Geographic origin certification marks withstand cancellation claims

United States of America

In Swiss Watch International Inc v Federation of the Swiss Watch Industry (Cancellation No 92046786, January 30 2012), the Trademark Trial and Appeal Board (TTAB) has outlined the requirements for geographical certification marks in the context of assessing a cancellation action brought against the registered certification marks SWISS and SWISS MADE. Both certification registrations covered watches and their component parts and fittings. 

The owner of the registrations, the Federation of the Swiss Watch Industry, is an unincorporated association, with an estimated 500 members who are generally headquartered in Switzerland and involved in making and selling watches. The federation’s certification marks identify that:

  • the watch movement is made in Switzerland;
  • the watch is cased in Switzerland; and
  • the final inspection took place in Switzerland. 

Tasked by the Swiss government to combat infringement of geographical indications for watches and timepieces, the federation registered SWISS and SWISS MADE as certification marks. 

The petitioner, Swiss Watch International Inc, an American company that distributes and sells watches, owns a registration covering the mark SWISS WATCH INTERNATIONAL and an application to register the designation SWISS LEGEND for, among other goods, watches. The company asserted its standing in the proceeding based on its registration and on its pending application, on which it received an office action because of the federation’s certification marks for SWISS and SWISS MADE. The petitioner asserted a number of separate grounds for cancellation, including that:

  • the certification marks were in use for purposes other than certification;
  • there was insufficient control over third-party uses;
  • the certification marks are generic;
  • the certification marks discriminate; and
  • the SWISS MADE certification registration was obtained based on fraud. 

On all grounds, the TTAB found that the petitioner had failed to meet its burden to demonstrate that the certification marks should be found invalid and cancelled. 

As an initial matter, the TTAB noted that, in a cancellation proceeding involving a certification registration, the petitioner bears the same burden as in a cancellation against a registration that is not a certification mark.  After considering various evidentiary objections, including the striking of statements by third parties in telephone conversations as hearsay, the TTAB did take judicial notice of dictionary definitions of the word 'Swiss' and specifically acknowledged the admissibility of web pages authenticated only by declaration, without testimony of any witness who accessed and printed out the web pages or authored the web pages.

The TTAB noted that, so long as the declaration provided the date the pages were accessed and printed, and otherwise authenticated the web pages, the web pages would be admissible for non-hearsay use. In this proceeding, the TTAB relied on web pages not for the truth of the statements asserted in them, but to establish only that certain statements had been made and were available to consumers. Thus, the TTAB importantly reaffirmed its rule and prior case law detailing the admissibility of internet evidence for this limited purpose.

Based largely on the admitted web pages and witness testimony, the TTAB examined each of the petitioner’s claims of invalidity. As to the claim that the registered marks were used for purposes other than certification, the TTAB noted the third party marks that the petitioner pointed to either used a design element or other words in addition to SWISS or SWISS MADE. Under these circumstances, the uses did not demonstrate third-party use of “identical or virtually identical” marks, which is necessary for a finding of invalidity. Because the third party marks identified were not identical or virtually identical, they could not form the grounds for cancellation of the certification marks.  

As to the petitioner’s allegations of the registrant’s lack of control over the uses of SWISS and SWISS MADE, the TTAB relied on the testimony of the federation setting forth its efforts to control use of its certification marks, which included monitoring of filings, filing oppositions and inspection of watches. The TTAB held that “absolute control” is not required, acknowledging that absolute control is impractical. The TTAB articulated the test instead of “adequate control”. Under this test, the TTAB found that third-party references, for example, to parts being Swiss made did not defeat the certification registrations. The certification marks were not misleading, since they continued to function as an indication of geographic origin despite the showing of some non-conforming third-party references. With similar reasoning, the TTAB rejected the genericness claim. The TTAB noted the association by consumers between watches and the marks is strong and not generic.

The TTAB also rejected the claims of discrimination and fraud. Noting that, while the petitioner may not like the certification standard that the federation developed, that was not enough to invalidate the marks as discriminatory. Further, the TTAB summarily found the fraud claim lacking in merit. The federation’s document submissions for the SWISS MADE application alone did not meet the high threshold required to establish fraud. Moreover, the TTAB rejected the notion that geographic certification marks are limited to agricultural products. The TTAB noted the geographic origin certification marks could and do apply to manufactured products such as the watches covered by the registrant’s marks, particularly where the evidence established a strong association by consumers of the goods with the certification marks. 

This decision reinforces the utility of certification marks for geographical indications and the importance of having effective policies and procedures in place for enforcing certification rights against non-conforming third-party uses.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco

Unlock unlimited access to all WTR content