On 30 January, the decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (USPTO) concerning the case opposing ‘American Watch International’, a distributor and reseller (the distributor), and ‘Federation of the Swiss Watch Industry’ (the Federation) was published (Swiss Watch International Inc. V. Federation of the Swiss Watch Industry, T.T.A.B., No. 92046786, 1/30/12).
The Federation owns the certification marks “Swiss” and “Swiss made” since 2006. The distributor’s application for registration of the trademarks “Swiss Watch International” and “Swiss Legend” was rejected by the USPTO on the grounds that it would create confusion with the Federation’s marks. After this rejection, the distributor asked for the cancellation of the Federation’s certification marks, on the ground -among others – that the Federation did not control the use of its marks and that the names have become generic in the United States and, as a result, not entitled anymore to be protected in this country.
The Board dismissed the petition for cancellation. It ruled that the certification marks did not become generic, despite the use of some unregistered trademarks by third parties, because the Federation’s extensive worldwide monitoring and enforcement system was adequate and because of the actions undertaken by the Federation to avoid the use of unregistered trademarks. Moreover, the Board said that the American public perceives the certification marks ‘Swiss’ and ‘Swiss Made’ as identifying the origin in which watches are manufactured. As a result, such marks cannot be deemed generic in the US.
This case (both the USPTO rejection of the marks “Swiss Watch International” and “Swiss Legend” and the Board’s dismissal of the petition for cancellation of the certification marks “Swiss” and “Swiss Made”) shows an encouraging evolution in the practice of the USPTO with regard to marks certifying a geographical origin. In particular, we are glad to note that the USPTO approach in this case follows one of the recommendation contained in the oriGIn Manual on American GIs, namely a more proactive role of the USPTO in rejecting application for marks that include registered certification marks (see page 39 of our Manual)!
The opinion of the Board can be found at: