The Trademark Reporter®
Global Trademark Resources

July-August, 2010 Vol. 100 No. 4 Back to TMR Main Page
Geographical Indications and Dilution: Reinterpreting "Distinctiveness" Under the Lanham Act
The Federal Trademark Dilution Act (“FTDA”), as amended in
2006, protects “a famous mark that is distinctive, inherently
or through acquired distinctiveness.” Although the FTDA includes
an explanation of the term “famous,” it does not define the term
“distinctive.” The term “distinctive,” however, is used throughout
the federal trademark statute (Lanham Act) of which the FTDA is
a part. Indeed, as one leading commentator has observed, “[t]he
term ‘distinctive’ is a key term of art in trademark law.” 
Specifically, “distinctive,” in the trademark sense, traditionally has
meant the ability of a mark to distinguish the user’s goods or
services from those offered by others—that is, to identify the goods
or services as originating from “one source.”

Geographical indications do function to distinguish goods
originating in a specified location from those offered by others—
namely, goods originating elsewhere. But geographical indications
do not necessarily identify a single source of goods. Indeed,
more typically, geographical indications are used by multiple
producers of goods originating in the specified location. Thus,
geographical indications are not necessarily “distinctive” in the
traditional trademark sense. Does this mean they are not entitled
to the protections afforded to other marks under the FTDA? 

No court has yet addressed this question, nor has the
Trademark Trial and Appeal Board (“TTAB”) of the United States
Patent and Trademark Office (“PTO”). An answer was at least
suggested, however, in a 2006 TTAB decision concerning the
protection of geographical indications under the parallel
likelihood-of-confusion provisions of the Lanham Act.6 In that
decision, the TTAB put forward a novel conception of
distinctiveness for geographical indications, which this article
terms “geographical distinctiveness.” This concept is akin to, but
different from, traditional trademark distinctiveness. This article
proposes that geographical distinctiveness should be regarded as a
sufficient basis to trigger protection under the dilution provisions
of the Lanham Act.