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NTO’s role in trade and IP I write in regard to “Geographic indications at issue in Idaho spud case” by Heather Angelina Dunn [NLJ, Jan. 26], which discussed the obligations of World Trade Organization members under the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) as well as the United States’ implementation of the agreement. Dunn incorrectly indicates that “geographical indications” (GIs) for food and agricultural products other than wines and spirits are not covered under TRIPs. In fact, TRIPs does not exclude any food or agricultural product from eligibility for protection as a geographical indication. See TRIPs at Art. 22. Dunn also states that TRIPs requires signatories to “agree to provide protection for U.S. wine and spirits GIs and AVAs [American Viticultural Areas] in exchange for which the U.S. agrees to provide protection for foreign GIs such as Cognac, Armagnac and Jamaican Rum.” This mistakenly suggests that during the Uruguay Round negotiations, the United States agreed to accept “positive lists” of geographical indications for wines and spirits from our trading partners. In fact, TRIPs sets forth a principled system of intellectual property protection for GIs. Art. 22 of TRIPs obligates WTO members to provide the legal means to prevent the use of GIs where the goods do not come from the place named and the public would be misled as to the origin of the goods. Art. 23 further obligates members to provide the legal means to prevent the use of a GI for wines or spirits where the goods do not come from the place named, whether or not the public is misled. Dunn also states that, although certification marks provide the primary protection for GIs in the United States, “specifically exempted from eligibility for certification mark status are the names of American states in the field of wines and spirits, as well as counties and [AVAs].” This is incorrect. Names of American states and counties are fully eligible for protection as GIs under the intellectual property regime of the United States as certification marks. For example, the registered trademark identifies “Napa Valley Barrel-Aged Reserve” as a geographical-indication certification mark for still and sparkling wines. Dunn’s misstatements appear to stem from confusion about the U.S. Certificate of Label Approval regime administered by the Alcohol and Tobacco Tax and Trade Bureau (TTB). TTB’s regime provides for pre-sale approval of labels for wines and spirits on the U.S. market in part to ensure that consumers are not misled as to any characteristics of the products contained in the bottles. But the regime does not establish any intellectual property rights in the terms so regulated. The TTB labeling rules do have the effect of preventing the use of geographic terms by those who are not entitled to use them since the consuming public would be misled by such labels. Thus, although created for consumer protection, the TTB labeling system provides an incidental enforcement mechanism for GI owners for wines and spirits, but it is not the mechanism by which GI rights are established or asserted. Lois E. Boland Washington The writer is director of the office of international relations, U.S. Patent and Trademark Office. The author responds: Lois E. Boland is correct that the TRIPS agreement “does not exclude any food or agricultural product from eligibility for protection as a geographic indication,” and I regret this error. Goods other than wine and spirits are eligible for a certain level of protection as geographical indications (GIs), although lesser than that provided for wine and spirits. She also believes that readers will interpret a sentence in my article to have a particular meaning with respect to the Uruguay Round negotiations. I stand by the sentence as written, as it simply provides examples of foreign GIs that are, in practice, protected due to the referenced exchange of agreements. Boland further suggests that I may be confused between the U.S. certification mark system and the U.S. Certificate of Label Approval regime administered by the TTB. Although separate systems, they are inextricably intertwined and clearly overlap in application. I dispute that the TTB system’s purpose of consumer protection is different from that of the certification mark system and U.S. trademark law in general. (“The policies of consumer protection, property rights, economic efficiency and universal concepts of justice underlie the law of trademarks.” McCarthy on Trademarks and Unfair Competition � 2:2 (4th ed.)). The “Napa Valley Barrel-Aged Reserve” logo is an example of a certification mark that includes an American GI, but does not reflect the name of an American GI in and of itself. Therefore, it is not applicable to show existing certification mark protection for the name of an American state, county or AVA. The registration rights of the Napa Valley Reserve Certification Board could not be used to prevent third parties from using the wording “Napa Valley” on wine. Furthermore, a search of the federal trademark registration database reveals no instances in which the name of an American state, county or AVA has been approved for registration as a certification mark for wine or spirits. Heather Angelina Dunn San Francisco

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