Use Tequila in Your Drink Name? You May Need to Use Another Name. U.S. Trademark Office Makes Tequila the Champagne of Agaves

Marie Gaytán’s “¡Tequila!: Distilling the Spirit of Mexico” is a grand exercise in contextualizing tequila historically, economically, and politically.  If you don’t start the book with an appreciation (and hankering) for tequila or mezcal as something that isn’t served with salt and lime, you will by the time you finish it.  The treatise renewed my interest in pulque as well, but Gaytán’s recounting and analysis of Mexico’s push to a full international protection of the specific use of “Tequila” as a regionally produced and controlled product (denominación de origen) has stood out in my mind as a particularly well orchestrated state-sponsored promotion of private industry.  From seeking and achieving UNESCO world heritage status for the region to Appellation of Origin protection under the Lisbon Agreement, you couldn’t find a better checklist for establishing and solidifying exclusive control of a name than you would by listing the steps the industry looking to protect Tequila with the Mexican government’s help.

While some of these state sponsored attempts at controlling “agave,” “tequila,” or “mezcal” have met with even the ire of small Mexican producers and succeeded in reducing state intervention in the right to control the names, the latest rounds (and possibly the most important given the statistics below) have involved achieving a certification mark through the USPTO.

Here’s why this is important – US protection allows an additional level of control an authority in what is by far the greatest export market, the United States:

That level of economic incentive led to the recent opinion by the USPTO in Luxco, Inc. v. Consejo Regulador del Tequila, A.C., dismissing the opposition brought to the registration of the mark “Tequila” as a “certification mark” for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.”  The specific certification statement from the application was:

The certification mark “Tequila”, as used by persons authorized by the Consejo Regulador del Tequila, A.C. (“CRT” or “Certifier”), certifies that (1) the goods are manufactured in Mexico from a specific variety of the blue agave plant grown in certain regions of Mexico as defined by Mexican law and standards; (2) the goods are manufactured in Mexico in compliance with Mexican law and standards including fermentation, distillation, aging, the percentage of blue agave sugars and physical- chemical specifications; and (3) the finished product is or contains within it the goods manufactured in accordance with (1) and (2) above.

The ruling means that the Consejo Regulador de Tequila will likely get registration and have the ability to police and control use of the word “Tequila” in the U.S.  The opinion is worth a read not just on account of the lengthy analysis of the arguments raised by Luxco in its opposition to the registration, but also because the TTAB took the time to draft a written opinion that contains some wonderful highlights for alcohol regulatory geeks (guilty).  Specifically:

Multiple citations not just to accepted dictionary definitions of “Tequila” but also to some bartending and drinks dictionaries that might be used in future alcohol registration efforts:

Dictionary definitions of the word Tequila, encyclopedia entries and other information sources.

• Allwords.com derived from Wiktionary.org

An alcoholic beverage from the fermented juice of the Central American century plant Agave tequilana.

• Cambridge English Dictionary (Cambridge.org/us)

A strong alcoholic drink originally from Mexico.

• Webster’s Revised Unabridged Dictionary (1913)

An intoxicating liquor made from the maguey in the district of Tequila, Mexico.

• Dictionary.com based on The Random House Dictionary (2015)

A strong liquor from Mexico, distilled from fermented mash of an agave.

• Webster’s Third New International Dictionary of the English Language Unabridged (1971)

A Mexican liquor made by redistilling mescal.

• New Oxford American Dictionary (2nd ed. 2005)

A Mexican liquor made from an agave.

• John Mariani, The Dictionary of American Food and Drink (1994)

tequila. A liquor distilled from the Central American blue agave … plant. The name comes from the Tequila district of Mexico, where the best tequila traditionally is made. The word first printed in English in 1849, and the Bureau of Alcohol, Tobacco and Firearms recognized tequila as a distinctive product of Mexico in September 1975.

