RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q2/USA/1
3 April 1998
(98-1344)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON TRADEMARKS, GEOGRAPHICAL
INDICATIONS AND INDUSTRIAL DESIGNS
United States1
The present document reproduces the introductory statement made by the delegation of the
United States, the questions put to it and the responses2  given in the review of legislation on
trademarks, geographical indications and industrial designs in the context of the meeting of the
Council that took place from 11-15 November 1996.3,4
_______________
I. INTRODUCTORY STATEMENT
Federal protection of trademarks, and to some extent protection of geographical indications, is
provided by the Trademark Act of 1946, Title 15, United States Code ("Lanham Act"), as amended.
In addition, geographical indication protection for wines, spirits and malt beverages is provided by theAlcohol, Tobacco and Fire-Arm Regulations, which may be found at 27 Code of Federal Regulations,
Parts, 4, 5, 7 and 12.
United States law provides broad protection for trademarks subject to a clearly defined list of
relative and absolute grounds for refusal.  The broad statement of protection in Section 2 of the Act
provides that no trademark, by which the goods of an applicant may be distinguished from the goodsof others, shall be refused registration on the principal register on account of its nature.
Two amendments have been made to US trademark law to bring the United States into
compliance with its obligations under the TRIPS Agreement.
                                                     
1 As regards laws and regulations relevant to the areas under review as notified by the United States
under article 63.2 of the Agreement, reference is made to document IP/N/1/USA/1 as well as documentsIP/N/1/USA/T/1-2, IP/N/1/USA/G/1, IP/N/1/USA/D/1 and IP/N/1/USA/P/1-2.
2 The United States has informed the Secretariat that the response to the follow-up question from the
EC to its initial question 11 will be provided in due course.
3 The minutes of this meeting are contained in document IP/C/M/11.
4 The questions from India as a follow-up to its initial questions 1 and 2 were posed after the review
meeting (see document IP/C/W/54).IP/Q2/USA/1
Page 2
First, Section 2 of the Act (15 USC 1052) was amended to provide greater protection to
geographical indications used for wines and spirits.  Specifically, Section 2(a) provides that
registration will be refused if the mark consists of or comprises a geographical indication which, when
used in connection with wines and spirits, identifies a place other than the origin of the goods and is
first used on or in connection with wines or spirits by the applicant.
Second, Section 45 of the Act (15 USC 1127) was amended to incorporate the requirement of
Article 19 of the TRIPS Agreement, that is that non-use for three consecutive years shall be
prima facie  evidence of abandonment.
Although the United States already meets its obligations to protect well-known marks, in
1996 the Federal Trademark Dilution Statute was passed.  This Statute provides greater protection for
well-known marks by permitting the owner of a well-known mark to prevent dilution of the
distinctiveness of that mark by third parties.
The Bureau of Alcohol, Tobacco and Fire-Arms ("BATF") regulates the use of geographical
indications in the labelling and advertising of distilled spirits, wine and malt beverages under the
provisions of the Federal Alcohol Administration Act (Title 27, United States Code) and its
implementing regulations.  These regulations include parts of 27 CFR:  Parts 4 and 12 for wine;
Part 5 for distilled spirits;  and Part 7 for malt beverages.  The regulations include sections which
prohibit the misleading use of statements and/or brand names that would mislead the consumer as to
the origin of the product.  The Federal Alcohol Administration Act provisions and implementing
regulations are enforced through administrative action of the BATF investigative and enforcement
authority, function to prevent the misleading use of geographical indications and afford parties the
opportunity to submit complaints about the use of a particular geographical indication.  Judicial
remedies are also available under the Federal Alcohol Administration Act under some circumstances.
The United States provides design protection through trademark, unfair competition,
copyright and design patent laws.  Design patent protection is the most important and generally used
law for design protection.  Section 171 of Title 35, United States Code, provides that whoever invents
any new, original and ornamental design for an ar ticle of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this Title.
Trademark protection for designs is only available for those designs which are non-functional
and source-indicating.  Unfair competition law only protects a particular design insofar as protection
is necessary to protect its consumers from confusion.
II. REPLY TO THE GENERAL QUESTION CONCERNING PRIORITY RIGHTS5
Does your country recognize a right of priority on the basis of an earlier trademark
application filed in any other WTO Member by a national of a WTO Member?
Yes, the United States recognizes a right of priority on the basis of an earlier trademark
application filed in any other WTO Member by a national of a WTO Member.  Section 1126(b) of
Title 15, United States Code provides:
                                                     
5 At the meeting of the TRIPS Council of 11-15 November 1996, Members agreed to respond to this
question in the context of the present review (document IP/C/M/11, paragraph 43).IP/Q2/USA/1
Page 3
"(b) Rights of foreign owner of trademark.   Any person whose country of origin is
a party to any convention or treaty relating to trademarks, trade or commercial names,
or the repression of unfair competition, to which the United States is also a party, or
extends reciprocal rights to nationals of the United States by law, shall be entitled tothe benefits of this section under the conditions expressed herein to the extent
necessary to give effect to any provision of such convention, treaty or reciprocal law,
in addition to the rights to which any owner of a mark is otherwise entitled by this
Act."
The TRIPS Agreement falls within the definition of "any convention or treaty relating to
trademarks, trade or commercial names".  As such, a national of a WTO Member is entitled to claimpriority based on a trademark application filed originally in any WTO Member.
III. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
1. Article 15.5 of the TRIPS Agreement provides that "Members shall publish each trademark
either before it is registered or promptly after it is registered and shall afford a reasonable
opportunity for petitions to cancel the registration.  In addition, Members may afford an opportunity
for the registration of a trademark to be opposed."  Currently, US opposition and cancellation
proceedings often take many years to bring to decision, and there are numerous ways in which a
party effectively can stall the proceedings.  Please explain how currently US opposition andcancellation practice complies with Article 15.5 of the TRIPS Agreement.
US trademark law is fully consistent with Article 15.5 of the TRIPS Agreement.
Section 12(a) of the Trademark Act (15 USC 1062(a)) provides for the publication, in the US Patentand Trademark Office's Official Gazette, of marks that appear, following examination, to be entitled
to registration.  Section 13(a) of the Act (15 USC 1063(a)) provides that any person who believes he
would be damaged by the registration of a mark may file an opposition to the mark's registration upon
payment of the prescribed fee.  Finally, Section 14 of the Act (15 USC 1064) provides for the filing of
petitions for cancellation of a registration by any person who believes that he is or will be damaged bythe registration of a mark.
The United States recognizes that paragraphs 2 and 4 of Article 62 of the TRIPS Agreement,
read in conjunction with Article 15.5, impose an obligation for timeliness in proceedings involving
the acquisition and maintenance of rights.  US practice is fully consistent with that obligation.  Any
parties that wish to oppose the registration of a mark have 30 days in which to file a request.  That
period can be extended for an additional 30 days upon written request.  Any further extension at theinitial phase is available only with the agreemen t of the trademark applicant or owner or upon good
cause shown.  The Trademark Trial and Appeal Board ("TTAB") decides whether to grant any
additional extension.  Extensions of time during an opposition or cancellation proceeding will be
granted only if all the parties agree or if the TTAB agrees that good cause has been demonstrated.
