“Gruyere” Is Held to be Generic for Cheese, No Longer Protectable in the U.S.

After years of battles, this is a victory for dairy groups and cheese producers in the U.S. The Fourth Circuit Court of Appeals ended this dispute, see Interprofession du Gruyere v. U.S. Dairy Export Council, 61 F.4th 407 (4th Cir. 2023). Initially the United States Patent & Trademark Office (USPTO) approved and published the trademark application containing the certification mark (aka geographical indication) for “Gruyere” for cheese. Section 4 of the Trademark Act of 1946 (as amended) provides protection for Geographical Indications as certification and collective marks indicating regional origin. Domestic Geographical Indications include IDAHO (potatoes), WASHINGTON (apples) and FLORIDA (citrus). For more on the topic of certification marks, see our webpage, What You Need To Know to Register A Certification Trademark. The application was opposed at the Trademark Trial and Appeal Board (TTAB) on the grounds that Gruyere is a generic term for a type of cheese.

To determine if the term Gruyere is generic, the TTAB applied the test of Marvin Ginn. A generic term is one that the relevant public understands to be the common name of the goods or services or the name of the class of the products or services. See our web page entitled, Generic Terms, for examples of generic terms that were ineligible for registration at the USPTO.  Determining if a term is generic requires asking two questions: (1) what is the genus of goods or services at issue? and (2) is the term sought to be registered, understood by the relevant public primarily to refer to that genus of goods or services? The generic determination is based on the meaning of the term to consumers. The TTAB found that the genus of the goods was cheese and members of the general public who purchase or consume cheese to be the relevant public. In the end, the Board held that Gruyere is a generic term for a type of cheese in the U.S. See, U.S. Dairy Export Council et al. v. Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, 2020 USPQ2d 10892 (TTAB 2020) [precedential].

In response, the European consortiums filed a complaint in the United States District Court for the Eastern District of Virginia challenging the TTAB decision. The District Court noted that the term “Gruyere” previously may have referred to cheese exclusively from Switzerland and France, but due to decades of importation of cheese labeled Gruyere produced outside the Gruyere region of Switzerland and France has diluted the meaning of the term rendering it generic. Thereafter, the European Consortium appealed to the Fourth Circuit of the Court of Appeals. The Fourth Circuit reviewed the evidence and also found that there was widespread labeling of Gruyere cheese originating in other countries besides Switzerland and France. The Fourth Circuit concluded that U.S. consumers understood the term “gruyere” referred to a type of cheese which renders the term gruyere generic. The reasoning for refusing to provide trademark protection for generic terms is that granting a party an exclusive right to utilize a generic term would be unfair and would interfere with competition.

It’s important to remember that generally, geographic matter cannot be considered inherently distinctive. However, Section 2(e)(2), providing for refusals based on geographic descriptiveness, specifically exempts certification marks indicating regional origin. If a certification mark indicating regional origin includes a generic term, a disclaimer of that term will be required. A disclaimer will also be required for a generic geographic term. For example, brie cheese originally came from Brie, France, but now it is manufactured and produced anywhere and therefore, it is generic for a type of cheese. If BRIE is part of the mark, the identification of goods must be limited to brie cheese because the mark can only be used on that specific product; otherwise, it could deceive the consumer as to the type of cheese. If you have questions concerning trademarks, please do not hesitate to contact the firm for a courtesy consultation.