• Dictionary of Wines and Spirits (1980)

Tequila . . . this is a Mexican drink, made by fermenting the cooked hearts or ‘pines’ of the Maguey, or Agave tequilano. …

• Wikipedia

Tequila . . . is a regional specific name for a distilled beverage made from the blue agave plant, primarily in the area surrounding the city of Tequila . . . northwest of Guadalajara, and in the highlands (Los Altos) of the north western Mexican state of Jalisco . . . . Mexican laws state that tequila can only be produced in the state of Jalisco and limited municipalities in the states of Guanajuato, Michoacán, Nayarit, and Tamaulipas.

• Encyclopaedia Britannica (2005)

tequila distilled liquor, usually clear in colour and unaged, that is made from the fermented juice of the Mexican agave plant, . . . The beverage, which was developed soon after the Spaniards introduced distillation to Mexico, is named for the town of Tequila in the Mexican state of Jalisco where it is produced.

• Webster’s Collegiate Encyclopedia (2010)

tequila Distilled liquor, usually clear in color and unaged, made from the fermented juice of the Mexican agave plant . . . [i]t was developed soon after the Spaniards brought distillation to Mexico, and is named from the town of Tequila.

And, an insightful history and recitation of the current state of the federal regulations and protecting and defining Tequila:

As of 1969, 27 C.F.R. § 5.21(h) provided that Tequila was a generic term.

(h) Class 8. Geographical designations.

(2) Only such geographical names for distilled spirits as the Administrator finds have by usage and common knowledge lost their geographical significance to such extent that they have become generic, shall be deemed to have become generic. The following are examples of distinctive types of distilled spirits with geographical names that have become generic: London dry gin, Geneva gin, Hollands gin, Tequila.

It is believed that the inclusion of the requirement concerning raw materials used and a requirement that the product possess the taste, aroma, and characteristics generally attributed to “Tequila” will afford sufficient protection to the consumer without limiting the product to a geographic origin.

However, in 1973, the U.S. Department of Treasury, Bureau of Alcohol, Tobacco and Firearms (“BATF,” now the Alcohol and Tobacco Tax and Trade Bureau (“TTB”)) recognized Tequila as a distinctive product of Mexico.

Explanation of Amendments

The purpose of these amendments is to change the official standard of identity for Tequila to make Tequila a distinctive product of Mexico. This will mean that after these amendments become effective, the term “Tequila” may not be used commercially in the United States to describe any product not manufactured in Mexico in compliance with the applicable laws of that country. This is identical to the protection already afforded to such terms as “Cognac”, “Scotch whiskey”, “Irish whiskey”, and “Canadian whiskey”.

See 27 C.F.R. § 5.22 which sets forth the “standards of identity” for distilled spirits, including Tequila.

(g) Class 7; Tequila. “Tequila” is an alcoholic distillate from a fermented mash derived principally from the Agave Tequilana Weber (“blue” variety), with or without additional fermentable substances, distilled in such a manner that the distillate possesses the taste, aroma, and characteristics generally attributed to Tequila and bottled at not less than 80° proof, and also includes mixtures solely of such distillates. Tequila is a distinctive product of Mexico, manufactured in Mexico in compliance with the laws of Mexico regulating the manufacture of Tequila for consumption in that country.

See also 27 C.F.R. § 5.42 which prohibits bottle labels from containing any false statements (e.g., labeling a product as Tequila that is not from Mexico).

• 5.42 Prohibited practices.

(a) Statements on labels. Bottles containing distilled spirits, or any labels on such bottles, or any individual covering, carton, or other container of such bottles used for sale at retail, or any written, printed, graphic, or other matter accompanying such bottles to the consumer shall not contain:

(1) Any statement that is false or untrue in any particular, or that, irrespective of falsity, directly, or by ambiguity, omission, or inference, or by the addition of irrelevant, scientific or technical matter, tends to create a misleading impression.

Thus, the TTB is charged with regulating the sale of distilled spirits in the United States. TTB has classified Tequila as a distinctive product of Mexico and it prohibits bottles from being labeled Tequila if the distilled spirit is not manufactured in Mexico in compliance with the laws of Mexico.

So there you have it.  The TTAB ruling means that Tequila is not a generic term and that the Consejo Regulador de Tequila can move forward with the registration for the certification mark thereby obtaining control over the use of the use of the word “Tequila” in the United States.