The length of opposition or cancellation proceedings, therefore, is in the hands of the two parties, not
just the party requesting the proceeding.
2. Article 16.1 of the TRIPS Agreement provides that :  "The owner of a registered trademark
shall have the exclusive right to prevent all third parties not having the owner's consent from using inthe course of trade identical or similar signs for goods or services which are identical or similar to
those in respect of which the trademark is registered where such use would result in a likelihood of
confusion.  In the case of the use of an identical sign for identical goods or services, a likelihood of
confusion shall be presumed.  The rights described above shall not prejudice any existing prior rights,
nor shall they affect the possibility of Members making rights available on the basis of use."  PleaseIP/Q2/USA/1
Page 4
explain how current US trademark statutes comply with the requirement that "[i]n the case of use of
an identical sign for identical services, a likelihood of confusion shall be presumed".
The standard set out in both the common law and the federal statutory law is whether the
defendant's use of the mark is "likely to cause confusion, or to cause mistake or to deceive".6   The
standard does not explicitly state the presumption of Article 16.1, but the presumption is implicit in
the language of the statutory sections.  The analysis of likelihood of confusion starts with an analysisof the differences between the competing marks and the relevant goods and services.  The
presumption is clear that only if the marks and goods are different will no likelihood of confusion be
found.  As stated in Trademark Protection and Practice  by Jerome Gilson
7, "It is clear that the
plaintiff in a trademark infringement case, to be entitled to relief, need prove only that confusion is
likely."  Thus, the courts which interpret the Lanham Act have uniformly found that likelihood of
confusion exists where the marks and goods are identical.  As stated in McCarthy on Trademarks8 :
"Cases where the defendant uses an identical mark on competitive goods hardly ever find
their way into the appellate reports.  Such cases are "open and shut" and do not require
protected litigation to determine liability for trademark infringement."
[Follow-up questions from the EC]
(a) Under US law, is the holder of a trademark obliged to establish likelihood of confusion in
cases of absolute identity between the mark and the sign and the goods and services for which theyare used?
A likelihood of confusion must be alleged in the complaint and the facts establishing that
likelihood must be shown.  However, where the goods and/or services and the mark of the
complainant are identical to those of the infringe r, a likelihood of confusion would be presumed.
(b) Can the alleged infringer invoke the absence of a likelihood of confusion in such cases, with
the possible effect that the complaint is rejected?
The alleged infringer can, of course, plead that no likelihood of confusion exists in such a
case.  However, if the complainant has shown that its  goods and/or services and its mark are identical
to those of the infringer, the infringer will not prevail.
(c) Could the United States explain on what lega l basis and under which conditions well-known
marks are protected in the United States, in accordance with Article 16.2 of the TRIPS Agreement and
Article 6bis of the Paris Convention?  On the basis of which criteria are trademarks considered to be
"well-known" under US law?
In the United States, well-known or famous marks are protected in the context of a
determination of likelihood of confusion between the marks of two parties in accordance with
Article 6 bis of the Paris Convention.  The issue can arise in the courts in an infringement or unfair
competition action.  It can also arise in the Patent and Trademark Office in an opposition or
cancellation proceeding before the Trademark Trial and Appeal Board ("TTAB").
                                                     
6 Sections 2(d), 32(1) and 43(a) of  the Trademark Act  (15 USC 1052(d), 1114(1) and 1125(a)).
7 Trademark Protection and Practice , Mathew Bender, 1996, x501[3] .
8 McCarthy on Trademarks and Unfair Competition,  Third Edition, 1996, J. Thomas McCarthy,
x23.03(2).IP/Q2/USA/1
Page 5
In determining likelihood of confusion between the marks of two parties, the courts have
established a list of factors to consider.  The relevant factors and the weight given to each factor varies
from case to case depending on the factual situation.  The landmark court decision that identifies the
factors considered in the Federal Circuit and before the TTAB in determining likelihood of confusion
is In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).
Fame is one of the factors identified.
In a recent case, the Federal Circuit emphasized the importance of fame in determining
likelihood of confusion by stating:  "A strong [famous] mark, on the other hand, casts a long shadow
which competitors must avoid."  ( Kenner Parker Toys, Inc., v. Rose Art Industries, Inc. ,
22 USPQ2d 1453 (Fed. Cir. 1992)).  Thus, a famous mark is entitled to a broad scope of protection
under US law, both in determining whether marks are similar and whether goods and services are
considered related.  This protection has been extended to famous marks in use in foreign countries
which are well-known in the United States ( Vaudable v. Montmartre, Inc. , 123 USPQ 357 (N.Y. Sup.
Ct. 1959)).
However, in another recent Federal Circuit case, the foreign owner of a mark was unable to
establish rights superior to a US company that had begun use in the United States ( Person's Co., Ltd.,
v. Christman , 14 USPQ2d 1477 (Fed. Cir. 1990)).  In that case, the foreign party did not assert or
show that the relevant mark was famous internationa lly or in the United States.  Thus, this decision in
no way contradicts the long-established protection US law provides for famous marks.
There are no lists of famous marks in the United States, nor is there a fixed list of factors that
must be considered in determining whether a mark is famous.  A party can establish that its mark is
famous through any relevant evidence.  Such evidence can include, among other facts, the nature and
extent of advertising expenditures, the length of use of the mark, surveys of the relevant universe ofconsumers, evidence of recognition by competitors that the mark is famous, or consumer affidavits
attesting to the fame of the mark.  The number and nature of factors that will be necessary to establish
fame will depend on the situation in a particular case.  In one recent case, the Court took judicial
notice of the fame of the mark "BVD" for men's underwear, noting that BVD is a "household word"
and identified as a trademark in two significant English language dictionaries ( The B.V.D. Licensing
Corp. v. Body Action Design, Inc.,  846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988)).
When a mark has been established as famous, the courts will resolve any doubt as to
likelihood of confusion in favour of the owner of the famous mark ( see Nina Ricci, S.A.R.L. v. E.F.T.
Enters. , 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989)).
On 16 January 1996, the Federal Trademark Dilution Act was enacted.  This law provides for
a federal cause of action for dilution under Section 43 of the Trademark Act to protect a well-known
mark against blurring and tarnishment.  Under this section, the owner of a well-known mark can
obtain an injunction against another's commercial use of the mark which dilutes the distinctive quality
of the mark.  In determining whether a mark is famous, the court can look at a variety of factors,
including the degree of inherent or acquired distinctiveness of the mark;  the duration and extent of
use of the mark;  the duration and extent of the advertising and publicity of the mark;  the
geographical trading area and trade channels in which the mark is used;  the degree of recognition ofthe mark;  the use of similar marks by third parties;  and whether the mark is registered.  These factors
are applied on a case-by-case basis with no one factor being determinative.
9  Additionally, under this
new law the ownership of a federal registration on the principal register acts as a complete bar to a
claim of dilution brought und er common law or state law.
