January 17, 2022
Michael J. Pistorio

Interprofession du Gruyère et al. v. U.S. Dairy Export Council et al., Civil Action No. 1:20-cv-1174 (E.D. Va. December 15, 2021)

In an opinion issued on Dec. 15, 2021, the District Court for the Eastern District of Virginia agreed with the Trademark Trials and Appeals Board (TTAB) that the term GRUYERE has become generic in the United States through genericide, and is therefore ineligible for registration as a certification mark.

Interprofession du Gruyère filed an application to register the term GRUYERE as a certification mark that would certify that the cheese originates from the Gruyère region of Switzerland and France. U.S. Dairy Export Council filed an opposition to the mark, arguing that US customers would understand the term GRUYERE to denote a type of cheese that could be produced anywhere, which was sustained by the TTAB. Interprofession du Gruyère filed a civil action in District Court under 15 U.S.C. §1071(b), wherein U.S. Dairy Export Council filed for summary judgement.

The District Court, which considered the case of genericness de novo, agreed with the TTAB. The District Court recognized that the certification mark GRUYERE has been registered in the European Union and, at one time in the past, may have been non-generic in the United States. However, an overwhelming amount of evidence showed that cheese labeled GRUYERE has been either imported from areas outside of the Gruyère region or domestically produced and sold in the United States to the general public in large quantities for many years. The court seemed particularly persuaded because a member of one of the plaintiff consortiums in this case had allowed their US-produced cheese to be sold with the label GRUYERE.

It is noted here that no survey of the general public was produced by Interprofession du Gruyère as evidence of non-genericness. Although not necessary, surveys of the general public are very persuasive to courts in establishing the non-genericness of the mark. The court also noted that the FDA’s standard of identifying a Gruyère cheese did not include geographic provenance, and that evidence including dictionary definitions, media coverage, and industry practice confirmed that the term GRUYERE is generic.