Federal Judge Holds Swiss Cheese Makers’ Claim to Gruyere Full of Holes

INTERPROFESSION DU GRUYÈRE, et al., v. U.S. DAIRY EXPORT COUNCIL, et al., Twas all about exclusive right to control the use of Gruyere for cheeses in the US.  This case began with a 2015 application by Interprofession du Gruyère, a Swiss registered association, and Syndicat Interprofessionnel du Gruyère , a French syndicat for a certification mark  GRUYERE.  A certification mark is used to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.  So, for example, the mark ROQUEFORT is used to certify cheese that comes from a specific municipality in France; UL or Underwriters Laboratories certifies, among other things, representative samplings of electrical equipment meeting certain safety standard.

In 2013, Interprofession du Gruyère, sought and received from the USPTO a certification mark for a design with stylized font, for the letters “AOC”, a Swiss cross, and the words “LE GRUYÈRE SWITZERLAND.”  This mark can be applied to cheese sold in the United States only if the cheese originates in the Gruyère region of Switzerland (but not France). Interprofession du Gruyère, and Syndicat Interprofessionnel du Gruyère’s application for GYUERE, is much broader in scope than the previously registered Swiss mark and would require that any time the term GRUYERE is used on cheese that is sold in the US, that cheese must have been produced in the Gruyère region of Switzerland or France.

Interprofession du Gruyère, and Syndicat Interprofessionnel du Gruyère’s application for GRUYER was opposed by the International Dairy Foods Association and the United States Dairy Export Council who argued that GRUYERE is a generic name for cheese.  Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. Put in common parlance, if the general public primarily understands the word to designate the product rather than the producer, the word is generic. Generic terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Supplemental Register or on the Principal Register after having acquired secondary meaning.

Under US trademark law the test for genericness is comprised of two parts: (1) what is the genus of goods or services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services.  The test turns upon the primary significance that the term would have to the relevant public.

With regard to GRUYERE, the key issue in both the TTAB and US District Court was whether cheese purchasers in the United States understand the term GRUYERE to refer only to a specific type of cheese produced in the Gruyère regions of Switzerland or France, or whether cheese purchasers in the United States instead understand GRUYERE as a generic term which refers to a type of cheese regardless of where the cheese is produced.

Interprofession du Gruyère, and Syndicat Interprofessionnel du Gruyère introduces significant evidence going to the history of Gruyere cheese and the use of Gruyere in France and in Switzerland.  GRUYÈRE cheese has been made in Switzerland since 1115 AD.  On December 10, 1981, the Federal Council of Switzerland issued a “Decree on the protection of the names of Swiss Cheeses” which listed GRUYÈRE as a protected designation and defined the production requirements for GRUYÈRE cheese. This protected designation was superseded by adoption of the Protected Designation of Origin (“PDO”) for GRUYÈRE in 2001. The European Union recognized the PDO in 2011 in an agreement between the European Union and Switzerland in 2011.  In 2012, the French National Institute of Origin and Quality (“INAO”) approved GRUYÈRE as a “protected geographical indication” (“PGI”) for a limited area in France, pursuant to an application filed in 2010.  PDO and PGI designations are used for agricultural products that traditionally have been produced in a particular geographic region. When used on a product, the PDO and PGI designations guarantee that the food product originates in the specific region or follows a particular traditional production process.

The history of GRUYÈRE and its treatment in France and Switzerland did not sway the TTAB or the District Court.  In determining whether the relevant public understands the designation, GRUYÈRE, to primarily refer to the cheese or to cheese that is unique to France and/or Switzerland, both the TTAB and the district court engaged in a detailed factual analysis.  They both looked at dictionary definitions, articles and excerpts from articles, government regulations, statistics, webpages, witness testimony, and promotional materials. The majority of the dictionary definitions did not even refer to Switzerland or France.  Most of the dictionary entries in evidence included a definition for the term “gruyere” that was not restricted to a cheese produced in France or Switzerland.  The record also included a significant number of articles showing the use of GRUYÈRE as a type of cheese (like cheddar or jack).

One bit of evidence both the TTAB and Federal court found persuasive was concerning Wisconsin cheese manufacturer Emmi Roth and its use of Gruyere.  Emmi Roth, through its predecRoth Kase USA, Inc., began to produce cheese labeled as “gruyere” made in the United States in 1991; its “flagship product” and “primary focus of the business” was cheese produced in the U.S. called “Grandcru Gruyere.” Roth Kase grew to an 80-million-dollar business and Emmi Roth USA, Inc. purchased the business in 2009.  In 2009, at the time of the sale, Roth Kase was “doing in excess of 2 million pounds of Gruyere cheese.  Emmi AG was the parent company of Emmi Roth and a member of Interprofession du Gruyère.  In 2012, Emmi AG, entered into an agreement with Interprofession du Gruyère, in which it agreed not to label cheese under its own brand as “gruyere.”  However, in 2012 and 2013, Emmi Roth produced millions of pounds of “Domestic Roth branded Gruyere” and “Domestic Private-Label branded Gruyere”; and in the period 2014-2016, while Emmi Roth produced no “Domestic Roth branded Gruyere” it continued to produce millions of pounds of “Domestic Private-Label branded Gruyere.”

Both the TTAB and Federal court case did acknowledge that Interprofession du Gruyère, and Syndicat Interprofessionnel du Gruyère took some steps to police the use of Gruyere.  Between 2012 to 2017 they sent letters to retailers and manufacturers asking them to cease using the term GRUYERE to label cheeses which were not produced in the Gruyère region of Switzerland and France.  It seems that this campaign achieved only limited success.  Many prominent retailers continued to use the term GRUYERE without respect to the geographic origin of the cheese, and hundreds of thousands of pounds cheeses labeled as GRUYERE continued to be produced in the United States or imported from regions other than the Gruyère region of Switzerland and France and sold in the United States every year.

In reviewing the record de novo, the district court said that while the term GRUYERE may once have been understood to indicate an area of cheese production, the factual record makes it abundantly clear that the term GRUYERE has now, over time, become generic to cheese purchasers in the United States.

What is the lesson to be learned here? First, trademark owners need to understand the seriousness of a trademark becoming generic.  While a generic term cannot become a trademark, a trademark can become generic.  Ironically, the more popular a trademark becomes, the more likely it is that a trademark will become generic, causing the trademark owner to lose its exclusive right to use and protect the trademark.  A trademark becoming a generic term does not happen overnight and mark owners whose marks are at risk of falling victim to their mark becoming generic need to be active in preventing it.  The key is to educate the public that the mark is the source of the product and not the product itself.  It seems, at least according to the TTAB and Federal Court, the attempts by Interprofession du Gruyère, and Syndicat Interprofessionnel du Gruyère to do so are too little too late.

Scott Hervey and Josh Escovedo talk more about this case on the latest episode of The Briefing from the IP Law Blog.

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