                                                     
9 In Babson Bros. Co., v. Surge Power Corp. , 39 USPQ2d 1953 (TTAB 1996), the TTAB held that the
new dilution law does not include a provision which creates a statutory basis for an opposition or a cancellation.Therefore, it is not within the jurisdiction of the TTAB to determine a claim of dilution.IP/Q2/USA/1
Page 6
For example, the shape and configuration of the Sunbeam MIXMASTER mixer was held to
be a famous mark which was diluted by the use of a similar design by a competitor ( Sunbeam
Products, Inc. v. The West Bend Co., 39 USPQ2d 1545 (S.D. Miss. 1996)).  In
Ringling Bros-Barnum & Bailey Combined Shows, Inc. v. B.E. Window, Corp.,  40 USPQ2d 1010
(S.D.N.Y. 1996), the cour t stated that the "nationally famous and distinctive mark" "THE
GREATEST SHOW ON EARTH" was entitled to broad protection in the amusement or circuscontext.  Lastly, in Anheuser-Busch, Inc., v. Andy's Sportswear, Inc.,  40 USPQ2d 1542 (DC N.D.
Cal. 1996), the court held that the plaintiff's "BUDWEISER" marks were "unquestionably famous" in
finding that the use of the defendant's mark diluted the distinctive quality of the plaintiff's marks.
Section 43(c) of the Trademark Act has also been used to determine whether an Internet
domain name of a third party dilutes the distinctive quality of a well-known mark.  In Toys R Us, Inc.,
v. Mohamad Ahmad Akkaoui , 40 USPQ2d 1836 (N.D. Cal. 1996) "A dultsrus.com" was held to dilute
the "TOYS R US" family of famous marks.  In another case, "INTERMATIC" was held as a matter of
law to be a famous mark.  Thus, the registration and use of "intermatic.com" by a third party wasfound to dilute the distinctive quality of the well-known mark ( Intermatic, Inc., v. Toeppen ,
40 USPQ2d 1412 (N.D. Ill. 1996)).
(d) Could the United States explain on what lega l basis and under which conditions well-known
marks are protected against dilution in the United States, in accordance with Article 16.3 of the
TRIPS Agreement and Article 6bis of the Paris Convention?  How is the concept of "a connection
between these goods and services and the owner of the registered trademark", as referred to in
Article 16.3 of the TRIPS Agreement, applied under US law?
The legal basis for protecting well-known marks against dilution exists both under state and
federal statutes.  Section 43(c) of the Trademar k Act (15 USC 1125(c)) provides the basis for a
federal dilution claim.
The courts are only beginning to interpret the dilution statute, 15 USC 1125(c);  therefore,
case law is still evolving.  In Intermatic Inc. v. Toeppen  40 USPQ2d 1412 (1996), the District Court
found no relationship between the goods in trade of  the Intermatic Corporation, the owner of the
registered trademark, and the attempt by the defendant to sell or arbitrage Internet domain names.
Nevertheless, the court found that the use of the mark, INTERMATIC, by defendant diluted the
famous mark of the Intermatic Corporation.  In a related case, the court found that use of the domain
name, CANDYLAND.COM, by the purveyor of sexually explicit materials, diluted theCANDYLAND trademark owned by the Hasbro company for its famous children’s game ( Hasbro
Inc. v. Internet Entertainment Group Ltd.  40 USPQ2d 1477 (1996)).  On the other hand, in Ringling
Bros.-Barnum & Bailey Combined Shows Inc. v. B.E. Windows Corp.  40 USPQ2d 1010 (1996), the
court relied heavily on the fact that the plaintiff was in “show” business and the defendant was using
its mark, THE GREATEST BAR ON EARTH, in a different field of endeavour.
(e) Please explain whether the United States accepts any trademark duly registered in the
country of origin for filing and protection as is required, in accordance with Article 2.1 of the TRIPS
Agreement, in conjunction with Article 6quinquies of the Paris Convention.  Is it correct that the
actual use of such trademarks is not a condition for their registration?  If not, please explain how
such practice complies with Article 2.1 of the TRIPS Agreement, in conjunction with Article
6quinquies of the Paris Convention.
The US law provides for registration of marks under Article 6 quinquies  of the Paris
Convention.  Such marks need not be in use in order to be registered.
3. Article 19.1 of the TRIPS Agreement provides that  "If use is required to maintain a
registration, the registration may be cancelled only after an uninterrupted period of at least threeIP/Q2/USA/1
Page 7
years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by
the trademark owner."  Please explain how current US trademark laws comply with the TRIPS
Agreement's  requirement that "registration may be cancelled only after an uninterrupted period of
three years of non-use".
The current presumption in Section 45 of the Lanham Act (15 USC 1127) states:
"Abandonment of mark .  A mark shall be deemed to be "abandoned" when either of  the
following occurs:
(1) When its use has been discontinued with intent not to resume such use.  Intent not to
resume may be inferred from circumstances.  Non-use for three consecutive years
shall be prima facie  evidence of abandonment..."
US law incorporates the TRIPS standard as a presumption which permits the person seeking
cancellation to have the mark declared abandoned if there has been non-use for three consecutive
years.
Further, under US practice, if an affidavit of use is filed to maintain a registration, and the
specimen submitted with the affidavit of use, show s use in the prior three years, that specimen is
considered to meet the requirements of both Sections 8 and 9 of the Lanham Act
(15 USC 1058 and 1059) for showing current use in commerce.
[Follow-up question from the EC]
On the basis of the wording of Section 45 of the Lanham Act, it would seem that a person
might successfully seek the cancellation of a mark on the basis of non-use, where the period of non-
use is less than three years.  If this is correct, please explain how the position under US law complies
with Article 19.1 of the TRIPS Agreement.
Under US law, a mark can be cancelled at any time if it can be successfully proved that use of
the mark has been discontinued and that there is no intention on the part of the owner of the mark to
resume the use of the mark.  This approach is fully consistent with Article 19.1 of the TRIPS
Agreement where the requirement of at least three years of non-use before a mark may be cancelled
pertains to the maintenance requirements for the registration.  Therefore, the Patent and Trademark
Office will not cancel a registration where the documents filed to maintain the registration show lessthat three years of non-use.
4. The United States has indicated that the term "geographical indication" as used in Section 2
of the Trademark Act will be interpreted to comprise "only those areas which have a reputation for
being associated with the specific goods at issue".  Please explain how this interpretation is consistent
with Article 22 of the TRIPS Agreement, which defines geographical indications as "indications whichidentify a good as originating in the territory of a Member, or a region or locality in that territory,
where a given quality, reputation or other characteristic of the good is essentially attributable to its
geographical origin".
The US language is fully consistent with the TRIPS language in Article 22.1, which provides:
"Geographical indications are ... indications  which identify a good as originating in
the territory of a Member, or a region or locality in that territory, where a given
quality, reputation or other characteristic of the good is essentially attributable to itsgeographical origin."IP/Q2/USA/1
Page 8
Under US law, a geographical indication, which is being registered because it names an area
where a given quality, reputation or other characteristic of the good is essentially attributable to that
area, would be registered as a certification mark.  The Lanham Act specifically exempts "indications
of regional origin" (Section 4 of the Act (15 USC 1054)) from refusals for geographic descriptiveness
under Section 2(e)(2) (15 USC 1052(e)(2)).
[Follow-up question from the EC]
Article 22 of the TRIPS Agreement defines a geographical indication as an indication which
identifies a good as originating in the territory of a WTO Member, or a region or locality in that
territory, where a given quality, reputation or other characteristic of the good is essentially
attributable to its geographical origin.  Is it the case that protection in the United States of
geographical indications is limited to when it is the reputation of the good that is attributable to its
geographical origin;  and so no protection is afforded when any other characteristic of the product isessentially attributable to its geographical origin?
