Redefining GI Distinctiveness to Aid Consumer Protections and Cultural Cooperation

This blog aims to address current issues facing foreign Geographical Indicator (GI) trademark recognition by the USPTO. It also seeks to explain why the USPTO should adopt a wider stance and recognize foreign GI marks more readily.

Attribution
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The current recognition of International Geographical Indicator (“GI”) marks, through certification and collective marks, by the United States Patent and Trademark Office (“USPTO”) does not go far enough to address emerging issues in international commerce regarding food items and food-related handicrafts. As global markets recover from the COVID pandemic, forgers and false distributors alike can exploit the USPTO’s relaxed approach to international GI marks to bring subpar and misidentified products to U.S. consumers. By reforming the current regime under which the USPTO is reluctant to address GI issues outside of the Trade-Related Aspects of Intellectual Property (“TRIPS”) agreement, GI trademarks could serve as a more critical mechanism by which to protect U.S. consumers from dangerous and unhealthy products and misinformation.

GIs typically consist of wordmarks aligning a product’s geographical origin to that region’s name. Some of the most famous examples of these USPTO-protected marks include PARMA HAM, PARMIGIANO REGGIANO cheese, and IDAHO POTATOES GROWN IN IDAHO. The USPTO defers to the TRIPS agreement for international recognition. The 1994 WTO agreement established the necessity, by treaty, of signatory countries to recognize international GIs. However, the USPTO does not always recognize the GI marks that other countries recognize. For example, the EU recognizes the GI “Asiago” as cheese from the Asiago region of Italy. However, the USPTO will not recognize the “Asiago” mark because it believes it is too generic to a U.S. audience. While this would protect U.S. cheese producers from changing product names, it also allows international producers without recognized marks to import subpar products under a perceived mark of quality.  

The issues above become especially true when applied to handicraft marks. While the U.S. has limited recognition of domestic handicrafts under the Indian Arts and Crafts Act (“IACA”), international recognition is more challenging. Take, for example, the Yixing Teapot, a traditional Chinese teapot made from specific clay from Yixing, China. The prestige associated with the ware is significant enough that the local Chinese government recognizes it as a protected cultural product. However, the U.S. does not. While the traditional Yixing clay is typically safe for consumption, many forgeries are poorly and cheaply made, leading to risks of the wares being unclean and unsafe for use. These forgeries are rife on the U.S. market because there are no protections against using the “Yixing” mark when importing. This is a blatant health risk to U.S. consumers that could be significantly reduced if the USPTO adopted and recognized Yixing as a GI mark for importation purposes. Recognition would prevent forgers from passing off fake products as legitimate and help strengthen cultural exchange and cooperation between the U.S. and China. However, even if potters in Yixing were to apply for GI recognition in the United States, they would most likely fail because of the USPTO’s policy.

The USPTO determines the distinctiveness of a geographical indicator through a three-part test: first, if the primary significance of the mark is a generally known geographical location; second, the goods or services originate in the place identified in the mark; and third, purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.” However, the USPTO measures these from the perspective of a general U.S. purchaser rather than a more international audience and will deny GI recognition if the indicator is “to obscure or remote that purchasers… in the United States would typically fail to recognize the term as indicating the geographical source of… [the] goods.” For products on the international market, should the standard not be a finding of distinctiveness based in the international rather than domestic market? In this scenario, the Yixing Teapot, a product that is well known across Asian markets and provides protection in Asian markets, yet is not well known in the U.S. market, would not receive protection within the U.S. That a term which is not to “obscure or remote” to billions of people but is to a group of 300 million would not be awarded protections, conflicts with some language in §1052 of the Lanham Act, which governs GIs. Awarding GI approval in a case such as this would do no harm to U.S. consumers, but rather protect them from subpar forgeries and promote cultural communication between markets.

In the realm of food products, the USPTO’s difficulty in establishing the legitimacy of the Champagne GI further highlights the issues the USPTO’s policies create. Although  Champagne is internationally recognized as originating from France’s Champagne region, the USPTO did not protect it as a GI until 2006. The USPTO’s delay derived from the view that Champagne was too “generic” as a reference to sparkling wine, and even after the official GI protection of Champagne, certain products on the U.S. market were granted clemency from the new decision. The only other major country in recent years not to recognize the “Champagne” GI is Russia, f, following Vladimir Putin’s 2021 decision to ban non-Russian sparkling wine from being labeled “Champagne” due to the term’s perceived “generic” status within Russian culture. While this is not to say the USPTO’s process is as outlandish as the Russian decision, the genericide of internationally recognized marks based on domestic misunderstanding or usage of the term weakens international cooperation and allows producers to tarnish the reputations of global products.  

The USPTO’s refusal to step outside the bounds of TRIPS, or even its own narrow view of trademark recognition, creates not only the possibility of dangers to U.S. consumers tricked by unscrupulous international forgers, but also does little to promote and protect international recognition of cultural heritage. This argument, however, does present issues with regards to traditional trademark territoriality. In many cases it could be an oversimplification of the issue, especially considering the dueling philosophies of consumer vs. producer protections that embody the trademark field. Despite these different approaches, while determining whether a term is “generic” is crucial to protecting a mark, the international agreement on the meaning of specific marks should take precedence over domestic interpretations in the context of GIs. Therefore, the USPTO should relax its criteria for establishing if a mark is “generic” when it is evaluating international GIs to protect U.S. consumers and promoting better international cooperation.