“Tequila” spurs standoff over trademark registration

On Behalf of | Mar 16, 2017 | Intellectual Property Litigation |

Is the word “tequila” a generic term? Or can it be a certification trademark, as is the word “champagne,” that designates an exclusive geographic origin or, in the case of “tequila,” an alcoholic beverage distilled only from Mexico’s native blue agave plant?” That was the question brought before the Trademark Trial and Appeal Board (TTAB).

Consejo Regulador del Tequila (CRT) applied for the certification mark for “tequila” in 2003. In 2009, an opposition to this registration was filed by Luxco Inc., a St. Louis-based distillery, on the grounds that “tequila” should remain a generic term.

CRT is the only entity to be accredited and approved by the Mexican government to ensure the authenticity, origin, quality and safety of tequila. As part of fulfilling this role, CRT sought to certify “tequila” as a certification mark for “spirits distilled from the blue tequilana weber variety of agave plant.”

The tequila imported by Luxco has already been certified by CRT as being authentic and in accordance with Mexican law. The St. Louis-based company still opposes “tequila” receiving a certification mark, however, claiming that it is a generic term for a type of liquor, not restricted to a certain plant or geographic origin.

During their examination of this case, the TTAB closely reviewed U.S. trademark laws as well as gauged public perception of the term “tequila.” The board found that Luxco failed to prove “tequila” is a generic term, citing that the majority of consumers perceive tequila as a Mexican alcoholic beverage and that advertising for tequila brands tends to have a “Mexican theme.”

The TTAB also stated that “because the Mexican government authorized CRT to apply to register the certification mark in the United States as the entity that verifies compliance with the Mexican standard for tequila, CRT has the right and authority to control the use of the term as a certification mark in the United States and was exercising legitimate control over use of the term. “