National Tequila Day is celebrated on Monday, July 24. Tequila is made with the distilled extract of the blue agave plant, which grows in and around the city of Tequila and other parts of the state of Jalisco, Mexico. Although agave has been used for the manufacture of fermented beverages since pre-Columbian times, the ancestor of what we now know as “tequila” was reportedly first made in the 16th century by Spanish conquistadors who had run out of imported brandy (which is why they originally called it “Mezcal Brandy”).
As far as we can tell, National Tequila Day is primarily an excuse for the promotion of two-for-one margarita deals. However, tequila manufacturers may be engaging in a little extra celebration this year because, in January 2017, a trade association of Mexican companies finally won their battle to register TEQUILA as a certification mark in the United States.
A certification mark is a mark used by a person other than its owner to identify goods or services with particular characteristics. Unlike trademarks, which identify for consumers the specific manufacturer or supply source of goods, certification marks let consumers know that goods come from a particular geographic region (e.g., IDAHO POTATOES); or that they contain a certain type of material (e.g., GENUINE PORCELAIN); or that they were made according to certain labor standards (e.g., UFCW UNION MADE).
The owner of a certification mark, usually a trade organization or similar commercial entity, has an obligation to monitor and control the users of the certification mark in order to ensure that the appropriate standards are being followed. For example, the recently-registered NAPA VALLEY wine certification mark is owned by Napa Valley Vintners, a non-profit trade association of over 500 California wine makers. Certification marks (along with collective marks) are generally considered to be the appropriate mechanism in U.S. trademark law for the protection of what international treaties refer to as “Geographical Indications,” that is, signs or symbols used to denote the geographical origin of a product, as well as the product qualities attributable to that origin.
Hecho en Mexico
In 2003, Consejo Regulador del Tequila, A.C., a trade organization authorized by the Mexican government to regulate tequila, applied to register the TEQUILA certification mark in the United States. According to the application, use of the mark would be limited to the manufacturers of distilled spirits made in Mexico from a specific variety of agave (the “Tequilana Weber, blue variety”) and in accordance with local manufacturing standards. Among the many other proposed requirements, all certified TEQUILA products must contain the words “Hecho en Mexico” (“Made in Mexico”).
The registration was opposed by U.S. liquor importer Luxco, which argued that the word “tequila” had become generic for a type of liquor. Luxco pointed to the prosecution history of other beverage trademark applications in which the United States Patent and Trademark Office had required applicants to disclaim the word “tequila” on the ground that it had become generic. Luxco also pointed to many third party uses of the term “tequila” to generically identify a class of alcoholic beverages. Luxco analogized tequila to vodka, which is associated with Russia generally, but not exclusively, because it is known to be made in other countries as well (Poland, Sweden, United States, etc.).
However, the Trademark Trial and Appeal Board also heard plenty of evidence that the term “tequila” was not generic, but rather was recognized as referring to a distinctive product of Mexico. This evidence included U.S. alcohol labeling regulations that prohibit the use of the term “tequila” by non-Mexican manufacturers; dictionary definitions referring to specific geographic and botanical origins; and a survey showing that 54% of consumers believed that the word “tequila” indicated a beverage made in Mexico.
Because the burden was on Luxco to prove genericness, and the record contained evidence going both ways, the opposition was dismissed. Luxco v. Consequo Regulador del Tequila, A.C., Opposition No. 91190827 (Trademark Trial & App. Bd., Jan. 23, 2017). Luxco has appealed, seeking de novo review in the Eastern District of Virginia, and that appeal is still pending. In the meantime, the registration certificate for the TEQUILA certification mark issued a few weeks ago, on June 20, 2017, just in time for a little extra National Tequila Day celebration.