I have a general comment on Examination Guide 13 which I am not sure fits any of the specific questions you have. Essentially I wonder whether, to the extent that the certification mark system is part of the implementation of the Article 22 TRIPS obligations, the US is in compliance with those obligations.
This comment does not address whether trademarks can or cannot properly implement Article 22 commitments. Rather it questions whether certification marks as applied by examiners using Examination Guide 13 actually implements the WTO commitment.
Article 22.1 defines geographical indications as:
Geographical indications are, for the purposes of this Agreement, 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 its geographical origin.
This definition is not the same as other definitions such as that found in the Lisbon Agreement. And there is room for discussion as to whether this definition is sufficient to capture the core concept of geographical indications. However, it is the definition that the United States has agreed to apply in its domestic law as part of its adherence to the World Trade Organisation.
There are two aspects of this definition that may cause problems: a) the idea of an indication and b) the concept of ‘essentially attributable to’.
The term indication is something more than the geographic term Champagne or the non-geographic term Feta. In the fashion of the WTO’s Appellate Body to get the full meaning of the work ‘indication’ it is necessary to go to standard dictionaries. The Oxford English Dictionary provides the following definition:
Indication. The action or an instance of indicating, something that indicates or suggests; a sign; a symptom; a hint.
There does not appear to be any limitation on the concept. It is anything that indicates or serves to suggest something.
In this context it can be asked whether the exclusion of certain symbols etc. set out in Section 2 of the US Trademark Act can be justified. The TRIPs Agreement, unlike the GATT with its Article XX or the GATS with its Article XIV, does not have a general exception clause and there is no specific general-exception in relation to Geographical Indications. It is not clear that this exclusion could come within the terms of TRIPs Article 8 which appears to address public health rather than public policy. Nor does there seem to be a provision in TRIPs Article 24 which does provide for some exemptions, to address this issue.
‘Essentially attributable to’
The requirement under Article 22 is that the WTO member must protect indications which identify a good as originating in a place where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
Where in the USPTO’s Examination Guide is there a requirement that the examiner determine that the product characteristics are essentially due to the geographical origin?
It is clear that the examiner must determine, when examining the geographic region or area, if the region is famous for the product to which the certification mark will apply. And that determination will trigger different consequences. But this examination is not, even on its own terms, an examination of the link between the product qualities and origin. At best it is an examination of the existence of a fame or reputation. But that is something very different from examining a link between the quality (that might or might not give rise to the fame) and the product.
In addition, the examination of fame could at best only be associated with reputation while Article 22 provides that the examination must include qualities or other characteristics beyond reputation. In fact, for the proper interpretation of Article 22, reputation goes without saying. The question is whether the reputation is based on qualities or characteristics which are essentially attributable to the origin. It can, of course, be asked how the law should provide for determining if there is or there is not a link. But that is a separate question. As far as the Examination Guide provides, the examiner does not have to consider this matter.
It is not clear that there are provisions of the Trademark Act which address these issues and thus on that basis it is not possible to determine whether the US does not comply with its Article 22 obligations ‘as such’. However what does seem clear is in individual applications the US does not carry out an analysis and thus could be considered not to be applying WTO law.