No such limitation exists in US law.
5. Under Section 2(a) of the Trademark Act (15 USC 1052(a)), the United States permits the
registration or continuation of a trademark that includes a false geographical indication for wines or
spirits, if the trademark was first used before the date of application of the TRIPS Agreement.  The
United States does not require a determination that the trademark was applied for, registered, oracquired in "good faith".  Please explain how this provision is consistent with Articles 23.2 and 24.5
of the TRIPS Agreement, which provide that trademar k registration shall be refused or invalidated for
a false geographical indication for wines and spirits except where a trademark has been applied for
or registered in good faith, before the application of the TRIPS Agreement.
Section 14 of the Lanham Act (15 USC 1064) provides that a registration may be cancelled at
any time where it has been obtained fraudulently or contrary to the provisions of Section 4
(15 USC 1054) or of sub-section (a), (b) or (c) of Section 2 (15 USC 1052) for a registration under the
Act.  This language permits cancellation of a registration obtained in bad faith.
6. Article 23 of the TRIPS Agreement sets forth "Additional Protection for Geographical
Indications for Wines and Spirits".  Article 23.1 states that "Each Member shall provide the legalmeans for interested parties to prevent use of a geographical indication identifying wines for wines
not originating in the place indicated by the geographical indication in question ... even where the
true origin of the goods is indicated or the geographical indication is used in translation or
accompanied by expressions such as "kind", "type", "style", "imitation", or the like."  Does US
legislation implement this provision?  If not, what  intentions does the US Government have in order to
provide for such protection?
The United States does comply fully with the obligation of Article 23.1.  An interested party
may file a complaint in the United States with the Bureau of Alcohol, Tobacco and Firearms
("BATF").  BATF will conduct an investigation in which all involved parties are afforded an
opportunity to present their view and evidence, on the basis of which BATF will base its decision.
Regarding the use of geographical indications on wine labels, BATF can enforce its decision
through the non-issuance or revocation of certificat es of label approval issued under the Federal
Alcohol Administration Act, 27 USC 205(e).  BATF currently is working to issue regulations
governing the procedures for revocation of a certificate of label approval in accordance with Notice
No. 815, 60 Federal Register 47506 (13 September 1995).IP/Q2/USA/1
Page 9
Additionally, the United States relies upon the Trademark Act of 1946, specifically
Section 2(a) (15 USC 1052(a)), which provides th at a "geographical indication which, when used on
or in connection with wines or spirits, identifies a place other than the origin of the goods and is first
used on or after one year after the date on which the WTO Agreement enters into force with respect to
the United States" will be refused registration by the US Patent and Trademark Office.  The US Patent
and Trademark Office will ex officio  refuse registration of a geographical indication, if the use of the
geographical indication does not indicate the true origin of the wine or spirits.  Section 2(a)
(15 USC 1052(a)) also can be the basis for a petition to the US Patent and Trademark Office to cancel
an existing registration.
[Follow-up question from the EC]
The reply given does not seem fully to answer the point raised in the question.  It appears to
indicate the competent body and the procedure followed by this body to refuse or approve a label.  It
is also indicated that the US Patent and Trademark Office will ex officio refuse registration of ageographical indication if the use of the geographical indication does not indicate the true origin of
the wine or spirits.  However, no answer has been given to the question whether US legislation
implements Article 23.1 of the TRIPS Agreement, in relation to the provision of the legal means for
interested parties to prevent the use of a geographical indication not originating in the place
indicated by the geographical indication in question, even where the true origin of the good isindicated or the geographical indication is used in translation or accompanied by expressions such as
"kind", "type", "style", "imitation" or the like.  Could the United States please clarify this answer?
Protection is provided through Section 43(a)  of the Trademark Act of 1946, as amended
(15 USC 1125).  It states:
"(a)(1) Any person who, on or in connection with  any goods or services, or any container for
goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which -
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, oras to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, [...]
[...]
shall be liable in a civil action by any person who believes that he or she is likely to
be damaged by such act.
[...]"
Note that registration of the geographical indication is not required to invoke the protection
offered by Section 43(a) of the Trademark Act.
Additionally, the obligation in Article 23.1 of the TRIPS Agreement is qualified by the
footnote providing that Members may provide for enforcement by administrative action.
Accordingly, national legislation enacted as statutory law is not required.
The means used by the United States to meet this obligation include administrative
procedures provided by the Bureau of Alcohol, Tobacco and Firearms (BATF) whereby interested
parties can submit complaints about the use of a particular geographical indication.  BATF'sIP/Q2/USA/1
Page 10
investigative and enforcement authority under the Federal Alcohol Administration Act and
implementing regulations function to enable the agency to evaluate the use of a particular designation
of geographic significance and determine on a case by case basis whether such designation is being
used in contravention of the laws, regulations and obligations of the United States.
These same legal means apply when the expr essions such as "kind", "type", "style",
"imitation", or the like are improperly used in conjunction with a geographical indication.
7. Under 27 Code of Federal Regulations ("CFR") §4.24, the Director of the Bureau of Alcohol,
Tobacco and Firearms ("BATF") has sole authority to determine whether a name of geographic
significance with respect to wine has become "generic" or "semi-generic".  Please explain the basis
on which the Director determines whether names of geographic significance, which are recognised
and protected in the European Community and its Member States, are or have become "generic" or
"semi-generic" and explain also how the relevant standard comports with Articles 22.1 and 23.1 of
the TRIPS Agreement.
A "generic" or "semi-generic" wine name is a name of geographic significance which is also
the designation of a class or type of wine (27 CF R §4.24(a)(1) and (b)(1)). These are names that were
originally developed based on their geographic origin but have come to be known to consumers and
the industry as descriptive of a kind of wine, separate and apart from their geographic origin. The
Director of BATF exercises the authority through the rule-making procedures authorized under theAdministrative Procedure Act, 5 USC §§551 et seq .  Evidence is collected which the Director uses to
determine whether or not a particular name has become descriptive of a kind of wine in the customary
usage or common parlance of the United States.
[Follow-up question from the EC]
The answer given by the United States appears to indicate that the Director of BATF can
continue to determine in the future whether or not a particular name has become descriptive of a kind
of wine in customary usage or common parlance in th e United States.  Does this provision fulfil the
requirements of Article 24.3, which establishes that a WTO Member shall not diminish the protection
of geographical indications that existed in that Member immediately prior to the date of entry into
force of the Agreement Establishing the WTO.  Coul d the United States explain what the criteria are
to decide whether a name is generic?
The requirement in Article 24.3 is qualified by Article 24.6, which permits a Member always
to permit the use of geographical indications that are customary in common language as the common
name for such goods or services in the territory of that Member.  The same is true with respect to
products of the vine where the relevant indication is identical with the customary name of the grapevariety existing in the territory of that Member as of the date of entry into force of the WTO
Agreement.
The criteria used to determine if a name is "generic" is based on whether such name, due to its
usage and common knowledge, has lost its geographical significance.  In other words, the name must
have been used so frequently and by so many for such a long period of time that its geographical
significance has been lost and it has thereby become known to the consumer and trade as a description
of a type or style of a product rather than a geographical designation.  Consequently, a generic namein the United States would be one that is customarily used in common language as the common name
for the product.  The Director of BATF is the person authorized to determine whether a name has
become "generic" based on evidence gathered during the rulemaking process.
