Wine Not Wine & Trademarks: Navigating Geographic Descriptiveness: A Winery’s Guide to TMEP Section 1210
When it comes to wine, geography is important. Some might argue that a wine’s geographic source is more important than that of any other good or service. Wine producers and enthusiasts regularly celebrate the terroir. This is especially true in Bourgogne, France. The concept of terroir is fundamental to the wine-making tradition of that region, where the unique combination of climate, soil, and landscape is believed to impart distinct characteristics to its wines. This deep-rooted belief in terroir underlines the region’s intricate classification system, which differentiates vineyards based on their specific microclimates and geologies, elevating the expression of place in each bottle of Burgundy wine.
As a result of these geographic concerns, geographic terms often find their way into trademarks for wine. However, the use of such terms can pose challenges. This blog post discusses geographic descriptiveness in trademarks, with a focus on what wineries should know. We will look to Section 1210 of the Trademark Manual of Examining Procedure (TMEP), which offers valuable insights to winemakers, vintners, and wine enthusiasts alike. To illustrate the concepts, we will consider a winery that specializes in cabernet sauvignon and calls its wine NED’S NAPA CAB.
I. Understanding Geographic Descriptiveness
A. What Is Geographic Descriptiveness?
Geographic descriptiveness refers to the use of geographic terms in trademarks that describe the place of origin, production, or characteristics of the associated products or services. In the wine industry, where the geographical location often defines the wine’s quality and flavor profile, this concept is particularly relevant. WineCountry.com identifies the top ten wine U.S. regions as follows:
1. SANTA BARBARA COUNTY, CA
2. WILLAMETTE VALLEY, OR
3. SONOMA COUNTY, CA
4. WALLA WALLA VALLEY, WA
5. NORTHERN & CENTRAL VIRGINIA, VA
6. TEXAS HILL COUNTRY, TX
7. EDNA VALLEY, CA
8. FINGER LAKES, NY
9. PASO ROBLES, CA
10. SNAKE RIVER VALLEY, ID
Some wineries choose to use the name of their region as part of their name. Imagine Willy’s Willamette Red; Walla Wally Walla Wine; and our hypothetical NED’S NAPA CAB.
B. The Challenges of Geographic Terms
Using geographic terms in trademarks can be both advantageous and problematic. On one hand, they can convey authenticity and origin, a key selling point for wine. On the other hand, these terms can be deemed descriptive, leading to potential trademark registration hurdles. Even worse, they might not stand out in the marketplace.
A wine name such as Willamette Red is geographically descriptive of wines originating from the Willamette Valley and would likely be rejected as geographically descriptive—or so widely used (i.e., a lot of wineries from the Willamette refer to their wines as Willamette reds) that it fails to identify any of them specifically. In some instances (e.g., inclusion of a graphical/logo element; adding a more distinctive term), the mark might not be refused, but a portion of the mark might need to be disclaimed. For example, an examiner will likely require the owner of NED’S NAPA CAB to disclaim the terms “NAPA” and “CAB” as geographically descriptive and merely descriptive, respectively. A cursory Google search for “Napa Cab” returns 127,000 results. The first page alone identifies various wines originating from different sources. Some of the results use the term indiscriminately for any number of cabernet sauvignon wines from Napa Valley.
II. TMEP Section 1210: The Key to Navigating Geographic Descriptiveness
TMEP Section 1210 provides great information concerning geographic descriptiveness in trademark applications for wineries and other businesses. It provides guidelines for trademark examiners and applicants, helping to navigate this complex terrain.
A. Determining Whether a Mark Is Geographic
TMEP Section 1210 outlines the elements that examining attorneys and the Trademark Trial and Appeal Board) use to assess whether a mark is geographically descriptive. Section 1210 states the following:
To support a refusal to register a mark as primarily geographically descriptive under Section 2(e)(2) of the Trademark Act, 15 U.S.C §1052(e)(2), the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02–1210.02(b)(iv));
(2) the goods or services originate in the place identified in the mark (see TMEP §1210.03); and
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04–1210.04(d)). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)).
