence that this geo-significant wording is generic for the identified cheese or processed meat goods.
The USPTO advises examining attorneys to research whether a particular geo-significant term is a standard of identity for the goods specified in the application at either FDA, USDA, or in the Codex database. If so, the examining attorney will either refuse registration or require a disclaimer of the geo-significant term in accordance with USPTO practice.
Additionally, when there is evidence that the accuracy of a product’s compliance with a standard of identity is material to consumer purchasing decisions (i.e., a consumer bought the product thinking it was the particular cheese or processed meat named in the mark), a mark incorporating such terms used on non-compliant products would be deceptive within the meaning of the Trademark Act. The examining attorney must then require that the applicant amend the identification of goods to include the geo-significant term.
If a mark incorporates a standard of identity that relates to cheese or processed meats for services, the examining attorney must contact the Office of the Deputy Commissioner for Trademark Examination Policy before taking any action on the application.
If you seek to register a mark containing a “geo-significant” term, ensure that the term is included in the recitation of goods (e.g., seek registration for not just “meat,” but “bologna”; not “cheese,” but “cheddar cheese”) to avoid potential deceptiveness issues. Additionally, ensure that your cheese or meat product is actually compliant with a FDA, USDA, or Codex standard of identity to avoid further scrutiny at the USPTO (and these other food regulatory bodies).