8. Under 27 Code of Federal Regulations ("CFR") §5.22(k)(2), the Director of BATF has sole
authority to determine whether geographical names for distilled spirits "have by usage and commonIP/Q2/USA/1
Page 11
knowledge lost their geographical significance to such extent that they have become generic".  Please
explain in greater detail the basis on which the Director determines whether a geographical name for
distilled spirits has become "generic" and explain how the relevant standard comports with
Articles 22.1 and 23.1 of the TRIPS Agreement.
The response to question 7 above applies equally to this question.
[Follow-up question from the EC]
Under 27 CFR §4.24, the Director of BATF has sole authority to determine whether a name
of geographical significance with respect to wine or spirits becomes "customary in the common
language".  In the case of a non-American name, how are the possible use, reputation and protection
of the name in the country of origin taken into account when the Director of BATF takes his decision?
The original question 8 concerned distilled spirits under Section 5.22(k)(2), so we are unclear
why a question under the wine regulations is posed as part of the follow-up question to question
number 8.  Nevertheless, we will reply to this new question.
The Director of BATF will take into consideration the use, reputation and protection of the
name in the country of origin, along with any other pe rtinent factors, as part of the rulemaking process
prior to making a decision whether a name of geographic significance has become "customary in the
common language".  In such cases, interested part ies will be encouraged to submit comments during
the public comment period as to whether such a proposed name of geographic significance should beapproved as a generic or semi-generic name.  The Director of BATF will weigh all the evidence
gathered during the rulemaking proceeding before making a final decision.
9. Please explain, how the Director of BATF will exercise the authority to designate names of
geographic significance for wines as "semi-generic" or "generic" and the authority to designate
geographical names for distilled spirits "generic" consistent with the obligation of Article 24.3 of theTRIPS Agreement not to "diminish the protection of geographical indications that existed [in the
United States] immediately prior to the entry into force of the WTO Agreement".
The Director of BATF will exercise the authority to designate "generic" and "semi-generic"
wine names and "generic" spirits names after the date of entry into force of the WTO Agreement in
accordance with the relevant provisions of Article 24 of the TRIPS Agreement, including paragraph 6.
[Follow-up question from the EC]
The answer given by the United States indicates that the Director of BATF will exercise the
authority in accordance with the relevant provisi ons of Article 24 of the TRIPS Agreement.  Can we
understand that this answer includes Article 24.1?  Given that Article 24.6 cannot derogate from
Article 24.3, does the United States consider that Article 24.6 is applicable to generics and semi-generics that "existed in that Member immediately prior to the date of entry into force of the WTO
Agreement"?
The United States will participate in the eventual talks under Article 24.1.  The United States
does not agree that Article 24.6 "cannot derogate from Article 24.3".  Article 24.6 is worded
("[n]othing in this section") as a general qualification on the entire Section, including the application
of Article 24.3.  For additional information on the application of Article 24.6, see our answer to the
follow-up question from the EC to its initial question 7.
The United States considers that, based on the introductory phrases of Articles 24.3 and 24.6,
generic and semi-generic names are not necessarily limited to those in use "in that Member prior toIP/Q2/USA/1
Page 12
the date of entry into force of the WTO Agreement" (see our answer to part 1 of the EC's question 7
above).  This determination is also based on the recognition that there are no effective date provisions
listed in the first sentence of Article 24.6.  Accordingly, Article 24.6 is a broad substantive provision
and not a more narrow exception like Article 24.3, which "freezes" in place certain rights that existed
as of the effective date of the entry into force of the Agreement Establishing the WTO.
10. Under 27 Code of Federal Regulations (" CFR") §4.24(b)(1), a "semi-generic" name of
geographical significance for wine may be used to describe wine that is not of the indicated origin, so
long as it is accompanied by an indication disclosing the wine's true place of origin.  Please explain
how this provision is consistent with Article 23.1 of the TRIPS Agreement which forbids false use of
geographical indications even where the true origin of the good is indicated.
As explained in the response to question 9 above, US law and practice in connection with
"semi-generic" wine names is fully consistent with the obligations of the TRIPS Agreement on
geographical indications, including Article 24.6.
[Follow-up question from the EC]
Is it not the case that the provision under 27 CFR §4.24(b)(1), that a "semi-generic" name of
geographical significance for wine may be used to describe wine even if it is not of the indicated
origin so long as it is accompanied by an indication disclosing the wine's true place of origin, is in
contradiction with Article 23.1 of the TRIPS Agreement which forbids false use of geographicalindications even where the true origin is indicated?  Is it not the case that this position is not affected
by anything in Article 24.6?
The use of semi-generic names, which are provided for in BATF regulations, are authorized
by Article 24.6 of the TRIPS Agreement.  Additionally, under certain conditions, the use of semi-
generic wine names is also authorized under Article 24.4.  Once the United States has established thatthe use of the semi-generic name is allowed under the TRIPS Agreement, then the United States is
free to impose any additional conditions on the use of the semi-generic wine name.  In the present
case, the United States has decided to impose the additional condition that the semi-generic wine
name appear in conjunction with an appellation of origin.  Therefore, Article 23.1 has no relevance
here.
11. Does US law provide for the protection of textile designs, including fashion?  If yes, on what
legal basis and under which conditions (Article 25.2 of the TRIPS Agreement)?
The United States does provide protection for textile designs in the manner required by
Article 25.2 of the TRIPS Agreement.  That paragraph requires each Member to "ensure that
requirements for securing protection for textile designs, in particular in regard to any cost,examination or publication, do not unreasonably impair the opportunity to seek and obtain such
protection".  That paragraph goes on to indicate that Members are free to meet that obligation
"through industrial design law or through copyright la w".  In the United States, this obligation is met
through copyright law.
Copyright is a statutory right that subsists in an original work of authorship.  Under the US
Copyright Act, a wide variety of works are protectable, including:  literary, musical, dramatic,
pantomimes and choreographic, pictorial, graphic, sculptural, motion pictures and other audiovisualworks, sound recordings and architectural works.  Su bsumed within this enumerated list are textile
designs.  Copyright subsists at the time of creation of the work without the necessity of any
formalities, such as registration or publication with copyright notice.  Accordingly, there are no costs,
examination or publication requirements associated with obtaining copyright protection in the United
States.IP/Q2/USA/1
Page 13
[Follow-up question from the EC]
Does any person who has duly filed an application for the registration of an industrial design
in one of the countries of the Paris Union, or any Member of the WTO, enjoy, for the purpose of filing
a US design, a right of priority in accordance with Article 2.1 of the TRIPS Agreement, in conjunction
with Article 4 of the Paris Convention?  If not, please explain how the position under US law complies
with the above-mentioned articles of the relevant agreements.
[...]10
IV. REPLIES TO QUESTIONS POSED BY NEW ZEALAND
1. Please explain how Sections 1(a)(1)(a) and (b)(1)(a) of the Trademark Act (15 USC 1051)
comply with Article 15.3 of the TRIPS Agreement in requiring an applicant to state in an application
the date of first use of the mark and the date of the first use of the mark in commerce ((a)(1)(a)), or
the bona fide intention to use the mark in commerce ((b)(1)(a)).
