Gruyère cheese has been made in Switzerland since 1115 and in France for hundreds of years. A few years ago, Swiss and French industry groups filed an application with the US Patent and Trademark Office to register GRUYERE (no accent mark) as a certification mark for cheese originating in the Gruyère region of Switzerland and France.
Switzerland and the EU have listed GRUYÈRE as a protected designation of origin; France has listed it as a protected geographical indicator. Simply stated, this means that France, Switzerland, and the EU have said the term GRUYÈRE serves as a guarantee that the cheese originates from somewhere in the Gruyère region.
Four oppositions were filed against the trademark application, arguing, among other things, that the mark is generic.
To be protectable, a trademark must be “distinctive.” This means it must be used to identify the source of the product or service.
Courts classify marks into categories of distinctiveness. The most distinctive marks are those that are arbitrary or fanciful. Examples include EXXON for gasoline and APPLE for electronics.
Suggestive marks, those that require some imagination to determine the nature of the goods or services, are also protectable. An example is MUSTANG for fast cars.
A descriptive mark receives trademark protection only if the mark’s owner can prove that the mark has acquired “secondary meaning” in the minds of the relevant public. In other words, consumers must associate the mark with a unique source and think of the term as a brand name rather than as a description.
For example, TV GUIDE is descriptive of a guide to TV programs, but because of its extensive advertising, promotion and public recognition, this mark has achieved secondary meaning and is protectable.
A generic term is the name for a general class of product or service. Take, for example, a shoe manufacturer with a line of sandals branded as SANDALS. When consumers see that term, they’ll think of open shoes with straps from any manufacturer, not just your brand. Generic terms receive no trademark protection.
In the GRUYERE dispute, those opposing registration of the mark presented evidence that GRUYERE is generic, including:
• dictionary definitions that don’t refer to where the cheese is made (e.g., a “nutty, pale yellow, firm cheese made from cow’s milk”);
• newspaper articles, trade publications and internet postings using terms such as “Wisconsin gruyere” and referring to a number of countries that make this cheese;
• the Food and Drug Administration’s rules, which provide a standard of identity for “gruyere cheese” without reference to origin;
• USDA statistics showing importation of processed gruyere from various countries;
• the fact that the World Championship Cheese Contest allows cheese made in countries other than France and Switzerland to compete in the gruyere category;
• witness testimony regarding importation and sale of gruyere cheese from countries other than Switzerland and France; and
• an agreement between one of the applicants and Emmi Roth, a producer of gruyere cheese made in the United States, in which Emmi Roth agreed not to label cheese sold under its own brand as gruyere but was permitted to sell private label cheese labeled gruyere.
The applicants presented their own evidence to show that GRUYERE isn’t generic, including:
• other dictionary definitions (e.g., a “kind of cheese made in Gruyère, Switzerland”);
• the Wikipedia entry for Gruyère, which notes there had been some controversy over whether cheese made in France could be called Gruyère;
• a statement from the Oxford Companion to Cheese that “Gruyère is an appellation de contrôlée (AOP) cheese from Switzerland;”
• their own publicity and educational efforts, including visits to trade fairs;
• their policing of the mark, such as letters requesting cessation of use of the term; and
• Emmi Roth’s agreement not to use the term “gruyere” as the name for its cheeses (although many of the purchasers of cheese from Emmi Roth do label the cheese as “Gruyère”).
After reviewing all of the presented evidence, the TTAB found that purchasers and consumers of cheese understand GRUYERE to primarily refer to a certain type of cheese “that can come from anywhere.”
Because the TTAB found the mark to be generic, the French and Swiss industry groups are not permitted to register GRUYERE as a certification mark for cheese made in the Gruyère area.
Please feel free to contact us if you have any questions about or need help with choosing, protecting, or enforcing your trademarks.
Photo by The HK Photo Company on Unsplash
