One blue agave, Two blue agave, Three blue agave…Floor?

In a recent opposition at the Trademark Trial and Appeal Board (TTAB) the use of TEQUILA as a certification mark for “spirits distilled from the blue tequila weber variety of agave plant” was held to be distinct, and not generic of the goods it identifies. More precisely, the opposition was dismissed.

My first thought: WHAT!!! Tequila is not generic? All my life (adult, drinking life, that is) Tequila has meant exactly what the mark describes that it identifies. In fact I never placed the geographic limitation on it. To me, it’s the liquor that comes from agave, or similar plants, and has that “tequila” taste.

But the Board disagreed, and, really, for good reasoning under current trademark law.

Marks are deemed generic when the word, or words, used are the words that refer to the genus of a good or service. For instance, in related fields, BEER is the generic word for a malted barley, hop, water, and yeast drink, VODKA is the generic word for a distilled alcohol made from grain or potatoes, WHISKEY for distilled alcohol made from fermented grain mash, etc. So for me, TEQUILA should also be generic. Well it turns out that because this is a certification mark, the law is a little different. (And to be clear, the above mentioned examples may qualify as a certification mark, and therefore wouldn’t be generic, as explained below; I didn’t look into them.)

Certification marks are not owned and used by a single entity to identify the source of its goods or services, as standard trademarks are. They are owned by an entity that establishes standards that must be met by a third party regarding that third party’s goods or services, that, if met, will allow the third party to use the mark. The owner of the mark doesn’t, and can’t, actually use the mark for its goods or services. To keep the mark, the organization that owns it has to prove that they have created and are maintaining standards for the mark, and that they are policing the use of the mark, among other things.

Some examples of certification marks are, GROWN IN IDAHO (for, you can guess…), ENERGY STAR, CHAMPAGNE, WOOLMARK, and many, many others. As a craft beer lover, when I think of a certification mark, the first one that comes to mind is the CICERONE mark. It certifies a certain level of knowledge and know-how in the craft beer industry, and to obtain it, individuals and/or organizations have to meet a certain standard that demonstrates they are worthy of the CICERONE designation. And the consuming public can rely on that mark to help determine when a bar/brewery meets their standard.

The organization in the case here that applied for the mark has been designated by the Mexican government to oversee and enforce the use of the word Tequila, and to make sure that its use is consistent with the standards of Mexico. That is, that Tequila must come from Mexico and be made by the blue agave plant, as described in the identification above. Otherwise it is not Tequila. Mescal is an example of not Tequila.

Still though, isn’t TEQUILA the generic word for blue agave spirits that come from Mexico? Well certification marks are weird—at least as compared to ordinary trademarks. As the Board noted, caselaw states that if, in dealing with certification marks that include a certification of the origin of a good or service, that word is still associated by the consuming public with that particular origin, then the mark cannot be generic. Essentially, even if, for all intents and purposes, a term is generic, if the consuming public recognizing the term as a geographic identifier, it cannot be generic. TEQUILA, therefore is not generic. (The Board cited evidence demonstrating that the consuming public recognizes Tequila as identifying geographic origin. I’m not sure I agree with all of the Board’s evidentiary findings—especially those related to geographic origin—but that’s a factual dispute.)

Logically, and precedentially, this all makes sense, but something seems wrong. As the opposer noted (the opposer is a Tequila distributor who didn’t want the applicant to own the mark), it already has to jump through hoops with the Mexican and US governments regarding the labels it puts on its product, and the process by which it produces its Tequila. By allowing the applicant—which is the Mexican governmental agency for which the opposer already jumps through hoops—the opposer will now have an additional hoop to jump through, for seemingly no good reason. What’s odd about geographic certification marks, like CHAMPAGNE, COGNAC, etc., is that there is plenty of non-trademark law that says, you cannot use that term unless you meet certain requirements. For Tequila, the Alcohol and Tobacco Tax and Trade Bureau already polices its use. Why is a certification mark needed? Or more specifically, why is a term excepted as generic if it is a certification mark that identifies geographic origin and “retains its ability to designate geographic source.” What’s wrong with the term being generic under trademark law, and then having a different federal agency—one that is already enforcing the use of the term under separate law—enforce its use?

Of course, certification marks are an odd breed, and it only goes to reason that odd usages of and purposes for those marks will follow. Again, CICERONE is a great example of, what is to me, a good certification mark. A private organization has created a standard for competence in the craft beer industry that the consuming public can reference and trust; and there is no government agency that is already overseeing it. That certification mark is well placed and does its job. I can’t say the same for TEQUILA.