Gruyere, But Not Gruyere: The Ongoing Battle of Generic Terms and Geographic Indicators

Can U.S. dairy retailers label cheese as “Gruyere” even if it is not produced in the Gruyère region of Switzerland and France? According to a recent decision from a Virginia federal court, the answer is yes — at least for now.

The Virginia Court upheld an administrative decision from the Trademark Trials and Appeals Board (TTAB), which determined that “gruyere” has become a generic term to describe a type of cheese, rather a term to certify that the cheese is produced in the Gruyère region of Switzerland and France. This means that the term “gruyere” is ineligible for legal protection by the U.S. Patent and Trademark Office (USPTO). In other words, U.S. cheese producers are free to label gruyere cheese as “gruyere” even if it was produced in the United States, and not the Gruyère region in Europe. This decision is significant for several reasons and is likely to be overturned.

Factual Summary and Legal Background:

This case began in 2015 when Swiss and French industry groups applied for a certification mark for the term “gruyere” with the USPTO.

A certification mark is a word, name, symbol, device, or some other element used to certify that the goods originated or were manufactured in a particular geographic. A certification mark is similar to a trademark, except that certification marks identify particular characteristics of a product while trademarks identify a particular source. Characteristics include geographic region, which is at issue in this case. Examples of successful certification marks include COLOMBIAN to certify coffee from Colombia, ROQUEFORT to certify that the cheese is from Roquefort, France, or COGNAC to certify brandy from the Cognac region of France. Not all certification marks have been afforded protection, however.

The threshold question in deciding whether a mark is registerable as a geographic certification mark is whether consumers would know that the goods bearing the mark come solely from the geographic region in the mark. In other words, if the good with the mark could come from a number of regions, it likely does not qualify as a geographic certification mark. Also, if the mark denotes a type of good rather than the particular geographic origin of the good, this mark will be deemed “generic.” This is significant because generic marks do not qualify for protection.

Generic words can never qualify for trademark protection because they refer to the basic nature of the product offered. Generic marks also refer to the type of product or identify a category of goods. These marks do not distinguish the characteristic of the good from another, they merely state what the good is. Descriptive marks, on the other hand, describe qualities or characteristics of the product and do more than simply describe the product type. Descriptive marks can qualify for protection, while generic marks can never qualify. While successful marks such as COLOMBIAN and ROQUEFORT properly describe the geographic characteristic of a product, other marks such as BRIE and FONTINA have been rejected because they merely describe the type of cheese, not where it is produced.

Whether the mark “Gruyere” is generic or descriptive term is what is at issue in this case. Again, this is a crucial question because whether it is generic or descriptive determines whether or not the term “Gruyere” qualifies for protection by the USPTO.

In 2015, European cheesemakers first applied for a certification mark, arguing that cheese with the label “Gruyere” refers only to cheese that is produced in the Gruyère region of Europe. The USPTO initially approved their application, finding that Gruyere was a valid certification mark.

As is typical, the USPTO published notice of its approval in the weekly Trademark Official Gazette. It was then that U.S. dairy producers saw the filing and initiated a legal proceeding with the TTAB to oppose this certification mark.

The TTAB functions like a court but only decides appeals involving applications to register marks. Here, the TTAB sided with the U.S. dairy groups and disagreed with the USPTO’s initial determination. The TTAB refused to approve the certification mark, reasoning that American cheese purchasers understand that the term “Gruyere” refers to a type of cheese that can be produced anywhere. In other words, the term is generic because it refers to a type of cheese, rather than a specific type of cheese only produced in the Gruyère region. This meant that U.S. dairy producers were free to label cheese as “Gruyere,” even if it did not actually originate in Gruyère.

The European dairy groups appealed the TTAB decision and it was transferred to the Federal District Court for the Eastern District of Virginia.

The Decision:

This decision is significant for a number of reasons. First, the court determined that the mark “Gruyere” is generic at the summary judgment phase, meaning the case had not even proceeded to trial. A court will grant a motion for summary judgment only when there is no genuine dispute of material fact. A dispute of fact exists when a reasonable jury or judge could find in favor of either party at trial. However, no genuine dispute of material fact exists when the evidence is so one-sided that there is no issue for trial and the court essentially ends the dispute at this stage.

