A Wine by Any Other Name: Protecting the Trademark in the NAFTA Renegotiations

By Adrienne Greenberg

Regardless of whether wine is consumed by a refined palette or by the box, there have been recent advancements that suggest consumers are purchasing wine imitating well-known producers.  Wine producers, like others that wish to register their trademarks on the Principal Register, must proceed through a formal registration process with the United States Patent and Trademark Office (“USPTO”) to guarantee protection of their geographic indicators within the United States.[1]  Once a product has a registration, the owner of the product can then protect their registered mark from potential infringers that create customer confusion.[2]  As an example, a wine producer would want to register their mark to prevent customers from associating another wines by the same name or by association with a specific geographic region printed alongside the name.

The U.S. is currently facing an onslaught of geographic copycats from producers abroad.[3]  For instance, U.S. geographic trademarks have appeared on wine bottles “composed of Chinese grapes.” [4]  Among other industries, foreign counterfeiters have likewise infiltrated the world of wine by falsely labeling products and using fraudulent geographical indications that deceive and confuse consumers.[5]   This concerning behavior not only affects consumers of wine, but also producers and merchants.  Their hard-earned and established brands are affixed on wine bottles not from their own production, an idea that would frighten many producers.  These problems have shaped the goals for intellectual property reform in the NAFTA renegotiations. [6]

NAFTA is a trilateral agreement between Canada, Mexico, and the United States, and attempts to promote economic growth by easing the movement of goods and services between the three countries.[7]  Through the renegotiation of NAFTA, the Trump Administration seeks an agreement that reduces the U.S. trade deficit and improves market access in Canada and Mexico for U.S. manufacturing, agriculture, and services.[8]  Additionally, the agreement contains provisions highlighting intellectual property rights and the expectations of the parties to protect them, specifically geographic indicators (GIs).[9]

So what is so important about GIs?  For many industries, like wine, GIs serve as a form of branding.  This branding helps consumers choose their wine by different factors, most commonly among them, the region from where the wine was produced.[10]  Geographic indicators, therefore, help consumers associate the product to create purchasing habits – such as  “Napa Valley” or “Walla Walla”. [11] A certain difficulty arises, however, when producers want to prevent counterfeiters from creating trademarks of their brand.  Section 2(a) of the Lanham Act prohibits the registration of GIs if the wine or spirit did not originate in the geographic place named in the trademark.[12]  Unfortunately, the Lanham Act only protects goods seeking trademark protection in the U.S.; therefore, if foreign countries do not have their own forms of geographic trademark protection, U.S. trademarks will not be protected abroad.[13]

Simply put, U.S. trademarks are protected in the U.S., but will aggressively compete with mislabeled goods abroad in countries that do not already have strong GI protections in effect.  The question becomes: how do we prevent counterfeiters from selling their products using U.S. origins?  Hopefully, the answer is simple: negotiate for stricter foreign trademark rules. [14]

The United States Trade Representative, an agency responsible for implementing U.S. trade policy, has outlined objectives in the upcoming NAFTA renegotiations that would prevent undermining the U.S. market and increase protections and recognition for GIs.[15][16]  However, because this is a renegotiation and not merely a negotiation, it would seem likely that the protection of geographical indicators for agricultural products, particularly wine, will be one of the more contentious issues that will need to be reconciled.[17]

The United States is a participant of several[18] other international agreements that include provisions to discourage the registration of inappropriate geographical indications.[19]  Through the NAFTA renegotiations, the U.S. seeks to persuade Mexico and Canada to provide reciprocal protections maintaining that certain products are actually produced in their respective locations. If these provisions are not included, producers in the wine and spirits industries are particularly at risk of having their products copied and further counterfeited when selling in these countries.[20]

Though it is impossible to predict what will occur in the NAFTA renegotiations, Canada has recently expanded their view on GI’s in a recent negotiation with the European Union, which can only give hope as to a better, more comprehensive, less contentious result for the future of U.S. trademarks.[21]  Hopefully, if these protections are implemented, we will not have to worry about wines going by other names.

