Monday, January 10, 2022

E.D. Va. District Court Upholds TTAB Decision Finding "GRUYERE" Generic for Cheese

In a convincing opinion, the United States District Court for the Eastern District of Virginia has upheld the Board's decision [TTABlogged here] finding the term GRUYERE to be generic for cheese, and thus unregistrable as a certification mark. On the Dairy Export Council's motion for summary judgment, the court found that "the 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." 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 a civil action for review of a TTAB decision under Section 1071(b), the parties may supplement the TTAB record with additional evidence. If they do, the district court “must make de novo factual findings that take account of both the new evidence and the administrative record.” Kappos v. Hyatt, 566 U.S. 431, 446 (2012); see also Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015). "Thus, the determination of genericness in this case is made de novo, and the TTAB’s opinion is not given deference." The judge, not a jury, is the finder of fact.

Whether a proposed mark is generic is a question of fact. "Although questions of fact are not often appropriate for resolution on a motion for summary judgment, the Fourth Circuit has held that a challenge to a term’s genericness can be properly resolved on summary judgment where 'the evidence of genericness was so one-sided that no genuine issue of fact existed.'" Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d 535, 546 (4th Cir. 2004)."

"The central issue in this matter is whether the term GRUYERE has become generic for a certain type of cheese and is no longer understood to refer only to cheese which comes from the Gruyère region of Switzerland and France."

A term which was once non-generic and conveyed the quality or origins of good can become generic over time through a process called genericide, which occurs when a generic term “ceases to identify in the public’s mind the particular source of a product or service but rather identifies a class of product or service, regardless of source.” Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996). McCarthy, the leading treatise on trademark law explains that “[t]he concepts of ‘generic name’ and ‘trademark’ are mutually exclusive.

The CAFC has stated that "the relevant public’s perception is the primary consideration in determining whether a term is generic." Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 969 (Fed. Cir. 2015). The party opposing registration has the burden to prove genericness by a preponderance of the evidence. Royal Crown Co., 892 F.3d at 1366.

The court found the evidence overwhelming that "[a]lthough 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." The record included three types of evidence: (1) existing U.S. regulations permitting the use of the term GRUYERE on cheese regardless of its origin (2) commercial and government data showing the widespread sale and import of GRUYERE cheese produced outside the Gruyère region of Switzerland and France; and (3) evidence showing that the term GRUYERE is commonly used in dictionaries, media communications, and cheese industry events and materials to refer to a type of cheese without respect to where the cheese is produced.

[D]ecades of importation, production, and sale of cheese labeled GRUYERE produced outside the Gruyère region of Switzerland and France have eroded the meaning of that term and rendered it generic. The term GRUYERE has “cease[d] to identify in the public’s mind the particular source of” a given cheese “but rather identifies a class of product or service, regardless of source.” Glover, 74 F.3d at 59

And so, the court granted Defendant Dairy Export Council's motion for summary judgment.

Read comments and post your comment here.

TTABlogger comment: Interprofession du Gruyere filed a notice of appeal on January 7, 2022.

Text Copyright John L. Welch 2022.


At 8:27 PM, Blogger Joel said...

Jonathan, as I just posted to LinkedIn, this opinion too implicates the territoriality principle.


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