Where two foreign consortiums filed an application to register the word “GRUYERE” as a certification mark, in order to label cheese that is produced in the Gruyère region of Switzerland and France, their application was denied because the term “GRUYERE” is generic as a matter of law.
This case is about gruyere cheese, and under what circumstances cheese can be labeled as such. Appellants are a Swiss consortium, and a French consortium who believe that gruyere should only be used to label cheese that is produced in the Gruyère region of Switzerland and France. Seeking to enforce this limitation in the United States, the Consortiums filed an application with the United States Patent and Trademark Office, or USPTO, to register the word “GRUYERE” as a certification mark.
The U.S. Dairy Export Council, Atalanta Corporation and Intercibus Inc. opposed this certification mark because they believe the term is generic and therefore ineligible for such protection. The USPTO’s Trademark Trial and Appeal Board, or TTAB, agreed with the opposers and held that “GRUYERE” could not be registered as a certification mark because it is generic. The consortiums filed a complaint challenging the TTAB’s decision. The district court granted summary judgment for the opposers on the same grounds as articulated in the TTAB’s decision.
“[C]ertification marks, including indications of regional origin” are registrable “in the same manner and with the same effect as are trademarks.” Therefore, as is the case with trademark registration, “[a] generic name — the name of a class of products or services — is ineligible” for registration as a certification mark. “A generic term, by definition, identifies a type of product, not the source of the product.” And even if a term was once non-generic, the term can become generic when it “ceases to identify in the public’s mind the particular source of a product or service but rather identifies a class of product or service, regardless of source.”
Pursuant to the Lanham Act, “[t]he primary significance of the registered mark to the relevant public … shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.” In other words, “[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.”
The TTAB determined, and the parties do not dispute, that the genus of goods is “cheese” and “the relevant public consists of members of the general public who purchase or consume cheese.” Therefore, this appeal hinges on whether members of the general public who purchase or consume cheese primarily understand the term “GRUYERE” as referring to a type of cheese, rather than as indicating that the cheese was produced in the Gruyère region of Switzerland and France.
The consortiums posit that, in granting summary judgment for the opposers, the district court made numerous errors in its assessment of the record. Specifically, the consortiums contend that the district court’s analysis was flawed with respect to three categories of evidence: (1) the Food and Drug Administration standard of identity; (2) the prevalence of imported gruyere cheese from countries other than Switzerland and France, as well as domestically produced gruyere cheese, in the United States market and (3) the common usage of the term gruyere.
After assessing each category in turn, this court concludes that the district court did erroneously make certain inferences in favor of the opposers in its analysis of categories two and three. However, considering the evidence absent such inferences, this court nevertheless concludes that the term “GRUYERE” is generic as a matter of law.
Interprofession du Gruyère v. U.S. Dairy Export Council, Case No. 22-1041, March 3, 2023. 4th Cir. (Gregory), from EDVA at Alexandria (Ellis). Richard Zachary Lehv for Appellants. Nicole A. Saharsky for Appellees. VLW 023-2-067. 31 pp.