With respect to the first element, several questions are considered, including “how well known is the geographic location,” “are there alternative meanings,” and “how do consumers perceive the term?” I would not be surprised if the USPTO reached different conclusions on this question for Napa Valley versus Ramona Valley.
The second element concerns where the trademark owner is located or where the goods/services come from. Examiners often look to the applicant’s address (which is required information in the application). If the applicant is not located in the geographic location (for example, the owner of NED’S NAPA CAB has an address in Biloxi, Mississippi), the examiner will request additional information from the applicant. The examiner will ask where the goods or services come from. If the owner of NED’S NAPA CAB answers that the wine is from Napa Valley, California, the examiner will acknowledge that the response supports the second element for geographic descriptiveness. If the owner responds by saying that the wine comes from somewhere other than Napa Valley, the examiner might withdrawal the refusal and reject the application, instead, as deceptively misdescriptive. That issue will be addressed in a future blog post.
The third element requires that there be a goods/place or services/place association such that the public is likely to believe that the goods or services originate in the place identified in the mark.
To show that there is a goods/place or services/place association, the examining attorney may rely on third-party resources. The examining attorney may also examine the specimen(s) and any other evidence in the record that shows the context in which the applicant’s mark is used. See In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1517 (TTAB 2001) (finding that applicant’s point of purchase display catalogs “foster a goods/place association between its furniture and Tuscany by referring to ‘Europe’s Mediterranean coast’ and ‘European sensibility’”).
When the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, the goods/place or services/place association may ordinarily be presumed from the fact that the applicant’s goods or services originate (see TMEP §1210.03) in or near the place named in the mark. In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007) (YOSEMITE BEER held geographically descriptive of beer produced and sold in a brewpub in Merced, California, the Board stating that “[s]ince the goods originate at or near [Yosemite National Park], we can presume an association of applicant’s beer with the park.”); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY held primarily geographically descriptive of cigars).
This presumption is rebuttable. See TMEP §1210.04(c) regarding obscure or remote places, and TMEP §§1210.02–1210.02(c)(iii) regarding the primary significance of a geographic term.
III. Navigating the Application Process
When facing geographic descriptiveness challenges, wineries can employ various strategies. Depending on your situation, you might have several options if your trademark application is rejected based on geographic descriptiveness. If you have used the mark for five-plus years, have strong evidence of advertising and consumer recognition, or already own a similar trademark registration, you can claim that your mark has acquired secondary meaning among the consuming public.
If your mark contains words or illustrative features that are not geographically descriptive, you might be able to disclaim the geographically descriptive component(s).
If you have started using the mark—but have not acquired secondary meaning—you can amend your application from the Principal Register to the Supplemental Register.
You can submit written arguments supported with evidence and legal authority as to why your mark is not geographically descriptive. Your odds of overcoming a refusal based on geographic descriptiveness are fact specific and will vary from case to case.
Another option is to adopt a different name—perhaps a more distinctive one. By example, DINOSAUR JUICE is more distinctive than NAPA NECTAR. Of course, choosing a different name might not make sense for you, especially if you have used the mark for some time, and established a reputation. If you are planning your business and have not spent money on advertising and other branding efforts, this option is more reasonable.
V. Conclusion
In the wine industry, where the essence of a wine often relies heavily in its origin, geographic terms in trademarks are both a boon and a potential pitfall. Understanding geographic descriptiveness and leveraging the guidance provided by TMEP Section 1210 is essential for wineries looking to protect their brands and maintain their unique identities. By proactively addressing these challenges, winemakers can continue to celebrate the diverse terroirs and rich traditions that make the world of wine so captivating. Remember, when navigating the vineyard of trademarks, the guidance of legal professionals well-versed in trademark law is as valuable as a well-aged vintage.
If you would like to discuss a geographically descriptive mark or your winery’s trademarks with an experienced trademark attorney, please schedule a consultation here.
