On December 15, 2021, the Federal District Court for the Eastern District of Virginia upheld an administrative decision finding that, in the United States, “gruyere” is a generic term for a type of cheese, and therefore ineligible for legal protection through the U.S. Patent and Trademark Office (USPTO). Gruyère is a geographic region of Switzerland and France where people have been culturing cheese for centuries. Despite this history, the Court found that through a process sometimes referred to as genericization or “genericide” the connection between the term “gruyere” and its Swiss and French roots has nullified over time. Put another way, the Court’s decision affirmed that cheeses can be labeled as “gruyere” by American retailers, even if they originated outside Europe’s Gruyère region.
I thought this decision presented an opportunity to explore a few topics. Below you will find the case’s chronology, an introduction to the administrative law functions of the USPTO, explanations of some trademark terms and processes, and resources to consult to learn more about these concepts.
United States Patent and Trademark Office
This case originated as a result of two European consortiums, the Swiss Interprofession du Gruyère and the French Syndicat Interprofessional du Gruyère (applicants), filing a certification mark for the term “gruyere” with the USPTO. A certification mark is akin to a designation of authenticity; it can be used to confirm that a product comes from a particular region or meets a strict quality standard. Federal law defines a certification mark as “any word, name, symbol, or device” used “to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics” of goods. In this instance, the applicants sought a certification mark to demonstrate that cheeses labeled “gruyere” originate “in the Gruyère region of Switzerland and France.”
The applicants’ filing was not novel. Since 1953, “Roquefort” has had an active certification mark with the USPTO to indicate that the product “has been manufactured from sheep’s milk only, and has been cured in the natural caves of the community of Roquefort, Department of Aveyron, France.” Likewise, “Cognac” is a certification mark identifying a brandy that has been distilled in a specific region of France. Conversely, the U.S. Court of Appeals for the Federal Circuit held that “Chablis” is a generic term applied to wine.
Many months after the applicants submitted their filings, the USPTO approved the certification mark and a notice was published in the Trademark Official Gazette. This publication process is standard for American trademark registration. After publication, individuals who believe they will be harmed by the trademark registration have a limited amount of time during which they may initiate proceedings to contest it. Several American dairy industry groups objected to this certification mark, and initiated opposition proceedings before the Trademark Trial and Appeal Board (TTAB).
Trademark and Trial Appeal Board
The TTAB is a quasi-judicial body within the USPTO focused primarily on questions of trademark registration. It hears appeals of registration decisions and holds trials on specific topics, including oppositions to applications for registration, which occurred here. Researchers may view the complete docket in this matter through TTABVUE, the TTAB’s online filing system.
The TTAB focused its review on whether “gruyere” is a generic term, thereby disqualifying it from trademark protection. To determine whether “gruyere” is generic, the TTAB evaluated how the relevant public (in this case, American consumers) perceive that term. The parties presented a significant amount of evidence, including sworn testimony, sales data, statistics, reference materials, such as the Oxford Companion to Cheese and the Cheese Lover’s Companion, and gruyere’s definition in dictionaries and other resources, including the Code of Federal Regulations (CFR).
After reviewing this evidence, the TTAB issued its decision outlining its analysis and finding that “gruyere” is a generic term. For example, it determined that the offered reference materials described “a category of cheese that may be made anywhere and evoke the Swiss and (occasionally) French origin of the cheese.” (TTAB opinion at 52.) The TTAB also noted that many retailers across the United States sell cheese labeled as “gruyere” consistent with the CFR’s definition, which does not require that the cheese have a Swiss or French origin. Additionally, non-Swiss and non-French entrants in the World Championship Cheese Contest had won in the gruyere category for several years preceding the decision. The applicants appealed the TTAB decision, which was transferred to the Federal District Court.
Federal District Court for the Eastern District of Virginia
The District Court reviewed the TTAB’s decision de novo, meaning that it weighed the evidence as if the matter was being decided for the first time and gave no deference to the board’s conclusions or analysis. Based on its review of the evidence, the District Court concluded: “Although 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.” (Opinion at 15.) In support of its decision, the Court cited the same evidence relied upon by the TTAB, including: (1) a federal regulation setting forth requirements for cheese to be labeled as gruyere that are silent on national origin; (2) import data demonstrating that the vast majority of imported gruyere cheese comes from locations other than Gruyère, including the Netherlands, Germany, Austria, and Egypt; and (3) references to gruyere cheese in dictionaries, media communications, and cheese industry events that make no mention of where the cheese is produced.
Based on the above, the Court concluded:
[T]he undisputed evidence produced by the parties in this case makes clear that the primary significance of the term gruyere, as understood by the relevant purchasing public in the United States, is a generic term for a type of cheese and does not refer solely to cheese from a specific geographic region. Thus, the term gruyere, through the process of genericide, has become generic and is ineligible for registration as a certification mark. (Opinion at 32.)
Based on the above, it appears that gruyere cheese has joined the ranks of other terms that have become generic over time, like trampoline, aspirin, or the escalator. This case is now pending review by the Fourth Circuit Court of Appeals.
Useful Resources for Trademark Research
To learn more about trademarks, or explore this case, you may visit some of the resources below:
- Trademark Trial and Appeal Board: Learn about this office and its work.
- TTAB Reading Room: Search dockets and learn about the status of proceedings.
- TTABVUE: Search proceedings on the TTAB inquiry system.
- Trademark Electronic Search System: Find trademarks using basic or structured search options.
- TTAB Docket on this case: Read the filings and orders related to the TTAB decision on gruyere.
- Court Listener: Review the federal court docket entries and download selected filings.
Other Posts Related to Food and the Law
For information about other types of food that have been the subject of regulations or legal proceedings, see the following In Custodia Legis posts:
- Chocolate, Candy and the Law (2011)
- Bebe Mom vs. Brit Mom: Manners and Junk Food (2012)
- Marmite: A Sticky Legal Situation (2013)
- FALQs: Beef Bans in India (2015)
- National Hot Sauce Day and Food Regulations – Pic of the Week (2016)
- Vice of the Week: Would a Mezcal by Any Other Name Taste as Smoky? (2016)
- National Cookie Day – What Constitutes Butter? (2018)
- The Making of a Legal Cinnamon Bun (2018)
- Happy World Whisky Day! (2019)
- Irish Supreme Court Rules Subway Serves Freshly Baked Cake (2020)
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