Authors: Dennis S. Prahl, Jerry Jakubovic, Edward Baxter | Practices: , , | Tags: , , , , , ,

Fourth Circuit Confirms That ‘Gruyere’ is Generic for Cheese


The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district of Switzerland, or to cheeses produced according to traditional gruyere cheese production standards in Switzerland or France. In 2015 the consortiums filed an application with the US Patent and Trademark Office to register GRUYERE as a certification mark. During the opposition period, the US Dairy Export Council, Atalanta Corporation and Intercibus Inc opposed the application, claiming that while gruyere cheese enjoys protection in the European Union, US consumers perceive ‘gruyere’ to refer to a category of cheese producible anywhere, rather than a source indicator.

The Trademark Trial and Appeal Board ruled in favour of the opponents, and the consortiums appealed the matter to the Eastern District of Virginia, which affirmed on summary judgment. The consortiums appealed again to the US Court of Appeals for the Fourth Circuit, claiming that the district court’s analysis was flawed with respect to three categories of evidence:

  1. the Food and Drug Administration (FDA) standards of identity;
  2. the prevalence of imported non-French and non-Swiss gruyere cheese and domestically produced US gruyere cheese in US commerce; and
  3. common usage of the word ‘gruyere’.

Fourth Circuit decision

The district court had relied on the FDA standard of identity description for gruyere cheese, noting the description was silent regarding any geographical source for the cheese, and supporting the argument that ‘gruyere’ could be produced anywhere. The consortiums contended that the district court improperly relied on the FDA’s description, which applies to trademarks and not certification marks.

The Fourth Circuit agreed that the district court had erred in the manner of analysis it used for the evidence, but asserted that the guide is useful evidence “emphasising that cheeses for which there is a standard of identity tend not to be registrable as a certification mark of regional origin”. While the FDA guide cannot itself preclude registration of GRUYERE, it provides strong evidence that ‘gruyere’ is a generic term used to describe a category of cheese. Limiting the evidence to this purpose, the Fourth Circuit found the consortiums’ arguments unpersuasive.

The consortiums next argued that the district court had erred in its analysis of sales records suggesting that most imported gruyere-labelled cheeses come from countries other than Switzerland and France, and that a substantial amount of US-produced cheeses are sold under the label ‘gruyere’. The Fourth Circuit reasoned that, even if the district court’s analysis regarding the specific amount of non-Swiss and non-French gruyere-labelled cheeses were inaccurate, the “undisputed evidence thus establishes that a substantial quantity of cheese has been imported to the United States from countries other than Switzerland and France and sold to consumers as gruyere”.

The consortiums further argued that the district court had inaccurately inferred from dictionary and general commercial evidence that the most common definitions for the term ‘gruyere’ did not reference the geographical Gruyère location, and therefore weighed in favour of a genericness finding. While the Fourth Circuit agreed that the dictionary definitions provided as evidence included too many conflicts with respect to the geography issue, the provided media definitions (which included recipes and websites) were either silent on the geography issue or claimed a disparate point of origin for gruyere cheese, such as Austria or Wisconsin. Based on this, the Fourth Circuit determined that the public’s idea of gruyere cheese favoured a category of cheese (and, therefore, genericness), not a cheese produced in the specific Gruyère district of Switzerland.

Having analysed the consortiums’ arguments, the Fourth Circuit ultimately determined that, while the district court may have erred in its analysis on some issues, the evidence on record was “so one-sided” that there remained no genuine issue of material fact, and affirmed the district court’s grant of summary judgment in favour of the opponents.



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