[1] Geri L. Haight & Philip Catanzano, The Effects of Global Priority of Trademark Rights, 91 Mass. L. Rev. 18, 19 (2007).

[2] Id.

[3] See Laura Zanzig, The Perfect Pairing:  Protecting U.S. Geographical Indications with Sino-American Wine Registry, 88 Wash. L. Rev. 723 (2013).

[4] Id.

[5] Id.

[6] Summary of Objectives for NAFTA Renegotiation, United States Trade Rep. 10 (July 17, 2017), https://ustr.gov/sites/default/files/files/Press/Releases/NAFTAObjectives.pdf.

[7] Andréa Ford, A Brief History of NAFTA, Time (Dec. 30, 2008), http://content.time.com/time/nation/article/0,8599,1868997,00.html.

[8] Press Release, USTR Releases NAFTA Negotiation Objectives, Office of the United States Trade Representative, (July 2017), https://ustr.gov/about-us/policy-offices/press-office/press-releases/2017/july/ustr-releases-nafta-negotiating [hereafter NAFTA].

[9] North American Free Trade Agreement, Can.-Mex.-U.S., art. 17.12, Dec. 17, 1992, 32 I.L.M. 289, 605 (1993).

[10] See Robert Brauneis & Roger E. Schetcher, Geographic Trademarks and the Protection of Competitor Communication, 96 Trademark Rep. 782 (2010), http://www.academia.edu/34133964/Geographic_Trademarks_and_the_Protection_of_Competitor_Communication.

[11] Zanzig, supra note 3 at 724.

[12] Joseph C. Messina, Geographic Indicators as Marks, Law Offices of Joseph C. Messina (Sept. 20, 2017, 8:30PM), https://www.ny-trademark-lawyer.com/geographic-indicators-as-marks.html.

[13] Id.

[14] Summary of Objectives for NAFTA Renegotiation, United States Trade Rep. 10 (July 17, 2017), https://ustr.gov/sites/default/files/files/Press/Releases/NAFTAObjectives.pdf.

[15] Interagency Role, Office of the United States Trade Representative (last visited Oct. 8, 2017), https://ustr.gov/about-us/interagency-role.

[16] Summary of Objectives for NAFTA Renegotiation, United States Trade Rep. 10 (July 17, 2017), https://ustr.gov/sites/default/files/files/Press/Releases/NAFTAObjectives.pdf.

[17] Marsha S. Cadogan, The Coming Fight over Peaches and Mangoes in NAFTA Talks, Centre for International Governance Innovation (July 25, 2017), https://www.cigionline.org/articles/coming-fight-over-peaches-and-mangoes-nafta-talks.

[18] See NAFTA at art. 16; TRIPS: Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, 33 I.L.M. 1197 (1994); Trans-Pacific Partnership, Chapter Eighteen: Intellectual Property, Feb. 4, 2016, https://ustr.gov/trade-agreements/free-trade-agreements/trans-pacific-partnership/tpp-full-text (last visited Oct. 8, 2017).

[19] See generally Trans-Pacific Partnership, art. 18.32, Feb. 4, 2016, https://ustr.gov/trade-agreements/free-trade-agreements/trans-pacific-partnership/tpp-full-text (last visited Oct. 8, 2017).

[20] See Why Do Geographical Indications Need Protection? World Intell. Prop. Org., http://www.wipo.int/geo_indications/en/about.html#whyprotect (last visited Sept. 20, 2017); see Walla Walla valley wine cluster economic development project, summary: walla walla regional wine cluster-based econ. dev. projects (2007), http://www.wwcc.edu/CMS/index.php?id=1759.

[21] Explaining NAFTA 2.0 and Intellectual Property Rights, Centre for International Governance Innovation, (Sept. 19, 2017) https://www.cigionline.org/articles/explaining-nafta-20-and-intellectual-property-rights.

 

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