Fourth Circuit provides welcome clarity on certification marks in Gruyere ruling
On 3 March 2023, the US Court of Appeals for the Fourth Circuit affirmed a summary judgment in favour of the opposers of a certification mark application for the trademark “GRUYERE” to designate cheese that originates in the Gruyère region of Switzerland and France. The court found that the term ‘gruyere’ is generic because consumers understand the term to refer to a category of cheese that can come “from anywhere” (Interprofession du Gruyere; Syndicat Interprofessionnel du Gruyere v US Dairy Export Council; Atalanta Corporation; Intercibus, Inc, case no 22-1041 4th Circuit, 3 March 2023).
In the United States, a certification mark is a type of trademark used to show consumers that particular goods or services – or their providers – have met certain standards. Unlike a typical trademark, a certification mark is not used by the mark’s owner (the certifier), but instead controls how others use the mark.
In a similar approach the certifiers of ROQUEFORT and REGGIANO, the Swiss Consortium Interprofession du Gruyère (IDG) and French consortium Syndicat Interprofessionnel du Gruyère believed that ‘gruyere’ should only be used to label cheese produced in the Gruyère region. In 2010 IDG applied to the USPTO to register LE GRUYERE as a certification mark but was refused on the grounds that “gruyere is a generic designation for cheese”. In 2013 the USPTO granted IDG a certification mark registration for the same mark but in a specific design form – paired with the word “Switzerland”, the letters “AOC” and a stylised Swiss cross. IDG undertook efforts to enforce the mark and sent letters to several US cheese retailers and manufacturers, demanding that they cease labelling their non-Swiss cheeses as gruyere.
In 2015 IDG again attempted to register GRUYERE on its own as a certification mark. The US Dairy Export Council, Atalanta Corporation and Intercibus melted together to throw a wedge in the process, opposing the mark’s application on the grounds that gruyere was a generic term for cheese and, therefore, ineligible for protection as a certification mark. The TTAB similarly found that the term was generic, because cheese consumers understand it to be a designation for “a category within the genus of cheese that can come from anywhere”. IDG filed a complaint in the US District Court for the Eastern District of Virginia, challenging the TTAB’s decision. Ultimately, the district court granted the opposers’ motion, finding that factual records demonstrated that gruyere does in fact refer to a generic type of cheese without reference to the geographic region where the cheese is produced. IDG appealed.
The Fourth Circuit explained that certification marks, like typical trademarks, include a bar on the registration of terms that are generic for the applied-for product or service category. The court framed the genericness inquiry as whether “members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods . . . in question”. The prior proceedings determined that the genus of goods at issue was cheese and the relevant public consisted of members of the general public who purchase or consume cheese. The court thus reviewed the district court’s summary judgment grant de novo to assess whether the general cheese-purchasing public understands the term ‘gruyere’ to refer to a type of cheese rather than as an indication of the cheese’s geographic origin.
The Fourth Circuit outlined three categories of evidence:
- the US Food and Drug Administration (FDA)’s standard of identity for gruyere cheese;
- the prevalence of gruyere cheese produced outside of Switzerland and France, including domestically in the United States; and
- common usage of the term.
While the Fourth Circuit found certain errors in the district court’s inferences with respect to the second and third evidence categories, it concluded that “cheese consumers in the US understand ‘GRUYERE’ to refer to a type of cheese, which renders the term generic”, and thus deemed the term unregistrable as a certification mark.
Despite challenges raised by IDG, the Fourth Circuit found that the USPTO – or courts – can look to FDA regulations as evidence in trademark disputes. The court concluded that the FDA’s standard of identity for gruyere cheese presented strong evidence that ‘gruyere’ is a generic term, because the standard does not link the production of the cheese to any geographic region.
The Fourth Circuit rejected the district court’s conclusion that most gruyere-labelled cheese does not come from Switzerland and France. However, it found that the evidence showed a “substantial quantity of cheese” imported to the United States from other countries (not Switzerland or France) and was sold to consumers as gruyere – in addition to a notable quantity of domestically produced gruyere. In fact, IDG’s own actions in sending demand letters to US gruyere producers worked against it, as those letters were shown to acknowledge domestic US production of the cheese. Finally, the Fourth Circuit agreed with IDG on the lack of probative value of conflicting dictionary definitions, but found that media references supported the district court’s assertion that ‘gruyere’ is a generic term for a category of cheese.
Based on this veritable fondue of one-sided evidence, the court found no genuine issue of material fact and affirmed the district court’s summary judgment in favour of the opposers.
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