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Posted by James Juo | Mar 06, 2023 | 0 Comments

A geographic certification mark may feature a recognized geographic term that identifies the relevant geographic region, such as ROQUEFORT for cheese.  Cmty of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 497, 133 USPQ 633, 635 (2d Cir. 1962). “[C]ertification marks, including indications of regional origin” are registrable “in the same manner and with the same effect as are trademarks.” 15 U.S.C. § 1054.

Gruyère Cheese

Interprofession du Gruyère (“IDG”), a Swiss consortium, and Syndicat Interprofessionel du Gruyère (“SIG”), a French consortium, together believe that the term “gruyere” should only be used to label cheese that is produced in the Gruyère region of Switzerland and France.

The Trademark Trial and Appeal Board (“TTAB”) held that “GRUYERE” could not be registered as a certification mark because it is generic. The Consortiums appealed to the district court in Virginia which granted summary judgment on the same grounds. In turn, an appeal was taken to the Fourth Circuit which noted that, “[l]ike a fine cheese, this case has matured and is ripe for our review.” Interprofession du Gruyère v. U.S. Dairy Export Council, No. 22-1041, 61 F.4th 407 (4th Cir. Mar. 3, 2023).

FDA Standard of Identity

Switzerland and France have approved “Gruyère” as a protected designation of origin (“PDO”) and a protected geographical indication (“PGI”). Although the Food and Drug Administration (“FDA”) has issued a standard of identity for “Gruyere cheese” in 21 C.F.R. § 133.149(a), “the FDA standard of identity does not impose any geographic restrictions as to where gruyere-labeled cheese can be produced.”

As a result, cheese—regardless of its location of production—has been labeled and sold as gruyere in America for decades.

Furthermore, the Court held that “the FDA standard of identity for ‘Gruyere cheese,' which does not link the production of the cheese to any geographic region, is evidence that the term “GRUYERE” is generic.” While the FDA standard does not preclude registration of the “GRUYERE” certification mark, the FDA's standard of identity nonetheless presents strong evidence that “gruyere” is a generic term. Thus, while FDA standards of identity should not be used as conclusive evidence of genericness, they may still be relevant to the genericness inquiry.

The Court distinguished other examples of certification marks for cheeses that also were the subject of an FDA standard. For example, the FDA standard of identity for Roquefort cheese refers to “Roquefort cheese, sheep's milk blue-mold, and blue-mold cheese from sheep's milk.” 21 C.F.R. § 133.184. And the standard of identity for Reggiano cheese has the dual title “Parmesan and reggiano cheese.” 21 C.F.R. § 133.165.

Therefore, even though Roquefort and Reggiano cheese may not be generic, their respective FDA standards of identity prescribe production and ingredient requirements for alternative (and, ostensibly, generic) names for those cheeses. It thus makes sense why an FDA standard of identity—which does not require cheese to be produced in any location—exists for those types of cheese which have both generic and non-generic labels. By contrast, the FDA standard of identity for “Gruyere cheese” does not recognize alternative names for the cheese, suggesting that consumers understand the “Gruyere cheese” label as indicating a type of cheese, rather than as indicating that the cheese comes from a particular source.

USDA Import Data

The Court also found that while the record evidence of the USDA import data “clearly demonstrated that hundreds of thousands of pounds of cheese produced outside the Gruyère region of Switzerland and France is imported into the United States and sold in the United States labeled as GRUYERE,” even if it was unclear whether it was the majority of Gruyere cheese imported into the US.

[W]hile the district court made certain improper inferences in its analysis, the record nevertheless contains evidence that is “so one-sided” that there is no genuine issue as to any material fact and Opposers must prevail as a matter of law. Retail Servs., Inc., 364 F.3d at 542. The FDA standard of identity, the pervasive sales of non-Swiss and nonFrench cheese labeled as gruyere in the United States, and the common usage of gruyere “establish[] that when purchasers walk into retail stores and ask for [gruyere], they regularly mean” a type of cheese, and not a cheese that was produced in the Gruyère region of Switzerland and France. Glover, 74 F.3d at 59.

The Court also noted several examples of American use of “gruyere” for cheese (although the specific amounts of pounds sold were redacted in the public decision).

No Survey Evidence

Also, although survey evidence has become “almost de rigueur in litigation over genericness,” Convenient Food Mart, Inc. v. 6-Twelve Convenient Mart, Inc., 690 F. Supp. 1457, 1461 (D. Md. 1988) (cleaned up), such “direct evidence” of consumer perception was not necessary to support a genericness challenge to trademarks or certification marks, Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358, 1370 (Fed. Cir. 2018). The Court found that the other competent evidence of record conclusively established the public's understanding of the mark.

The Court concluded that “cheese consumers in the United States understand “GRUYERE” to refer to a type of cheese, which renders the term generic.”

Thomas P. Howard, LLC litigates nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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