GRUYERE Held Generic in the United States

In the United States, geographic indications are treated as subsets of trademark law, and are usually protected as certification marks or collective marks. However, generic terms are not protectable or registrable, as is the case with any other types of marks.

On March 3, 2023, the U.S. Court of Appeals for the Fourth Circuit held that in the United States, “GRUYERE” is generic for a type of cheese (produced anywhere), and cannot be registered as a certification mark. Interprofession du Gruyere v. U.S. Dairy Export Council, et al., No 22-1041 (4^th Cir. 2023), https://www.ca4.uscourts.gov/opinions/221041.P.pdf.

This dispute over the name of this popular cheese dates back to 2010, when a Swiss consortium, Interprofession du Gruyere (“IDG”), applied to register LE GRUYERE in the United States as a certification mark for certain cheese originating in the Gruyère region of Switzerland. The USPTO Examiner refused registration on the ground that the relevant consuming public in the U.S. views “gruyere” as a generic type of cheese, without regard to where it was made. IDG did not appeal the refusal of registration.

IDG had also filed a second certification mark application in 2010, to register the following composite:

This application was approved, unopposed, and issued as Registration No. 4398395 on September 10, 2013. It remains on the Register today.

In 2015, two consortiums (Swiss and French) jointly filed a new certification mark application to register GRUYERE. This application was approved by the USPTO Examiner, but it was opposed by several American trade groups. They argued the application should be refused on grounds, inter alia, that the applicants did not control the use of the mark, and that “gruyere” is generic and unregistrable. After trial, the Trademark Trial and Appeal Board (“Board”) ruled in favor of the opposers on the ground that GRUYERE is generic because “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 anywhere.” In light of its ruling, the Board found it unnecessary to reach the control issue.

The applicants chose to appeal this ruling by filing a new case in the U.S. District Court for the Eastern District of Virginia, rather than appealing to the Federal Circuit Court of Appeals. They argued the Board erroneously ruled that GRUYERE was generic. After discovery, the court granted summary judgment affirming the Board, holding that the factual record “indisputably” showed that “cheese purchasers in the United States understand the term GRUYERE to refer to a generic type of cheese without reference to the geographic location where the cheese is produced.”

The European consortiums appealed once again, to the U.S. Court of Appeals for the Fourth Circuit. They asserted that the district court erred by relying on (1) the Food and Drug Administration (“FDA”) standard of identity for gruyere cheese; (2) the large volume of non-Swiss and non-French gruyere cheese sold in the U.S.; and (3) the common usage of the term “gruyere” in the press and common parlance in the U.S.

The Court of Appeals rejected each of these asserted errors, with some qualifications, with a detailed analysis of the evidence in a 31 page opinion. It affirmed the district court (and implicitly, the Board) and held that in the United States, “gruyere” is generic for a type of cheese, made anywhere.