60. The representative of the United States said that the views of his delegation on the proposals on the table were well known as was its willingness to engage in a practical, technical discussion that might assist in moving the process forward. His delegation welcomed questions 1 and 2 of the previous Chair's set of four questions that were intended as an initial step to encourage technical discussion of how Members would implement the mandate for a notification and registration system for geographical indications for wine and spirits.
61. While his delegation had a common interest in understanding the status quo in each Member, it did not share any assumption that might underlie the first sub-question that all Members necessarily had a legal obligation to take some action or otherwise act in some specific manner. Furthermore, his delegation could not agree with any underlying assumption that protection for geographical indications had to be through a "sui generis" system, as the TRIPS Agreement explicitly recognized that that might not be the case. He therefore suggested that in future meetings it might be best to rephrase that inquiry to be more precise and avoid any such implication. As those questions had only been circulated the previous week, his delegation needed more time for reflection and consultation with capital. Accordingly, while making a similar disclaimer as that expressed by the New Zealand delegation, his delegation was pleased to share some preliminary thoughts.
62. With respect to the first sub-question he said that the phrase "decisions regarding protection of geographical indications and trademarks" was quite a broad concept and could encompass a number of situations. He recalled that in the United States geographical indications were protected through several mechanisms, including the trademark system, but at this meeting he would look more closely at more basic situations that might be relevant for purposes of the negotiations.
63. The United States Patent and Trademark Office (USPTO) was responsible for issuing registrations for trademarks, collective marks and certification marks, including marks containing or consisting of a geographic element. Where a foreign consortium applied for a registration of its foreign geographical indication as a US certification mark at the USPTO, in order for a certification mark to be registered it must meet the requirements of US law and the relevant rules of practice. In making decisions on registrability, an examining attorney at the USPTO was guided by the trademark statute, the case law interpreting the statute, the USPTO practice manual, and examination guides. With respect to the registrability of a certification mark, the USPTO examiner ultimately had to evaluate a number of aspects relating to the mark, including whether the mark was generic, i.e. whether it was the customary term for the product, or whether the product originated from the place indicated in the certification mark, or whether the mark or something very similar was already registered as a trademark.
64. In making that evaluation, the examining attorneys would use various sources of information, including the USPTO Trademark Search Database, publicly available online sources, and other databases. Examining attorneys also generally searched for what was described in their manual as "relevant evidence", that is to say, evidence, or lack thereof, of how the term was or was not used by industry as well as how it was perceived by the US consumer. Such evidence could be found in newspaper or magazine articles, Internet websites, dictionaries, gazettes, and similar sources. Any relevant evidence provided by the applicant was also considered when making a determination of registrability. In a manner similar to New Zealand, the USPTO would weigh all relevant information, without ascribing any prescribed or predetermined weight.
65. The USPTO was required to properly consider evidence offered by the applicant to rebut a refusal to grant registration for a geographic name. To the extent that an applicant believed the examining attorney had failed to properly consider such evidence, the applicant could appeal to the USPTO's Trademark Trial and Appeal Board, and then either to a US district court or to the Court of Appeals for the Federal Circuit. A third party could also oppose a registration as not having met the appropriate statutory requirements before the Board and appeal that decision to a court.
66. Addressing the second part of the first sub-question, he said it would make sense for new relevant resources to be automatically considered as part of the examining attorney's evidentiary search. Any new, noteworthy resources would be flagged in their examination guides. It appeared that the general outline of the US procedures were not so different from those that had been described by other delegations. In that context, therefore, the GI register for wines and spirits in the form outlined in the joint proposal (TN/IP/W/10/Rev.2) would be a helpful innovation as it would add a direct, centralized resource in a WTO language that would be updatable, provide a measure of reliability and be broadly available to Members. He added that that was a resource which was not currently available.
67. In concluding, he said that previous interventions had been extremely useful and that he hoped to see the minutes to be able to ascertain the extent of common relevance as well as divergent viewpoints. Finally, having described one of the situations presented in the US legal context, and having heard similar narratives from other Members, he suggested that the sub-questions in the first sub-question might be rephrased and further broken down to elicit more comprehensive and helpful information from Members.
68. For that purpose he suggested the following six sub-questions:
(a) When considering whether a geographical indication qualifies for protection as a trademark or under another system of protection, what sources of information did the relevant national authorities take into account?
(b) Was there any record of the information that was considered or taken into account in making a decision?
(c) If so, was the information available to the public in the examination files?
(d) When was it possible for a third party to provide information that was not taken into account?
(e) Could this information be the basis for having a decision changed?
(f) Did Members have measures in place to ensure that responsible officials or examiners took into account relevant information? What were those measures?
