Tuesday, August 11, 2020

Precedential No. 30: TTAB Finds "GRUYERE" to be Generic for ... Guess What?

The Board consolidated four oppositions to registration of the proposed mark GRUYERE as a certification mark for "cheese," and then sustained three of them on the ground of genericness. It dismissed the fourth opposition because the opposer failed to prove its standing. The Board found that "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." U.S. Dairy Export Council et al. v. Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, 2020 USPQ2d 10892 (TTAB 2020) [precedential] (Opinion by Judge Albert Zervas).

The Board first dealt with numerous evidentiary objections, finding it unnecessary to rule on all of them because the Board "is capable of weighing the relevance and strength or weakness of the objected-to evidence, including any inherent limitations." It then pointed out several problems with some of the evidence, noting that documents submitted in a foreign language have limited probative value absent an English translation, that materials from foreign websites are likewise of limited probative value since they do not reflect usage of or exposure of the term "gruyere" to U.S. consumers, and that a mere listing of web addresses is insufficient to make the associated webpages of record.

The evidence revealed that GRUYÈRE cheese [note the accent mark] has been made in Switzerland since 1115 AD, and the name derives from the district in which it was first made. GRUYÈRE cheese has also been produced in France for hundreds of years. Millions of pounds are imported into the United States from Switzerland every year, and some 14,000 pounds were imported from France during the period 2013-2017. The Swiss government and the E.U. have recognized the term GRUYÈRE as a Protected Designation of Origin (PDO) and the French government approved the term as a "protected geographical indication" (PGI). The joint applicants enforce the certification rules for the production of GRUYÈRE cheese in Switzerland and France, respectively.

As usual, the Board applied the two-part test of Marvin Ginn, finding the genus at issue to be "cheese" and the relevant public to be members of the general public who purchaser or consume cheese. Opposers had the burden to prove genericness by a preponderance of the evidence.

Opposers relied on dictionary definitions (e.g., "a firm tangy cheese"), media references ("Wisconsin gruyere"), trade publications ("all the countries surrounding the Alps - Germany, Austria, France and Switzerland - have a tradition of making Gruyere"), Internet evidence ("American-made Gruyere will be aged 3 months"), the Code of Federal Regulations (CFR) (provides a standard of identity for "gruyere cheese," without reference to origin), USDA statistics (showing importation of processed gruyere from various countries), and witness testimony regarding importation and sale of gruyere cheese. Emmi Roth, a producer in Wisconsin, agreed not to brand its own cheese "gruyere" but supplied massive amounts of gruyere cheese for private label sale to resellers who were not restricted from use of the term gruyere.

Applicants relied on other dictionary definitions ("A kind of cheese made in Gruyère, Switzerland), their own publicity and educational efforts (e.g., visits to trade fairs), policing of the mark (letters requesting cessation of use of the term), and Emmi Roth's agreement not to use the term "gruyere" as the name for it cheeses (although applicants admitted that some of the purchasers of cheese from Emmi Roth continue to label the cheese as "Gruyère.")

The Board found that the reference materials "describe a category of cheese that may be made anywhere and evoke[s] the Swiss and (occasionally) French origin of the cheese." The evidence showed that "gruyere" cheese is sold by major retailers either under their own brand names, or sometimes under a group brand name like Boar's Head. Gruyere cheese is made in this country and also imported from non-Swiss and non-French producers, and sold as "gruyere." With regard to applicants' letter-writing campaign, there was no uncontroverted evidence that the recipients of the letters stopped using the term "gruyere."

As for the media and Internet items, the Board found that lower-case references to "gruyere" evidence use of the term to refer to a type of cheese. There was no evidence that applicants' recent policing and educational efforts changed consumer understanding of the term. Contrary to applicants' arguments, the CFR references are probative, even if consumers are not aware of them, because they inform manufacturers and distributors of the name to be included on labels for cheese having certain characteristics. Case law has recognized that administrative regulations are relevant to the question of genericness. The Board noted that the regulations do not offer any alternative term for this type of cheese.

Applicants pointed to the lack of survey evidence, but the Board pointed out that a survey is not required when a coined or arbitrary mark is not involved. Moreover, the evidence of record was sufficiently persuasive that a survey was unnecessary.

Finally, applicants asserted that any doubt should be resolved in their favor, but the Board observed "there is no resolution of doubt in an applicant's favor in an opposition proceeding." In any case, the Board had no doubt on the question of genericness.

And so the Board sustained the (three) oppositions.

Read comments and post your comment here.

TTABlogger comment: Seems like the horse left the barn a long time ago.

Text Copyright John L. Welch 2020.


At 9:36 AM, Blogger Daniel V. Thompson said...

The logic did not have any holes in it.

At 8:31 AM, Anonymous Anonymous said...

Is the implication from this decision that a generics-manufacturer (who self-evidently initially sets out to imitate a consumer-recognized / protected product btw) can later arm itself for a claim to genericness by marketing and describing the imitated product in a generic sense, i.e., its claim becomes a self-fulfilling prophecy?

PS, two of the definitions relied upon are wrong - it is Emmentaler cheese that has the holes in it (what most Americans would call "Swiss cheese").

At 9:29 AM, Anonymous Josh Kater said...

"it is Emmentaler cheese that has the holes in it (what most Americans would call "Swiss cheese")" - and it is sad


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