The world of cheese is usually associated with delicious aromas, flavors, and occasionally fondue, but the cheese industry has recently been stirred up in a heated battle that saw certain trademark rights melt away.

While many think of Gruyere, Camembert, and Roquefort as simply delicious cheeses, for the European cheese-making consortiums behind these products, these names represent an ongoing, and uphill, battle over valuable intellectual property rights.

In the recent case before the United States Court of Appeals for the Fourth Circuit, Interprofession du Gruyere v. U. S. Dairy Export Council (March 3, 2023), the court was tasked with deciding whether the term “Gruyere” could act as a U.S. certification mark for European cheese-making consortiums seeking to protect their products.

This case emphasizes the importance of a careful analysis of a mark’s generic nature and its impact on trademark protection. Businesses must not only understand how consumers perceive their marks locally but also analyze this perception in any region or jurisdiction where it plans to conduct business, while monitoring relevant regulations and varying legal standards to adapt trademark strategies accordingly.

Below, we explore the obstacles that the consortiums encountered while attempting to safeguard this mark in the U.S., and how consumers’ perceptions play a crucial role in determining whether a mark is generic.

Background

A certification mark is a type of trademark that is used to show consumers that a particular product or service meets certain standards or characteristics. These characteristics may include the region from which the product or service originates, as well as other quality standards set by the mark’s owner, which is often the certifying organization. Certification marks are used to distinguish products and services that meet these standards from those that do not.

The Swiss consortium, Interprofession du Gruyère, and the French consortium, Syndicat Interprofessionel du Gruyère (the Consortiums), sought to obtain protection from the United States Patent and Trademark Office (USPTO) for the GRUYERE mark as a certification mark to indicate that cheeses labeled as gruyere met certain standards and were authentic products, namely that they were produced in the Gruyère region of Switzerland and France.

Like the notion that champagne must be produced in the Champagne region of France, the term gruyere in France and Switzerland can only be displayed on products that pass detailed requirements that dictate the process of gruyere production, including that the cheese be produced in specified areas of Switzerland and France.

Parallel protections do not exist in the United States. While the Food and Drug Administration (FDA) has issued a standard of identity for “gruyere cheese,” those requirements are far less stringent than those governing gruyere production in Switzerland and France, and do not contain any geographic restrictions. As a result, for decades, regardless of location of production, gruyere cheese has been labeled and sold as gruyere in America.

Interprofession du Gruyere v. U. S. Dairy Export Council

Initially the USPTO approved the application for the certification mark for GRUYERE and published it for opposition. Later, however, it sustained oppositions by the U.S. Dairy Export Council, Atlanta Corporation, and Intercibus, Inc. (the Opposers) who argued that the term was generic and not entitled to trademark protection.

The USPTO's Trademark Trial and Appeal Board agreed with the Opposers; the district court granted summary judgment to them on the same grounds. The case went on appeal, where the Fourth Circuit, as a matter of law, concluded that the term GRUYERE is generic, affirming the district court's decision.

The crux of the issue discussed by the court of appeals was whether the term GRUYERE was generic. Under trademark law, a term is considered generic if it is a common or descriptive term that refers to a type of product or service and is not capable of distinguishing one source of goods from another. As an example, the term “apple” cannot be a trademark owned by a single company in connection with the sale of fruit because it is a generic term that refers to a type of fruit.

The Consortiums argued that GRUYERE was not generic because it referred only to cheese produced in the Gruyère region of Switzerland and France, and that the USPTO applied the wrong legal standard when it found the term to be generic. Specifically, the Consortiums argued that the USPTO erroneously relied on the “primary significance” test, which assesses whether the primary significance of a term to the relevant public is as a generic name for the goods or services in question.

The court found that the “primary significance” test was the appropriate legal standard and noted that while the Consortiums may be correct that GRUYERE refers to a specific type of cheese produced in a specific region abroad, that does not necessarily mean that the term is not generic.

In order to be eligible for trademark protection, a term must be distinctive so that it identifies to consumers the source of the goods or services. A term that is generic cannot be distinctive because it refers to the goods or services themselves rather than the source.

The evidence the court considered was that the FDA standard of identity for “gruyere cheese” indicated the mark was generic, evidence of domestically produced gruyere-labeled cheese, and evidence showing that the term had been used for decades to describe a type of cheese in the U.S., regardless of region of origin. The court’s ultimate conclusion was that purchasers and consumers of cheese understand the term as a designation that primarily refers to a type of cheese that is not limited to where it can come from.

Based on these facts, the court found that the relevant public understands GRUYERE as the common name, and not as an identifier of the source of that cheese. As a result, the court concluded that the term was generic and ineligible for trademark protection.

Conclusion

This case highlights the importance of understanding genericness in the context of trademarks when establishing or maintaining a distinctive identity for a brand, and the potential difficulties faced in protecting this identity in different countries and regions.

Despite the significance of a term in other territories, courts in the U.S. will view a trademark application through the lens of the relevant U.S. consuming public. If a term is generic, it cannot serve as a trademark or certification mark in the U.S.