Defending Common Food Names in the United States and Abroad

Most Americans are well aware that many well-known food products, such as feta, parmesan, and prosciutto, trace their origins to Europe. What many might not realize is the quiet battle being waged by the European Union (EU) to protect these names, as well as commonly used names of wines, by granting only regional manufacturers the exclusive rights to use them. This is done by approving “geographical indications” (GIs), or indications that identify a good as originating from a specific region or territory, for certain food products. For example, since the EU approved “feta” as a GI for use throughout Greece, only cheese manufactured in Greece can be called “feta” throughout the EU. Another example is “parmesan”: in EU countries, cheese can only legally be called “parmesan” if it is produced in the Parma region of Italy.

The EU has been actively working to control the international market for many such common names by including protective terms for GIs in international trade agreements. For example, under the EU’s free trade agreement with South Korea, non-European cheese producers can no longer sell asiago, feta, fontina or gorgonzola in South Korea under those names. Nevertheless, the U.S. has taken a stand to protect such common names by, for instance, including provisions protecting the rights of generic name users in the new North American trade agreement: the U.S.-Mexico-Canada Agreement (USMCA).

The USMCA establishes a non-exhaustive list of commonly used cheese names that may not be restricted moving forward, including “mozzarella”, “cheddar” and “provolone”. The USMCA also sets up parameters to guide administrative procedures for registering protected GIs. For example, under the USMCA, a country allowing for the registration of GIs must provide a reasonable period of time during which a party can oppose the application. The USMCA also requires countries to allow for the refusal of a GI registration if the GI is: likely to cause confusion with a pending trademark; likely to cause confusion with a pre-existing trademark; or a term customary in common language as the common name for the relevant good. Moreover, the USMCA establishes guidelines for determining whether a term is “customary in common language as the common name for the relevant good.” Additionally, the USMCA does not allow GI protection of an individual component of a multi-component protected term if the individual component is a common name for the good. Thus, while “Mozzarella di Bufala Campana” or “Prosciutto di Parma” may qualify for GI protection, “mozzarella” or “prosciutto” would not.

Additionally, the United States Patent and Trademark Office (USPTO) has adopted guidelines for its trademark examiners to ensure better protection of generic names and terms used in the food and meat industry that may also relate to a European city or region (such as Cheddar, Bologna and Brie). In trade negotiations with China, the U.S. is working to protect and safeguard common food names from restrictive use. Such protections in various trade agreements between the U.S. and other countries will help food manufacturers and winemakers in the U.S. and abroad.

While the usage of common names such as mozzarella, feta and fontina seems to be safe in the U.S. for the time being, international producers and distributors of food products must exercise caution when marketing such products outside of the U.S. Talking to an IP professional is the only way to ensure that your product names are viable in the international marketplace.

Written By:
Attorney Laina P. Stuebner