IP Law Daily U.S. dairy groups prevail in opposing proposed certification mark GRUYERE for cheese as generic
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Friday, August 7, 2020

U.S. dairy groups prevail in opposing proposed certification mark GRUYERE for cheese as generic

By Linda O’Brien, J.D., LL.M.

A group of U.S. dairy associations prevailed in their opposition to registration of the proposed certification mark for "GRUYERE" for cheese by two European cheese organizations on the ground that the term was generic.

A group of U.S. dairy associations prevailed in their opposition to the application by two European cheese associations to register the mark GRUYERE for cheese. The Trademark Trial and Appeal Board has determined, in a precedential decision, that there was overwhelming evidence that consumers of cheese would understand the term "gruyere" to describe a category of cheese that could come from any country. Thus, the opposition to the registration of the proposed mark on the ground of genericness was sustained (International Dairy Foods Association v. Interprofession du Gruyere, August 5, 2020, Zervas, A.).

In September 2015, European specialty food associations Interprofession du Gruyere (IDG) and Syndicat Interprofessionnel du Gruyere (SIG) ("Applicants") sought to register on the Principal Register the standard character certification mark GRUYERE for "cheese," claiming first use at least as early as 1982 and first use in commerce at least as early as 1985. The application included the statement: "The certification mark, as used by persons authorized by the certifier, certifies that the cheese originates in the Gruyere region of Switzerland and France." IDG has claimed ownership of Registration No. 4398395 (registered September 2013) for the following certification mark for "cheese" LE GRUYERE SWITZERLAND AOC.

In their Notices of Opposition, International Dairy Foods Association (IDFA), U.S. Dairy Export Council (USDEC), Atalanta Corp. (Atalanta), and Intercibus Inc. (Intercibus) ("Opposers") contended that Applicants failed to exercise legitimate control over the proposed certification mark such that it was incapable of functioning as a certification mark and GRUYERE was a generic name for cheese and unregistrable under Section 2(e)(1) of the Trademark Act.

Genericness. The Board determined that purchasers and consumers of cheese understand the term "gruyere" as a designation that primarily refers to a category within the genus of cheese that can come from any country. The name GRUYERE derives from the district of La Gruyere in the Canton of Fribourg in Switzerland and GRUYERE cheese has been made in Switzerland and France for hundreds of years.

The reference materials in the record describe a category of cheese that may be made anywhere and evoke the Swiss and on occasion the French origin of the cheese. Cheese identified as "gruyere" is made in many locations, including Germany, Austria, and the United States, and non-Swiss and non-French producers of cheese, along with Swiss or French producers, are listed as winners the World Championship Cheese Contest in "gruyere" categories for 2010, 2012, 2014, 2016, and 2018, the Board noted.

In the United States, Wisconsin company Emmi Roth has been the largest producer of cheese labeled as "gruyere" for many years, with an annual production of millions of pounds. In addition to Emmi Roth and other smaller producers of cheese labeled as "gruyere" in the United States, there are non-Swiss and non-French foreign producers of cheese labeled as "gruyere" that is sold in the United States. Applicants contend that they sent letters requesting various retailers to cease using the term "gruyere" in connection with labels for cheese not sourced in Switzerland or France. While some retailers complied to the request in response to the letters, there was ample evidence that many others continue to sell non-Swiss and non-French cheese labeled as "gruyere" in the United States. The fact that some have changed the names of their products or removed the term "gruyere" from marketing materials or a webpage was unpersuasive that the public in the United States would not primarily understand "gruyere" to refer to a type of cheese regardless of its country of origin, the Board explained.

Further, the uses of "gruyere," "gruyere cheese," and "Wisconsin gruyere" in media and Internet references reflect the use of "gruyere" to identify a category of cheese that can come from anywhere. Additionally, the FDA standard of identity for "gruyere cheese" identifies the ingredients and the production standards for any cheese labeled as a "gruyere cheese" but does not limit the cheese to a particular geographic source. In view of the overwhelming evidence, Opposers met their burden of proving the term "gruyere" generic by a preponderance of the evidence, the Board concluded.

Standing. The opposition of IDFA was dismissed for lack of standing as the group submitted no pleadings in support of its standing. However, the three remaining dairy groups—USDEC, Atalanta, and Intercibus—established standing to represent their members to challenge the registration by demonstrating that their members would have standing to sue in their own right, the interests the organizations sought to protect were germane to their purpose, and the asserted claims and requested relief did not require the participation of individual members in the lawsuit.

This case is Opposition Nos. 91232427, 91232442, 91232446, and 91232448.

Attorneys: Brian G. Gilpin (Godfrey & Kahn SC) for International Dairy Foods Association, U.S. Dairy Export Council, Atalanta Corp., and Intercibus Inc. Sean Harb (Fross Zelnick Lehrman & Zissu, P.C) for Interprofession du Gruyere and Syndicat interprofessionnel du Gruyere.

Companies: International Dairy Foods Association; U.S. Dairy Export Council; Atalanta Corp.; Intercibus Inc.; Intercibus Inc.; Interprofession du Gruyere; Syndicat interprofessionnel du Gruyere

MainStory: TopStory Trademark USPTO GCNNews

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