Under US law, the applicant for trademark registration may allege several different bases to
establish the jurisdiction of the Patent and Trademark Office (PTO) over its application.  There is no
requirement that an applicant use the mark in orde r to apply for registration.  An applicant may file
based on its intention to use the mark or based on the ownership of a foreign registration or
application.
2. In Section 2(a) of the Trademark Act (15 USC 1052) reference is made to "national symbols".
Please explain the scope of this provision, providi ng some examples of the types of symbols which are
covered by this provision.
A "national symbol" is subject matter of unique and special significance which, because of its
meaning, appearance and/or sound, immediately suggests or refers to the country for which it stands
(In re Consolidated Foods Corp., 187 USPQ 63 (TTAB 1975)).  National symbols include the
symbols of foreign countries as well as those of the United States ( In re Anti-Communist World
Freedom Congress  Inc., 161 USPQ 304 (TTAB 1969)).
The US law does not prohibit the registration of marks comprising national symbols;  the
pertinent provision merely prohibits registration of matter which may disparage national symbols,
falsely suggest a connection with them, or hold them up to contempt or disrepute ( Liberty Mutual
Insurance Co. v. Liberty Insurance Co. of Texas, 185 F.Supp. 895, 908, 127 USPQ 312, 323 (E.D.
Ark. 1960)).
Examples of designs which were considered "national symbols":  the representation of a
hammer and sickle held to be a national symbol of the Soviet Union ( In re Anti-Communist World
Freedom Congress Inc.,  161 USPQ 304);  the American bald eagle ( In re National Collection &
Credit Control Inc., 152 USPQ 200, 201 (TTAB 1966)).
3. Please confirm that Section 2(e)(3) of the Trademark Act (15 USC 1052) will prevent the
registration in the United States of a trademark where the applicant has used the name of a WTO
Member, either on its own or in combination with other words, but where the applicant and the goods
or services, the subject of the application, have no connection to the WTO Member in question.
                                                     
10 See footnote 2 above.IP/Q2/USA/1
Page 14
Under US law, registration is refused when the mark in question contains a term which is
"primarily geographically deceptively misdescriptive".  Three conditions must be met in order to
successfully make this refusal:  (1) the term for which registration is sought must be one whose
primary significance is geographic;  (2) purchasers would be likely to think that the goods originated
in the geographic place identified in the mark;  and (3) the goods or services do not originate in that
place.  Under these standards, registration would be refused where the name of a WTO Member wasthe subject matter of the registration and the goods or services identified in the registration do not
emanate from that Member.  To establish a goods-place association, the examining attorney must only
show that it is reasonable to believe that the goods  or services could have emanated from the named
place.  There is no need to establish that the particular geographic area named is "known for" the
goods or services in question ( In re Loew's Theaters, Inc., 226 USPQ 865,868 (Fed. Cir. 1985)).
The US law concerning geographic terms has undergone significant changes due to the
legislation which implemented US obligations under the North American Free Trade Agreement(NAFTA) and the TRIPS Agreement.  After 8 December 1993, the standard concerning registration of
geographic terms became considerably stricter.  Under changes made to implement NAFTA,
geographic terms which are primarily geographically deceptively misdescriptive can no longer be
disclaimed or shown to be distinctive under Section 2(f) of the Trademark Act (15 USC 1052(f)).
However, for applications filed prior to 8 December 1993, a disclaimer of a primarily merelymisdescriptive geographic term could be entered to overcome the descriptive or misdescriptive refusal
so long as the geographic term was not deceptive under Section 2(a) of the Act (15 USC 1052(a)) and
so long as the applicant was not disclaiming the mark in its entirety.
In addition, Sections 13 and 14 of the Trademark Act (15 USC 1063 and 1064) provide that
any person harmed by the registration of a particular term may oppose or cancel the registration ofsuch a mark.  In addition, Section 43 of the Trademark Act permits an aggrieved party to stop the use
of such a term, even if the term is not registered.
4. Would Section 2(e)(1) of the Trademark Act (15 USC 1052) enable a WTO Member to
prevent the registration of a trademark in the circumstances described in question 3 above, taking
into account the qualification in Section 2(f)?
Section 2(e)(1) (15 USC 1052), would not be the appropriate ground for refusal, cancellation
or opposition to the registration of a geographically misdescriptive term as described in the
hypothetical situation of question 3 above.
The provisions of Section 2(f) do not apply to terms which are primarily geographically
deceptively misdescriptive.  Three conditions must be  met in order to successfully show that a term is
primarily geographically deceptively misdescriptive:  (1) the term for which registration is sought
must be one whose primary significance is geographic;  (2) purchasers would be likely to think that
the goods originated in the geographic place identified in the mark;  and (3) the goods or services do
not originate in that place.  Under these standards, registration would be refused where the name of a
WTO Member was the subject matter of the registration and the goods did not emanate from that
place.  To establish a goods-place association, the examining attorney must only show that it is
reasonable to believe that the goods or services could have emanated from the named place.  There isno need to establish that the particular geographic area named is "known for" the goods or services in
question (In re Loew's Theaters, Inc., 226 USPQ 865,868 (Fed. Cir. 1985)).
The US law concerning geographic terms has undergone significant changes due to the
legislation which implemented US obligations under the North American Free Trade Agreement
(NAFTA) and the TRIPS Agreement.  After 8 December 1993, the standard concerning registration ofgeographic terms became considerably stricter.  Under changes made to implement NAFTA,IP/Q2/USA/1
Page 15
geographic terms which are primarily geographically deceptively misdescriptive can no longer be
disclaimed or shown to be distinctive under Section 2(f) (15 USC 1052(f)).  However, for applications
filed prior to 8 December 1993, a disclaimer of a primarily merely misdescriptive geographic term
could be entered to overcome the descriptive or misdescriptive refusal so long as the geographic term
was not deceptive under Section 2(a) of the Act (15 USC 1052(a)) and so long as applicant was not
disclaiming the mark in its entirety.
In addition, Sections 13 and 14 of the Trademark Act (15 USC 1063 and 1064) provide that
any person harmed by the registration of a particular term may oppose or cancel the registration of
such a mark.  In addition, Section 43 of the Trademark Act permits an aggrieved party to stop the use
of such a term, even if the term is not registered.
5(a) Would Section 6 of the Trademark Act (15 USC 1056) enable a trademark which includes the
name of a WTO Member to be registered  if the Member's name is disclaimed?
Where appropriate, an applicant may disclaim the geographic component of a mark.  The
geographic component must be a separable component, i.e. the mark is not unitary, the mark must
include other inherently distinctive matter, and the geographic component must not be primarily
geographically deceptively misdescriptive.
The purpose of a disclaimer is to make it clear, if it might otherwise be misunderstood, that a
significant element of the mark is not being exclusively appropriated by the applicant.
Additionally, under changes made to implement NAFTA, geographic terms which are
primarily geographically deceptively misdescriptive can no longer be disclaimed or shown to be
distinctive under Section 2(f) of the Trademark Act (15 USC 1052(f)).  However, for applications
filed prior to 8 December 1993 a disclaimer of a primarily merely misdescriptive geographic term
could be entered to overcome the descriptive or misdescriptive refusal so long as the geographic termwas not deceptive under Section 2(a) of the Act (15 USC 1052(a)) and so long as applicant was not
disclaiming the mark in its entirety.
