MINISTERE DE L’ARTISANAT ET DE L’ECONOMIE SOCIALE ET SOLIDAIRE applied for a Certification mark (shown above) for pottery. This mark denotes pottery made from and in the DEMNATE region of Morocco.
Many countries characterize this type of mark as a “Geographical Indication,” i.e. “indications which identify a good as originating in the territory of … or a region or locality in the territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.” An Example is ROQUEFORT (U.S. Reg. No. 571,798) used to indicate cheese manufactured from sheep’s milk and cured in the caves of the Community of Roquefort (France) in accordance with their long established methods and processes.
In the United States, geographical indications are viewed as a subset of trademarks and usually designated as certification and collective marks. When applying through a Madrid Protocol application, the designation is “Collective, Certificate or Guarantee Mark.”
For this application, the USPTO assigned several design codes:
26.01.17 – Circles, two concentric;Concentric circles, two; Two concentric circles
26.01.21 – Circles that are totally or partially shaded.
28.01.01 – Arabic characters
But did not assign a design code for the center design – a vase design such as found in 19.07.19. Examples are:
The Examining Attorney issued an office action seeking clarification about the designation, that is, whether the mark “is intended to certify that the goods and/or services provided have [specify].” And must state, that it “will not not engage in the production or marketing of the … services to which the mark is applied, except to advertise or promote recognition of the certification program or … the … services that meet the certification standards of the applicant.” Remaining issues involved technical issues: claiming color, disclaimer of “Poterie Demnate,” and indicating the significance of the word, Fakhar.
Applicant provided a response with the following excerpts:
Mark Description: “The mark consists of an outer brown-orange circular carrier containing the words POTERIE DEMNATE and Arabic letters in brown-orange on a white background, an inner brown-orange circle with a cut out image of a hand holding pottery both of which appear in white. The pottery contains Arabic wording appearing in brown-orange. FAKHAR appearing in the mark means or signifies or [it] is a term of art for pottery in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application.”
Certification statement:” … intended to be used by persons authorized by the certifier, is intended to certify that the goods … conform to the quality and manufacturing standards set by the certifier.”
Statement About Not Engaging In Production/Marketing of Goods/Services Being Certified: “The applicant will not engage in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the applicant. Certification Standards are attached hereto and made of record.”
The Examining Attorney amended the certification statement to read: “The certification mark, as intended to be used by persons authorized by the certifier, is intended to certify that the goods are from and are made in the Demnate region of Morocco and conform to the quality and manufacturing standards set by the certifier.”
Amendments were accepted and a Certification registration (Reg. No. 5,393,264) issued February 6, 2018.
Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380