Chateauneuf-du-Pape Syndicat Denied by USPTO in Attempt to Protect Appellation
Like a bottle of Chateauneuf-du-Pape
I’m fine like wine when I start to rap
We need body rockin’, not perfection
Let me get some action from the back section
~ “Body Movin'” by The Beastie Boys
The Beastie Boys cannot be pleased and there undoubtedly will be no body rockin’ at the Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape.
On June 14, 2013, the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) issued a decision denying an opposition brought by the Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape against negociant Pasquier DesVignes which applied to register the trademark CHEMIN DES PAPES for wine. The Syndicat asserted a claim of confusing similarity based on a registered trademark for CHATEAUNEUF-DU-PAPE CONTROLE and Design for wine in class 33 (see below) and based on an alleged common law certification mark for CHATEAUNEUF-DU-PAPE for wine.
A link to the decision may be found here:
While not krush groovin’, the case is quite interesting (to trademark lawyers and appellation geeks) on many levels. One of the more interesting issues (although not electro-shocking) is the strategy employed by the Syndicat in protecting the geographical indication “Chateuneuf-du-Pape” and how this played out in the opposition refusal.
The Syndicat claimed that it owned a common law geographical certification mark for CHATEAUNEUF-DU-PAPE under U.S. law as a result of the control it asserted over the appellation “Chateuneuf-du-Pape.” However, the TTAB found that the Syndicat could not claim ownership of a common law geographical certification mark in CHATEAUNEUF-DU-PAPE because there was evidence that other entities also controlled the use of the appellation, most notably L’institut National de l’Origine et de la Qualité (“INAO”), the French governmental agency in charge of appellation standards throughout France. The TTAB also noted that there was no evidence that there were any agreements between the Syndicat and these other parties as to control of the appellation (this is in contrast to other cases where the Bureau National Interprofessionel du Cognac successfully proved a common law geographical certification mark in COGNAC by demonstrating its relationship with INAO). As a result, the TTAB found that the Syndicat could not claim common law rights in CHATEAUNEUF-DU-PAPE as a geographical certification mark as it did not appear to have exclusive control over the term. Thus, the common law certification mark claim was not to be the Syndicat’s hyperspace in this game of Defender.
As a side note, during its analysis the TTAB did acknowledge that CHATEAUNEUF-DU-PAPE is a geographical indication, which we believe is the first time that the USPTO, or any other US governmental body, has acknowledged a term as a “geographical indication” thereby recognizing the legal significance of geographical indications in the U.S. This is of some consolation to some proponents of geographical indications, but not the robotic-satisfaction for which others may have hoped.
Having found that the Syndicat could not assert rights in a common law certification mark in CHATEAUNEUF-DU-PAPE, the TTAB turned to the claim of likelihood of confusion based on the registered trademark for CHATEAUNEUF-DU-PAPE CONTROLE and Design in class 33 for wine. The TTAB analysis of the fame of the CHATEAUNEUF-DU-PAPE CONTROLE and Design trademark turned back again to the issue of who actually controlled the appellation. The TTAB repeatedly questioned evidence of fame of the mark based on sales and advertising of wine identified as CHATEAUNEUF-DU-PAPE noting that the Syndicat did not own or exclusively control the appellation, but rather the mark CHATEAUNEUF-DU-PAPE CONTROLE and Design. Thus, evidence of sales and marketing for all CHATEAUNEUF-DU-PAPE wine could not support a claim that the Syndicat’s mark CHATEAUNEUF-DU-PAPE CONTROLE and Design was famous. So perhaps some body rockin’, but not perfection.
At the end of the day, whether or not the Syndicat was able to demonstrate that it owned common law rights in CHATEAUNEUF-DU-PAPE as a geographical certification mark was probably a moot point given the fact that the TTAB ultimately determined that CHEMIN DES PAPES and CHATEAUNEUF-DU-PAPES and Design were simply not similar given the differences between the marks and the fact that there were numerous other third party “PAPES” marks for wine in the marketplace such as L’ESPRIT DE PAPE, CAVES DES PAPES and VIEUX PAPES.This case is a good read for anyone interested in the intersection of geographical indications and trademarks and highlights the difficulty of trying to protect geographical indications as certification marks under U.S. law. Tell me party people, is that so wrong?
For questions or assistance on trademarks and geographical indications contact Scott Gerien at [email protected]
Copyright Dickenson Peatman & Fogarty at www.lexvini.com