5(b) Would the answer to question 5(a) also apply if the applicant's trademark was caught by
Section 2(e)(3) of the Act (15 USC 1052(e)(3))?
Yes.
6. Article 25.1 of the TRIPS Agreement states that Members may provide that protection for
designs shall not extend to designs dictated essentially by technical or functional considerations.  In
35 USC 171, protection for technical and functional designs is excluded.  Are these designs protected
by US law in some other way?  If so, how are they protected and for how long do they receive
protection?
35 USC 171 provides that "[w]hoever invents any new, original and ornamental design for an
article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this
title".  Because the subject matter of a design pate nt is limited to "ornamental designs", courts in the
United States have consistently held that protection does not extend to the structural or utilitarian
features of an article of manufacture.  A design for an article of manufacture that is dictated purely by
the function of the article lacks ornamentality and is not, therefore, patentable subject matter.
35 USC 101, however, provides that "[w]hoever  invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements of this title".  This
establishes the basis for the grant of so-called "utility patents" as distinct from "design patents"IP/Q2/USA/1
Page 16
established under 35 USC 171, cited above.  It is through utility patents that one may obtain
protection for designs that are purely technical and functional.
V. REPLIES TO QUESTIONS POSED BY JAPAN
1. Please explain whether a specimen or facsimile attached to an affidavit is accepted as
showing "the current use" described in Article 8 of  the Lanham Act if it show s the use at some point
within three years prior to the submission of the affidavit.   If it is not acceptable, please explain itsconsistency with the provisions of Article 19 of th e TRIPS Agreement stipulating that "the registration
may be cancelled only after an uninterrupted period of at least three years of non-use".
If otherwise acceptable, such a specimen or facsimile would not be rejected due to its date.
2. Since it is not clearly stipulated in the laws and regulations of the United States concerning
industrial designs that textile designs are protected  in conformity with the TRIPS Agreement, please
explain under which provision of the Act or other copyright related law these designs are protected.
Moreover, to make sure that the opportunity to seek and obtain protection for textile designs is notimpaired unreasonably, please explain your system or practice particularly with regard to cost,
examination or publication (cf. paragraph 2 of Article 25 of the TRIPS Agreement).
The United States does provide protection for textile designs in the manner required by
Article 25.2 of the TRIPS Agreement.  That paragraph requires each Member to "ensure that
requirements for securing protection for textile designs, in particular in regard to any cost,examination or publication, do not unreasonably impair the opportunity to seek and obtain such
protection".  That paragraph goes on to indicate that Members are free to meet that obligation
"through industrial design law or through copyright la w".  In the United States, this obligation is met
through copyright law.
Copyright is a statutory right that subsists in an original work of authorship.  Under the US
Copyright Act, a wide variety of works are protectable, including:  literary, musical, dramatic,
pantomimes and choreographic, pictorial, graphic, sculptural, motion pictures and other audiovisual
works, sound recordings, and architectural works.  Subsumed within this enumerated list are textile
designs.  Copyright subsists at the time of creation of the work without the necessity of any
formalities, such as registration or publication with copyright notice.  Accordingly, there are no costs,examination or publication requirements associated with obtaining copyright protection in the United
States.
VI. REPLIES TO QUESTIONS POSED BY AUSTRALIA
1. Please explain how your law satisfies the requirements of Article 22 of the TRIPS Agreement
in respect of geographical indications.
Section 43(a) of the US Trademark Act (15 USC 1125) provides that any entity that uses a
false designation of origin or a false or misleading representation of fact in connection with any goods
or services shall be liable in civil action to any person who believes he or she is damaged by that act.
Under the criminal provisions of the Trad emark Counterfeiting Act of 1984, intentional
trafficking using a counterfeit mark on or in connection with goods or services may be fined up to
US$ 15 million and imprisoned for not more than 20 years.  These penalties are in addition to any
civil penalties which may be assessed.IP/Q2/USA/1
Page 17
Section 2(a) (15 USC 1052(a)) provides that a geographical indication which when used on or
in connection with wines or spirits identifies a place other than the place of origin of the goods, and
such registration is sought after the provisions of the WTO came into effect, will be refused.  In
addition, Section 2(a) prohibits the registration of any mark which is deceptive.  A deceptive mark is
one in which the deceptive term in the mark would influence the purchasing decision of the public.
Sections 2(e)(2) and 2(e)(3) (15 USC 1052(e)(2) and (e)(3)) provide that registration of a
primarily geographically descriptive mark or a primarily geographically deceptively misdescriptive
mark shall be refused.
The misleading use of geographical indications in the labelling and advertising of distilled
spirits, wines and malt beverages is also regulated under the provisions of the Federal AlcoholAdministration Act, as administered and enforced by the Bureau of Alcohol, Tobacco and Firearms.
The implementing regulations include 27 Code of Federal Regulations, Parts 4 and 12 for wine;
Part 5 for distilled spirits;  and Part 7 for malt beverages.  Under these regulations, BATF has the
authority to prevent the misleading use of geographical indications for distilled spirits (27 CFR 5.34
and 5.42);  wine (27 CFR 4.33(b) and 4.39(a)(1), (k), (i) and (j));  and malt beverages (27 CFR7.23(b)).
2. Please describe any provisions in your law which address the requirements of Article 23 of
the TRIPS Agreement.
See the answer to question 1 above with respect to the extent to which Article 23 is
implemented through the Trademark Act of 1946.  The Federal Alcohol Administration Act
provisions and regulations governing distilled spirits and wine, which are enforced through
administrative action of BATF's investigative a nd enforcement authority, function to prevent the
misleading use of geographical indications.  The provisions and regulations afford parties the
opportunity to submit complaints about the use of a particular geographical indication in accordancewith the footnote in Article 23.l of the TRIPS Agreement concerning enforcement by administrative
action.  This approach enables BATF to evaluate the use of a particular designation of geographical
significance and determine on a case-by-case basis, whether such designation is being used in
contravention of the laws, regulations and obligations of the United States.  Judicial remedies are also
available under the Federal Alcohol Administration Act under some circumstances.
Regarding the use of geographical indications on wine labels, BATF can enforce its decisions
through the non-issuance or revocation of certificat es of label approval issued under the Federal
Alcohol Administration Act (27 USC 205(e)).  The procedures by which BATF can revoke a
certificate of label approval are in the process of being codified in the regulations pursuant to Notice
No. #815, 60 Federal Register 47506 (13 September 1995).
In regard to Article 23.3 of the TRIPS Agreement, the labelling and advertising authority
under the Federal Alcohol Administration Act and implementing regulations enable BATF to address
homonymous geographical indications.
3. Please explain how your legislation deals with the issue of pre-existing trademark rights vis-
à-vis the protection of geographical indications.  Are there any instances of permitted dual use of the
same matter as a trademark and as a geographical  indication?  Please provide details of any such
instances.
Pre-existing trademark rights will be grandfat hered and granted continuing protection.  With
respect to the second part of the question, our law protects geographical indications as trademarks,
provided that the requirements for such protection in the law are met.IP/Q2/USA/1
Page 18
4. Do you protect textile designs as required under Article 25 of the TRIPS Agreement by
industrial design law, copyright law, sui generis legislation or a combination of these?
