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