Certification Mark Granted and Now Prohibits the Use of “Tequila” on Liquor Products Unless Such Use is in Compliance with the Official Mexican Standard.
Introduction
For years the United States Patent and Trademark office considered “Tequila” to be a generic term used to describe distilled liquors. What is meant by a generic term is that it is a word or a phrase that has become common to describe an entire class of goods or services over time. These generic words or phrases are not protectable under trademark law and cannot be registered because they are not distinct enough for trademark protection. An example would be Aspirin, which was once a trademark, but has become the common name or term used to describe any medication used to relieve headaches and has completely lost its distinct character. Tequila was seen and described in the same way. It was used to describe a group of distilled spirits instead of having its own distinct character.
However, in 2003, Consejo Regulador de Tequila (hereinafter referred to as “CRT”), sought to register “Tequila” as a certification mark for distilled spirits specifically from the Blue Tequilana Weber variety of agave plant native to Mexico. Certification marks indicate that products have been tested thoroughly in terms of their safety, quality and durability. Specific entities will confirm whether a product meets the prescribed standards, and a specific mark is used on the products indicating that the prescribed standard has been met. By registering “Tequila” as a certification mark, the CRT could ensure that all tequila’s produced would have to adhere to the same strict prescribed standards and regulations, resulting in better quality tequilas.
The Opposition
The registration of the certification mark was opposed by Luxco Inc. and a lengthy trial ensued. Luxco argued that the word “Tequila” is a generic term used for any type of distilled spirit and should not be restricted to a certain plant or geographical origin but should remain a generic term. Luxco therefore bore the onus to prove “Tequila” was generic. Luxco failed to prove this, and the opposition was dismissed.
The Trademark Trial and Appeal Board granted the registration of the certification mark to CRT after they had proven that because CRT is the entity which regulates and verifies compliance with the Official Mexican Standard for Tequila, they should have the right and authority to use and control the usage of the term “Tequila” in Mexico and the United States.
In 2017, the United States Patent and Trademark Office issued a registration certificate, which stated that:
The certification mark “Tequila” as used by persons authorised by the Consejo Regulador del Tequila A.C. certifies that:
- The goods are manufactured in Mexico from a specific variety of the blue agave plant grown in certain regions of Mexico as defined by Mexican Law Standards;
- The goods are manufactured in Mexico in compliance with Mexican law and standards including fermentation, distillation, aging, the percentage of blue agave sugars and physical-chemical specifications; and
- The finished product is or contains within it the goods manufactured in accordance with (1) and (2) above.
Conclusion
Tequila must be made with the specific agave, grown in an officially designated area in Mexico and must be produced and bottled in terms of specific standards which are specified by the Norma Oficial Mexicana (NOM). Once the NOM has specified the official standards that must be met, the CRT then certifies the product. Only once those standards have been met and the product has been certified, will an alcoholic beverage be labelled as “Tequila”. The registration of the certification mark results in “Tequila” no longer being used as a generic term and the Trade Mark office will prohibit the use of “Tequila” for description of goods in trademark applications.
By: Megan Kriel, Candidate Attorney