Thursday, May 28, 2020

Precedential No. 19: TTAB FInds "REAL MICHIGAN" for Hard Cider Confusable With "MICHIGAN APPLES" Geographic Certification Mark

In a rare case involving a geographic certification mark (sometimes called a certification mark of regional origin), the Board affirmed a Section 2(d) refusal of the mark REAL MICHIGAN for hard cider (MICHIGAN disclaimed), finding it likely to cause confusion with the two registered geographic certification marks shown below, for apples. Although in a typical Section 2(d) analysis, a geographic term is usually accorded less weight, that is not the case when considering a geographic certification mark. A geographic certification mark is deemed distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or service, and should not be considered “weak” or subject to a narrower scope of protection. In re St. Julian Wine Company, Inc., 2020 USPQ2d 10595 (TTAB 2020) [precedential] (Opinion by Judge Angela Lykos).

The Board pointed out that "certification marks indicate that goods or services provided by persons other than the mark owner adhere to specified standards set by the mark owner, whereas trademarks indicate the source of the goods or services." Geographic certification marks certify that an authorized user's goods or services originate in a specific geographic region. Here, the certification statement on each of the cited registrations is as follows: "[t]he Certification mark, used by persons authorized by certifier, certifies that the goods bearing the mark consist of apples grown in the State of Michigan."

Section 2(e)(2), which bars registration of primarily geographically descriptive marks absent a showing of acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f), does not apply to geographic certification marks.

As to the involved goods, the Board noted that apples are a necessary component of hard cider, and s hard cider could be made from apples certified with registrant's mark. The Board therefore found "a commercial relationship between Applicant’s 'hard cider' and Registrant’s identified goods and that the goods are related, meaning that this DuPont factor weighs in favor of finding a likelihood of confusion."

As to the marks, the Board noted that "[s]pecial considerations apply with regard to the first DuPont factor and geographic certification marks." A registered certification mark containing a geographic designation that functions to certify regional origin is not considered geographically descriptive under Section 2(e)(2).

Rather, a geographic certification mark is deemed distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or services. Consequently, a registered geographic certification mark should not be considered 'weak' or subject to a narrower scope of protection. Thus, we consider the “Michigan” component of the phrase MICHIGAN APPLES in the involved marks as inherently distinctive because it indicates the certification of the geographic source of the apples.

Applicant argued that the dominant portion of its mark is the initial word REAL, which serves to distinguish the marks. It contended that its mark "suggests a geographical area and a product that is not artificial" whereas the cited certification marks "suggest a geographical area and a fleshy round fruit (apple or apple-flavored) product." Not surprisingly, the Board found that the involved marks convey a similar connotation and commercial impression: designating goods from the State of Michigan. The Board acknowledged that the marks differ in sound and appearance, but those differences are outweighed by the similarities  in connotation and commercial impression.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Despite the temptation, I am not going to say "how do you like them apples?" Anyway, is this a WYHA?

Text Copyright John L. Welch 2020.


At 9:20 AM, Anonymous Anonymous said...

Did the Board just grant a monopoly to a geographic designation?

At 11:14 AM, Anonymous Anonymous said...

So, MICHIGAN APPLES gets exclusive certification rights for Apples grown in Michigan????

First, Michigan only makes cars, or used to. Second, if Michigan grows Apples, then it needs all the help it can get promoting them because no one says, EMMM, I'm hankerin for a MICHIGAN APPLE.

Third, once again, the TTAB aribrarily applies LoC based on nada and once again proves it does not understand what really confuses consumers and/or trademark practitioners. There is absolutely no reason why these two cannot co-exist. NO ONE WOULD BE CONFUSED OR CARE WHO THE HECK CERTIFIES MICHIGAN APPLES.

At 11:15 AM, Anonymous Anonymous said...

Actually, I would appeal this decision to the Fed Circuit. These types of decisions has to stop already.

At 5:27 PM, Anonymous Mitchell Stabbe said...

What if the application sought registration for REAL MICHIGAN as a certification mark for apple cider? Wouldn't the same analysis apply? Then, there could only be ONE certification mark for any goods related to apples with the term "MICHIGAN!" I am at a loss to understand why the differences in sight, sound and meaning were not sufficient here to avoid a 2(d) finding.

At 11:57 AM, Anonymous Anonymous said...

I think all "Precedential" TTAB rulings should have an automatic Fed. Circuit review. What is it with these continual expansion tactics? Same as it ever was; just the Board waiting for daddy Fed. to spank them and send them to the corner for being naughty!

At 8:13 PM, Anonymous Scott Gerien said...

There seems to be a real failure to understand U.S. trademark law as it applies to Geographical Certification Marks as reflected in these comments. Yes, the law does provide a monopoly in the geographic term to the certifier, in the same way that it does in any other mark. If there is an entity that certifies the geographic origin of apples produced in Michigan and has registered or used that geographic term as a mark for certification purposes, then another party cannot usurp that mark for hard apple cider by pointing to descriptiveness. I may make cookies using TOLL HOUSE morsels, but that does not give me the right to register ABC TOLL HOUSE COOKIES and then disclaim "TOLL HOUSE" as descriptive and expect to get registration. Registration is not fair use. This is not an issue as to whether this party can fairly use the term "Michigan" in a descriptive sense, it is whether this party can claim rights in a mark which completely encompasses the distinctive portion of another party's mark for highly related goods (i.e., goods in which the other good is the major ingredient). If this is appealed I would put my money on the decision being upheld.


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