Mexico’s Tequila board moves to stop Tequila-like marks – a good reminder that it’s agave if it’s not certified.

Back in February we reported that a years’ long struggle with Luxco ended favorably for the Consejo Regulador del Tequila with the USPTO finding in its favor and registering Tequila as a certification mark. The opposition that had ended in favor of the industry group was a concerted effort by others to have the USPTO recognize Tequila as a generic type of liquor and not a statement as to the place of manufacturing/origin.

The Consejo Regulador del Tequila, Mexico’s Tequila industry group is diligently protecting its new certification mark and is looking to stop two marks it views as Tequila derivatives from registering.

One proceeding, against the mark “TEQUILUSA” claims that mark is “highly similar” to the certification mark TEQUILA and is used in connection with goods closely related to Tequila which is likely to cause confusion with the certification mark. Noting that the mark TEQUILA requires that the goods bearing the mark be manufactured in Mexico in accordance with Mexican law, the opposition argues that the goods “with which the mark is or will be used” is something the applicant for TEQUILUSA hasn’t shown – asserting that the prefix TEQUIL- creates an immediate association with the certification mark.

In another proceeding, over TEQUONIAC, the Consejo Regulador del Tequila similarly argues an implied association with TEQUILA and notes that the applicant does not have offices or factories in Mexico.

While the notion that an applicant doesn’t have offices or factories in Mexico doesn’t carry the argument as it doesn’t address the products on which the mark will be used, the argument of association without authority is really what they’re looking to convince the USPTO of in order to keep the mark from registering.

Importantly for manufacturers looking to label something TEQUILA and not simply AGAVE, the briefs both reference the TTB regulation 27 CFR 5.42 prohibiting labels on spirits from containing false or untrue statements or those which create misleading impressions. Distillers and importers should be aware of the 2006 agreement codified and enforced by the TTB which emplaces standards of identity for Tequila and much like other spirits, wines and even beers of a particular origin, requires certification prior to importation.

Also, of note to those looking to call something Tequila is the newly enacted USMCA which protects both Tequila and Mezcal as products, much like Cognac and Champagne which must be made and properly authenticated.

Perhaps the branding efforts of those looking to accomplish “tequila” themed or associated drinks would be better spend engaging and creating awareness of “AGAVE” as a designation and class of spirits in which not all brands are created equal rather than looking to piggyback on the reputation and clout of Tequila. Unless, of course, someone gets that name too.

For those looking for a little more information on the subject, here is an abbreviated account of the current state of the federal regulations 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, while the USPTO appears to be the first line of defense for the newly granted certification mark, 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.