DP&F is one of the only law firms in the United States, and one of the few law firms in the world, with specialized knowledge and practical experience in the area of geographical indication protection. Geographical indications are a specialized form of intellectual property recognized under the General Agreement on Tariffs and Trade (GATT) Trade-Related Aspects of Intellectual Property Rights (TRIPS) which bring together legal expertise from both the trademark sector and the agriculture sector.
The firm’s geographical indications team is headed by Richard Mendelson and Scott Gerien. Richard, of counsel to the firm and a part-time professor at UC Berkeley Boalt Hall School of Law, teaches the only law school class in the U.S. on geographical indications. Scott is a past Chairman of the International Trademark Association (INTA) Committee on Geographical Indications and co-authored the INTA Model Framework for the Establishment of a Multilateral Register of Geographical Indications for Wines and Spirits pursuant to TRIPS Article 23(4). Both Richard and Scott have written extensively and lectured throughout the world on the issue of geographical indications and co-authored the chapter on wine brands and appellations of origin in the treatise Wine in America: Law and Policy (Aspen Publishers, 2011).
The firm’s geographical indications group has been responsible for formulating and executing both domestic and international strategies for the protection of the Napa Valley geographical indication for wine. DP&F drafted California state laws for conjunctive wine labeling featuring the Napa Valley geographical indication, as well for the protection of Napa Valley and other Napa County geographical indications from deceptive use on wine labels, successfully defending such deceptive use law all the way to the California Supreme Court. The firm has also protected the Napa Valley geographical indication internationally in several countries throughout the world, including obtaining the first registration in Europe of a non-European geographical indication for wine, as well as the first foreign geographical indication for wine in China.
The geographical indications team has also obtained registrations for geographical certification marks in the U.S. Patent and Trademark Office and has successfully obtained recognition of American Viticultural Areas before the Alcohol and Tobacco Tax and Trade Bureau. The attorneys in the Geographical Indications Practice Group are available to discuss strategy for protection of both domestic and foreign geographical indications for various goods in both the United States and abroad.
Development and execution of an international protection strategy for the Napa Valley geographical indication. Directed various foreign counsel in obtaining registration of Napa Valley as a geographical indication and/or certification mark in Australia, Brazil, Canada, China, European Union, India, New Zealand, Norway and Thailand. Have led enforcement efforts against improper use of Napa Valley in numerous foreign jurisdictions.
Devised a comprehensive appellation system for the Paso Robles wine region encompassing eleven sub-appellations nested within the greater Paso Robles American Viticultural Area (AVA). Prepared and submitted to the Alcohol and Tobacco Tax and Trade Bureau (TTB) all petitions for the recognition of the eleven proposed Paso Robles sub-AVAs, including the development of evidence in support of the recognition of the AVAs.
Obtained registration with the U.S. Patent and Trademark Office (USPTO) on behalf of regional association for geographical certification mark for wine and wine grapes produced within the region pursuant to sustainable farming practices.
U.S. counsel to Bureau National Interprofessionnel du Cognac (BNIC), responsible for enforcement of the COGNAC geographical indication against misuse in the U.S. marketplace and improper registration of trademarks at the USPTO encompassing COGNAC in the trademark or goods description.
Formulated a certification system and obtained registration with the USPTO for the NAPA GREEN certification mark for wine, vineyards and winery services originating in Napa County, California and produced or provided pursuant to established environmentally sound farming and production methods.
Our Geographical Indications clients include:
- Napa Valley Vintners
- Paso Robles American Viticultural Area Committee
- Bureau National Interprofessionnel du Cognac
- Sonoma County Vintners
- Agricultural & Processed Food Products Export Development Authority of India
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