Textile designs are protected through the copyright law.  In the United States, finished
clothing or unmarked cloth is considered utilit arian and therefore unprotectable by copyright.
Finished clothing is protected by design patent.
5. If it is a requirement of your trademark law t hat a sign be "visually perceptive", how is this
requirement applied?
There is no requirement that signs be visually perceptible.
6. If your trademark legislation permits the registration of sounds and smells, how are such
signs received in the Trademarks Office and entered in the Trademarks Register?
Sounds are generally submitted on cassette tape with a written description of the mark
contained in the application.  Smells are intrinsic to the goods and samples of the actual goods are
submitted.
7. How does your legislation meet the requirements of Article 6bis of the Paris Convention, as
expressed in Article 16 of the TRIPS Agreement, c oncerning well-known trademarks?  What criteria
are applied in determining what constitutes a well-known trademark?
In making a determination of whether or not a mark is well-known, the courts look at a
variety of factors.  An exhaustive list of factors for this determination does not exist, but these factorsinclude:
(1) degree of inherent or acquired distinctiveness;
(2) duration and extent of use;
(3) duration and extent of advertising;
(4) geographical extent of trading area;(5) channels of trade;
(6) degree of recognition of the mark;
(7) nature and extent of use of the same or similar marks by third parties.
A determination of whether a mark is well-known is made in the context of an infringement
action between two parties at the federal level or in the context of an administrative proceeding of the
Trademark Trial and Appeal Board's determination of rights in a registration.
VII. REPLIES TO QUESTIONS POSED BY INDIA
1. Does the United States provide protection of geographical indications as required under
Article 22 of the TRIPS Agreement only through re gistration as collective marks and certification
marks?  Can passing off action be initiated in US courts without registration in such a manner?IP/Q2/USA/1
Page 19
Protection is provided through Section 43(a) of the Trademark Act of 1946 (15 USC 1125), as
amended.  It states:
"(a)(1) Any person who, on or in connection with  any goods or services, or any container for
goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which -
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or
as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person,  [...]
[...]
shall be liable in a civil action by any person who believes that he or she is or is likely
to be damaged by such act.
[...]"
Note that registration of the geographical indication is not required to invoke the protection
offered by Section 43(a) of the Trademark Act.
Protection is also available under the laws and regulations administered by the Bureau of
Alcohol, Tobacco and Firearms.  The pertinent law covering geographical indications is the FederalAlcohol Administration Act and implementing regulations.  These regulations include 27 Code of
Federal Regulations, Parts 4 and 12 for wine;  Part 5 for distilled spirits;  and Part 7 for malt
beverages.  Under these regulations, BATF has the authority to prevent the misleading use of
geographical indications for distilled spirits, wine and malt beverages.  Thus registration is not
required before an action can be brought in Federal Court.
[Follow-up questions from India]
(a) Is the answer given by the United States that registration is not required before an action can
be brought in Federal Court applicable only to alcohol, tobacco and firearms or does it apply to all
products?
Action under Section 43(a) of the Trademark Act of 1946, as amended, is available to anyone
who meets the requirements set out in the Section.  The relief provided by the Section is not restricted
to a particular type of product or service.
(b) How does the United States provide legal means for any party to prevent unfair competition
within Article 10bis of the Paris Convention, in particular in respect of any act of competition
contrary to honest practices?
15 USC 1125 is the federal statute that protects against unfair competition.  Various state
statutes also apply.
2. Article 24.9 of the TRIPS Agreement states, inter alia, that there shall be no obligation under
this Agreement to  protect geographical indications which are not protected
 in their country of origin.
If a geographical indication is protected in the country of origin by courts under passing off action,will the United States allow it to be similarly protected in its territory?IP/Q2/USA/1
Page 20
Whether the geographical indication is protected in its country of origin might be one factor
which a court would consider.  However, the issues to be considered under Section 43(a) of the
Trademark Act is whether the geographical term is a false designation of origin or whether the term
causes confusion, mistake or is deceptive and use of the term damages the interests of another.
[Follow-up questions from India]
(a) Is it to be understood from the answer given by the United States that, if a false designation of
origin causes confusion or mistake or can be considered as deceptive, then the geographical
indication is protected in the United States even when it is protected only under passing off action in
the country of origin?
Yes.  Any person who is likely to be harmed by the use of a false designation of origin or a
false or misleading representation of fact may s eek redress under Section 43 of the Trademark Act of
1946, as amended (15 USC 1125).
(b) Is there any provision in the US law which requires a geographical indication to be protected
in the country or origin before remedies can be made available under Section 43(a) of the Trademark
Act of 1946, as amended?
No.
VIII. REPLIES TO QUESTIONS POSED BY SWITZERLAND
We are informed that many trademarks containing the designation "Swiss" are accepted by
the Patent and Trademark Office if the applicants disclaim exclusive rights on that designation.  The
Swiss authorities hold the view that the system of disclaimer is not the most appropriate tool to avoid
the use of misleading geographical designations in general and the undue use of the name "Swiss" in
particular.  Please explain the system of "disclaimer", in particular in relation to geographical
indications.  How would the US authorities justify this system and practice which equates with arefusal to protect geographical indications against misleading use as to the origin of the products or
services?
Under US law, registration is refused when the mark in question contains a term which is
"primarily geographically deceptively misdescriptive".  Three conditions must be met in order to
successfully make this refusal:  (1) the term for which registration is sought must be one whoseprimary significance is geographic;  (2) purchasers would be likely to think that the goods originated
in the geographic place identified in the mark;  and (3) the goods or services do not originate in that
place.  Under these standards, registration would be refused where the word "Swiss" was the subject
matter of the registration and the goods or services identified in the registration did not emanate from
Switzerland.  To establish a goods-place association the examining attorney must only show that it isreasonable to believe that the goods or services could have emanated from the named place.  There is
no need to establish that the particular geographic area named is "known for" the goods or services in
question ( In re Loew's Theaters, Inc. , 226 USPQ 865,868 (Fed.Cir. 1985)).
The US law concerning geographic terms has undergone significant changes due to the
legislation which implemented US obligations u nder the North American Free Trade Agreement
(NAFTA) and the TRIPS Agreement.  After 8 December 1993, the standard concerning registration of
geographic terms became considerably stricter.  Under changes made to implement NAFTA,geographic terms which are primarily geographically deceptively misdescriptive can no longer be
disclaimed or shown to be distinctive under Section 2(f) (15 USC 1052(f)).  However, for applications
filed prior to 8 December 1993, a disclaimer of a primarily merely misdescriptive geographic termIP/Q2/USA/1
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could be entered to overcome the descriptive or misdescriptive refusal so long as the geographic term
was not deceptive under Section 2(a) of the Act (15 USC 1052(a)) and so long as applicant was not
disclaiming the mark in its entirety.
In addition, Sections 13 and 14 of the Trademark Act (15 USC 1063 and 1064) provide that
any person harmed by the registration of a particular term may oppose or cancel the registration of
such a mark.  In addition, Section 43 of the Trademark Act permits an aggrieved party to stop the useof such a term, even if the term is not registered.
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