Geo-Significant Wording and Your Food Mark

When the USPTO issues an examination guide, it’s usually a big deal for trademark lawyers. The exception that proves the rule is Examination Guide 2-20, Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats (May 2020). It hasn’t had much impact.

I. What Does Exam Guide 2-20 Do?

The guide deals with “geo-significant wording,” and three sets of lists of production standards. The first is the FDA’s list of “standards of identity” for cheese – a list of generic standards for cheeses like cheddar, edam, romano, and provolone. The second is the USDA’s list of processed meat names, like frankfurter and bologna. The last is the Codex Alimentarius, organized by the U.N. Food and Agriculture Organization and the WHO, relating to cheese food standards.

Since the standards all relate to production methods and ingredients, not places of origin, the Guide requires Examiners to require disclaimers of “geo-significant” wording, to issue genericness refusals where appropriate, and to ensure that the description of goods contains the listed product in order to avoid a §2(a) deceptiveness refusal, in consultation with the Office of the Deputy Commissioner for Trademark Examination Policy.

II. What’s the Impact of Exam Guide 2-20?

Exam Guide 2-20 has had zero direct impact. It has been directly cited zero times by Examining Attorneys since its introduction. It has been cited zero times by the TMEP. It has been cited zero times by applicants and their counsel.

How about indirect impact? We searched for any of the terms in the three lists that were “geo-significant,” looking for outbound Office Actions (or comparable documents), and found only 24 since May 2020.

The vast majority were simple Examiner’s Amendments, like amending the description of goods for ASIAGO CCFN (stylized) from “cheese” to “asiago cheese,” in accordance with (but without citing to) the Guide; it already disclaimed “asiago.” The rest were additions of disclaimers.

The Office still isn’t catching everything; for example, a registration issued for SUPREME BRIE BITES (stylized) for just “cheese,” when under the Guide it should have been amended to “brie cheese” or something comparable. It’s worth noting that variations of the word will still trigger the requirements; a filing for BRIETTE had its ID amended to “milk products, namely, cheese and cheese preparations in the nature of processed brie cheese, brie cheese sauce and brie cheese food” to comply.

III. How Does This Impact My Practice?

If you represent a client in the food space, and they have a mark that includes a geo-significant term related to cheese or meat, just disclaim the term and be adequately specific in your description of goods, and you can avoid a near-inevitable Office Action.

If you represent a client that thinks it owns rights in one of these geo-significant terms, don’t bother arguing it out with the USPTO — go lobby the US government or the international entities that organize the Codex Alimentarius. That probably won’t work either, but it can’t possibly be less successful than trying to change the Office’s mind.

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