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A slicing opinion: Court cuts trademark registration for Gruyere cheese

Cantor Colburn August / September 2023 IP Newsletter

Cantor Colburn August / September 2023 IP Newsletter

Some Swiss and French cheesemakers recently ran into a brick wall when they attempted to obtain a trademark for the term GRUYERE. There was widespread agreement among the Trademark Trial and Appeal Board (TTAB) and two federal courts that the term is generic and therefore ineligible for trademark protection.

A ripe controversy

The case originated when two cheese consortiums that believe GRUYERE should be used to label only cheese produced in the Gruyere region of Switzerland and France sought to register the word in the United States as a certification mark. A certification mark is used to indicate to consumers that the related goods have been certified as meeting the standards set forth by the owner of the mark. The consortiums applied for a geographic certification to restrict the mark to cheeses made in Gruyere.

The U.S. Dairy Export Council and others opposed the certification on the grounds that the term was generic. After the TTAB agreed, the consortiums turned to a district court for relief. That court affirmed the TTAB, prompting an appeal to the U.S. Court of Appeals for the Fourth Circuit.

More than a shred of evidence

A generic term identifies a type of product, not the source of the product. A term that once was nongeneric can become generic when the public ceases to identify it with the particular source of a product or service and instead identifies it with a class or genus of products or services — regardless of source.

The parties agreed that the genus of the product was cheese, and the relevant public consisted of consumers who buy cheese. The question before the court was whether cheese consumers primarily understand GRUYERE as referring to a type of cheese or as indicating that the cheese was produced in the Gruyere region of Switzerland and France.

Evidence of the relevant public’s understanding of a term may come from direct consumer testimony, surveys, dictionary listings, newspapers and other publications. Here, the court found several types of evidence that supported a finding of genericness.

For example, the U.S. Food and Drug Administration has issued a “standard of identity” for “Gruyere” cheese. (See “Another hole in the case” below.) The standard lists requirements for cheese to be so labeled, but it doesn’t impose any geographic restrictions about where such cheese can be produced.

The court also cited evidence of imported and domestic gruyere cheese. It found the opposing parties clearly demonstrated that hundreds of thousands of pounds of cheese produced outside the Gruyere region are imported to and sold in the United States as GRUYERE. And one of the consortiums had even sent a cheese company selling Finland-produced cheese a letter asking it to stop labeling its cheese as “Imported All Natural GRUYERE Cheese.” It also wrote to multiple other companies to demand that they cease labeling their U.S.-produced cheese as gruyere.

The appellate court found additional support in media references to the term, including references to Wisconsin Gruyere Cheese, Austrian Alps Gruyere and Italian Gruyere. The opposers also introduced numerous press articles that referred to gruyere without mentioning production in Switzerland or France.

The court did, however, find that the trial court had erred in concluding that dictionary definitions supported a genericness finding. It noted that the parties had submitted conflicting dictionary definitions into the record, with some referring to production in Switzerland and/or France. Despite the error, the court declined to conclude that the dictionary evidence indicated that cheese consumers primarily understand the term to mean cheese produced in the Gruyere region.

The consortiums’ case crumbles

The Fourth Circuit ultimately found the evidence so “one-sided” that the opposers had to prevail. The evidence established that, when cheese consumers walk into retail stores and ask for GRUYERE, they regularly mean a type of cheese — not a cheese that was produced in the Gruyere region of Switzerland and France. Thus, their bid to obtain a trademark melted away.

Sidebar:   Another hole in the case

The plaintiffs in the Gruyere case (see main article) also challenged the trial court’s reliance on the U.S. Food and Drug Administration’s (FDA) standard of identity when determining whether the term GRUYERE was generic. They argued that a U.S. Supreme Court ruling established that an FDA standard of identity can’t preclude registration of the term as a certification mark. The plaintiffs pointed out that other cheese products, including Roquefort, are the subject of both an FDA standard and a certification mark.

The U.S. Court of Appeals for the Fourth Circuit agreed that the FDA standard for “Gruyere” cheese couldn’t, on its own, preclude registration. But the trial court, it said, didn’t hold that the standard prevented the term’s registration as a certification mark; rather, it found that the standard presented strong evidence that the term was generic. According to the appellate court, FDA standards of identity shouldn’t be used as conclusive evidence of genericness, but they aren’t irrelevant to the inquiry.

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