March 29, 2023

Au contraire, mon frere! It’s our Gruyere – Cheese trademark case offers lessons for attorneys, The Detroit Legal News

A recent decision by the U.S. Court of Appeals for the Fourth Circuit shoots holes in a claim by two European consortiums – one French and one Swiss – that they were wrongly denied U.S. trademark protection.

The appellants argued that the United States Patent and Trademark Office’s (USPTO) refusal to protect Gruyère cheese with a certification mark stinks. The plaintiffs, Interprofession du Gruyère and Syndicat Interprofessionel du Gruyère (the Consortiums), hard-pressed to protect their nutty, holey cheese, argued that the “Gruyère” mark referred to a specific cheese produced only in certain mountainous regions of France and Switzerland and that their right to its exclusive use with a certification mark should be protected.

Smelling something rotten, the U.S. Dairy Export Council and two large producers of the product, Atalanta Corp. and Intercibus Inc. (the Opposers), formally countered the USPTO application on grounds that Gruyère was, per Food and Drug Administration (FDA) guidelines, a generic term. The Trademark Trial and Appeal Board (TTAB) agreed with the Opposers, and the Consortiums, ripe for a victory, took their arguments to district court where they soon melted. In Interprofession du Gruyere; Syndicat Interprofessionel du Gruyere v U.S. Dairy Export Council; Atalanta Corp.; Intercibus Inc., the court agreed with the TTAB, awarding a summary judgement decision to the Opposers. Firmly believing they were right, the Consortiums appealed.

The gooey case ended up on the Fourth Circuit’s, ahem, cheese tray. Earlier this month, the judges shredded the appeal and ruled in favor of the Americans. Quel dommage!

The case crumbled when the appellate judges unanimously ruled that there were no grounds to preserve “Gruyère” for the exclusive use of the Consortiums. The court skewered three holes in the Consortiums’ appeal: that Gruyère was indeed a generic term for a type of cheese produced in any number of places, including Tunisia, Wisconsin and Idaho; that their request for a certification mark was baseless because, while there are FDA production standards for that type of cheese, there are no geographic ones in the U.S.; and that the case was completely without merit because of decades of use of the word Gruyère and decades of acceptance by Americans of a type of cheese rather than cheese from a specific geographic origin.

After peeling back the rind on this matter, there are two main takeaways for counsel and clients who seek protection for their trademarks in the U.S. market.

Understand the nuance – the certain je ne sais quoi – between a trademark and certification mark

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It is primarily intended to eliminate customer confusion as to the source of the goods or services, essentially as a consumer protection law.

A certification mark, on the other hand, is a trademark that shows that goods, services, or their providers have met certain standards. It can be a combination of stylized words, letters, designs, or images. The certifying organization that owns the certification mark controls those standards, as well as who can but does not itself use the mark. Certifications are far less commonly registered with the USPTO as compared to regular owner-used trademarks.

There are various examples of registered U.S. certification marks. A stylized version of “Florida” (whose certification protection has recently expired) was a well-known stylized registration for oranges and orange juice. Georgia’s “Vidalia onion” is similarly protected by a registered text certified trademark owned by the Georgia Department of Agriculture. A stylized version of the U.S. trademark registration for “Michigan Apples” is another you may be familiar with.

Let’s dip into the example of Roquefort cheese. Roquefort is essentially blue cheese. It was registered with the USPTO as a trademark in the 1950s when the citizens of Roquefort-sur-Soulzon, France, first exported the cheese to the U.S. The community was concerned about interlopers copping their delicacy, which is produced in the Occitania region of southern France and aged in caves.

The last morsel

It is important to recall that Roquefort moved early to protect its brand before the term became genericized for stinky, creamy, delicious, blue-veined cheese. The community of Roquefort registered the certification mark “Roquefort,” for cheese, with the USPTO in 1953. To this day, “Roquefort” is known as a specific kind of blue from a specific part of France. As Interprofession du Gruyère showed, the Consortium waited too late to protect its property. Gruyère is known to most consumers as simply a nutty, melty cheese riddled with holes.

Companies and entities with intellectual property, especially that with the potential for widespread public appeal and use, should move early and decisively to protect their trademarks before use from various sources and geographical regions become common in the U.S. The citizens of Roquefort are a fine example. Closer to home, the Idaho Potato Commission has aggressively fought those that would use its certification and trademarks – as it owns a text trademark registration, obtained in 1966, for “Idaho” with regard to potatoes.

Fondue, anyone?

The original article was featured in the Detroit Legal News




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