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Trademark Trial and Appeal Board, U.S. Patent and Trademark Office [2020]: Int'l Dairy Foods Ass'n v Interprofession du Gruyère, 2020 USPQ2d 10892

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

 

Session 3: Emerging Issues in Geographical Indications

 

Trademark Trial and Appeal Board, U.S. Patent and Trademark Office [2020]: Int'l Dairy Foods Ass'n v Interprofession du Gruyère, 2020 USPQ2d 10892

 

Date of judgment: August 5, 2020

Issuing authority: Trademark Trial and Appeal Board

Level of the issuing authority: First Instance

Type of procedure: Administrative

Subject matter: Geographical Indications, Trademarks

Plaintiffs/Opposers: International Dairy Foods Association, U.S. Dairy Export Council, Atalanta Corporation and Intercibus Inc. (consolidation of 4 opposition proceedings with 4 plaintiffs)

Defendants/Applicants: Interprofession du Gruyère (Swiss registered association) and Syndicat Interprofessionnel du Gruyère (French syndicat interprofessionnen( �/span>

Keywords: Geographical indications, Certification trademarks, Genericness

 

Basic facts: In 2001, Switzerland recognized “Gruyère” as a Protected Designation of Origin (PDO).  The European Union (EU) recognized the PDO in 2011, and in 2012, France protected “Gruyère” as a Protected Geographical Indication (PGI).

 

In 2015, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère (hereinafter Applicants) filed an application with the United States Patent and Trademark Office (USPTO) seeking registration of GRUYERE as a mark to certify cheese originating from the Gruyère region of Switzerland and France.  The USPTO approved and published the certification mark application.

 

Four U.S. dairy entities opposed registration of the mark on the grounds that (i) gruyere is a generic term for a type of cheese, and (ii) Applicants lacked legitimate control over use of the applied-for certification mark.

 

The Trademark Trial and Appeal Board (TTAB) analyzed the genericness claim under a two-part test that considers the “genus” of goods identified in an application and whether the relevant public understands the designation to refer to the genus of goods.  The TTAB found the genus of the goods is cheese and that the relevant public is composed of members of the general public who purchase or consume cheese.  The TTAB then examined the evidence regarding the consuming public’s perception.  The evidence included dictionary definitions of the term “gruyere” submitted by both sides; examples of use of “gruyere” in the press, the Internet, reference materials, and trade and merchant publications; data showing the source of cheese labeled as “gruyere” imported into the U.S. from sources outside Switzerland and France; production and sales data involving cheese labeled as “gruyere” produced in the United States; and a standard of identity regulation regarding “gruyere” of the U.S. Food and Drug Administration (“FDA”), which does not refer to a required origin for the cheese but describes the process by which the cheese must be prepared and the ingredients that may be used for the product to be labeled “gruyere cheese.”

 

Upon consideration of the evidence, the TTAB concluded that the term GRUYERE is a generic term for a type of cheese in the United States (the TTAB did not reach the second claim in the opposition, i.e., the failure to control claim).

 

Applicants then filed a complaint in the United States District Court for the Eastern District of Virginia challenging the TTAB decision.  On a record larger than the TTAB’s record, the District Court concluded, “the term GRUYERE may have in the past referred exclusively to cheese from Switzerland and France. However, decades of importation, production, and sale of cheese labeled GRUYERE produced outside the Gruyère region of Switzerland and France have eroded the meaning of that term and rendered it generic.”  Interprofession Du Gruyère v. U.S. Dairy Export Council, 575 F.Supp.3d 627, 650 (E.D. Va. 2021). 

 

Applicants appealed the District Court’s decision to the Fourth Circuit Court of Appeals, which agreed that consumers in the United States understand GRUYERE to generically refer to a type of cheese.  The Fourth Circuit noted the fairly widespread labeling of cheese originating outside of Switzerland and France, including from the U.S., Germany, and Austria, as “gruyere.”

 

Held: The TTAB, the District Court of the Eastern District of Virginia and the Fourth Circuit Court of Appeals each held that the term GRUYERE is a generic term in the U.S. for cheese.

 

Relevant holdings in relation to emerging issues in geographical indications: The U.S. model for protection of geographical indications continues to emphasize the importance of preserving generic terms for the benefit of consumers and producers.  As shown in this example, the model relies on due process and transparency to ensure that all interested parties have the platform to provide evidence to support their claims.

 

Applicants conducted a letter-writing campaign requesting various retailers to cease using the term “gruyere” in connection with labels for cheese not sourced in Switzerland or France.  21 retailers stopped using “gruyere” for their private label cheese as a result of these letters.  While Applicants had some success with certain retailers, there was ample evidence that many others existed and continued to sell non-Swiss and non-French cheese labeled as “gruyere” in the United States.

 

Applicants’ campaign to educate consumers and stop sales and use failed to quickly change consumer perception when there has been long use of the term generically.  “Applicants would have us find that their recent efforts, including the letter-writing campaign and attempts to directly educate the consuming public, have changed consumer understanding of the term ‘gruyere’ as a category of cheese that can come from anywhere in just a few years, with little direct education of the consuming public. Without evidence, we are not persuaded that such a limited campaign could change consumer perception so quickly.”  Int'l Dairy Foods Ass'n v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *74 (TTAB 2020).

 

Government regulations have probative value on the question of genericness.  The Food and Drug Administration regulations inform manufacturers, packers, and distributors of the name to be placed on labels for cheeses having certain characteristics.  They explain when and under what circumstances cheese for sale in the United States, especially cheese produced domestically, may be labeled “gruyere and offered as such to the purchasing public.  While the ultimate consumers of cheese likely do not know of these regulations, consumers are affected by the regulations because they govern the labels that consumers see in stores, advertising and on webpages.

 

Relevant legislation to TTAB decision:

Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127