Tequila or Not Tequila: A New Certification Mark is Born

Ironically, the same week that the president of Mexico declined to meet with the president of a formerly friendly Tequila or Not Tequila: A New Certification Mark is Born by Mark Kaufmannation because of various perceived (and perhaps actual) insults, the United States Trademark Trial and Appeal Board (TTAB) granted a decision in favor of a Mexican non-profit association of distilleries. The Consejo Regulador del Tequila was granted a certification mark for the appellation ‘Tequila.’ According to the U.S. Trademark statute, a “certification mark”

means any word, name, symbol, or device, or any combination thereof to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services ….

So the TTAB determined that, despite its most unfortunate location South of the Soon to Be Very Tall Border,  the Consejo Regulador del Tequila can control the use of the word ‘Tequila’ within the United States.

Opposing the Consejo Regulador del Tequila was the American distiller Luxco, who, among other things, sells Tequila in mixed drinks with sweet flavored juices. Luxco’s argument was that tequila (necessarily a lowercase T) is a generic spirit.

Both sides offered to the Board various surveys in an effort to gauge whether people associated the word ‘Tequila’ with Mexico. The TTAB found that the surveys of the applicant (the association of Tequila manufacturers) were much more persuasive and accurate. It found that a significant percentage, if not majority, of relevant consumers don’t think that Tequila is a generic term for a hard liquor, but rather a term used for a drink from the Blue Agave plant, and most importantly, grown and distilled in Mexico. So while Luxco can claim what it wants, the majority of people in the United States who purchase Tequila associate it with Mexico.

Certification marks are fairly common for alcoholic beverages, as some consumers may know. For example:

  • Cognac: A variety of brandy produced near the town of Cognac, France
  • Kentucky Whiskey or Bourbon: Must be made in the United States, usually the South
  • Champagne: Sparkling wine made in the Champagne region of France, adhering to strict cultivation and fermentation standards
  • Prosecco: This family of wine originates from the Prosecco region of Italy, with certification marks on the varieties produced in the towns of Treviso and Asolo.

So, from the USPTO’s perspective, quality control—and the right to use the name—of this particular spirit is now in control of an association in Mexico. Thus, at least in the field of intellectual property, a foreign power has been granted a measure of respect.  

Mark Kaufman

Mark S. Kaufman
Kaufman & Kahn
kaufman@kaufmankahn.com

747 Third Avenue
32nd Floor
New York, NY 10017
Tel. (212) 293-5556
Fax. (212) 355-5009

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