Whether a term is generic or descriptive is a question of fact. Generally, courts will not resolve issues of fact at the summary judgment phase. This means that courts will not determine the fact of whether a mark is generic or descriptive at this point of the proceedings. Instead, they will allow the case to proceed to trial in order to make a factual finding and determine whether the mark is generic or descriptive.

However, as cited by this Court, several courts have held that the issue of a term’s genericsm or descriptiveness can be resolved at the summary judgment phase where the evidence is so one-sided that no genuine issue of fact exists. The Court here relied on this precedent in its determination, which is one of the reasons that the case is likely to be overturned.

Another puzzling aspects of this case is that the Court relied heavily on standards from the U.S. Food and Drug Administration (FDA). Yet by the USPTO’s own guidelines, these standards are not meant to be binding or have any effect and force of law.

The FDA creates mandatory criteria, called “standards of identity” for food producers that wish to label cheese products with specific names. The standards of identity refer to the characteristics, production methods, and ingredients necessary to label a product with a particular name. Nearly 50 years ago, the FDA issued its standard of identity for Gruyere requiring a cheese with mild flavor, small holes, and certain milkfat requirements. Nowhere in these standards does it mention that the cheese must be produced in the Gruyère region of Switzerland or France.

The Court placed undue weight on this standard of identity and the fact that European dairy producers had not sought to challenge or revise the FDA standard. In other words, the Court found this to be persuasive evidence that U.S. consumers do not understand Gruyere to only originate from Gruyère, simply because FDA labeling standards do not require it. However, these FDA standards should not have been utilized by the Court as evidence for or against a certification mark.
According to the USPTO’s own administrative guidelines, the FDA standards of identity relate solely to the production methods and ingredients. There is no requirement in these standards that the product come from a specific geographic region. Thus, these standards of identity are not especially relevant or useful in the inquiry into whether Gruyere cheese refers to cheese only from Gruyère. The FDA standards should not have been considered so heavily by the court – if at all.

The Court also focused extensively on import data, reasoning that the high volume of cheese produced outside of Gruyère, but labeled as Gruyere, is highly indicative of its genericness. The Court reasoned that U.S. consumers have been purchasing Gruyere cheese produced in the United States for years, without intending to limit their purchase to Swiss or French-made Gruyere cheese. So, the “Gruyere” label likely refers to a type of cheese rather than the region of its origin. But this is exactly what European dairy producers are trying to address and prevent by filing for their certification mark nearly seven years ago. The Court should not have found the fact that U.S. cheese producers have been able to produce and distribute cheese labeled as Gruyere in high volumes as convincing evidence that buyers don’t understand Gruyere cheese as originating from Gruyère.

At the very least, the European cheese producers should have been allowed to proceed to trial because a reasonable judge or juror could find that Gruyere refers only to cheese produced in Gruyère, and not just anywhere. But instead, the Court disposed of this case at the summary judgment phase despite clear questions of fact about how U.S. consumers understand the term.

The European dairy groups have already filed their appeal in this action. In the appeal action, the panel will not make a determination about whether Gruyere refers to a type of cheese produced only in Gruyère. Instead, the Court of Appeal will merely ask whether there is a question of fact about this issue, meaning whether the evidence could go either way that the European dairy groups should be allowed to proceed to trial. Or, whether the evidence is so one-sided that the case was properly decided at the summary judgement phase.

If the panel finds that there is no factual question that “Gruyere” refers to a mild cheese with holes regardless of its origin and without reference to Gruyère, then the case will be upheld. But if the panel finds that there is a genuine issue of fact regarding the term’s generic meaning, it will be reversed. In other words, the panel will determine if the European dairy producers have support for their version of the facts such that there is an issue of fact in regard to the term’s generic meaning.

It remains to be seen whether Gruyere cheese will be afforded geographic protection like its French counterpart, Roquefort. Or, if it will fall victim to genericsm like Brie, Cheddar, Gouda, and others.

Our firm continues to monitor related developments in trademark law and implications for your business. If you’re curious about how this decision and others impact your business or brand, please do not hesitate to contact our office. We are your Orange County trademark attorneys here to help.