For the U.S Public, Gruyère Does Not Necessarily Come from Switzerland or France
In a trademark case involving the Swiss Interprofession du Gruyère and the French Syndicat Interprofessionnel du Gruyère against the United States Dairy Export Council, a District Court in Virginia held that cheese purchasers in the United States understand “gruyère” as a generic term which refers to a type of cheese regardless of where the cheese is produced.[1] Accordingly, American cheesemakers can sell cheese under the gruyère name. The issue between the European and American cheesemakers was whether the term “gruyere” should receive geographic US trademark protection such that the term may only be used to identify and describe cheeses produced in certain portions of Switzerland and France.[2] The dispute started when the European plaintiffs filed an application for a certification mark with the USPTO for the term “gruyère” that would “certify that the cheese originates in the Gruyère region of Switzerland and France.”[3] The American defendants filed an opposition that found merit with the Trademark Trial and Appeal Board (TTAB): “the term ‘gruyère’ is generic for a type of cheese without regard to the cheese’s geographic origins”.[4] A civil action was then brought to the District Court for the Eastern District of Virginia.[5] What is a generic term under U.S. trademark law? A trademark holder may lose trademark rights if the term ceases to indicate the source of the goods or services, and instead becomes synonymous with the goods and services.[6] As indicia, the trademark office will look to whether the relevant purchasing public understands primarily the name of the mark as the common or class name for the goods or services (it was the case for Kleenex, Frigidaire, Botox, Xerox…).[7] Therefore, many companies employ various strategies to maintain trademark awareness, including placing advertisements directed toward the relevant public[8], and stressing the trademark significance of the term (see, for example, Google’s fight against the verb “to google” to enter the Dictionary”).[9]. Gruyère is a Swiss cheese that takes its name from the Gruyère region of the canton of Fribourg, where it originally came from.[10] It has benefitted from a protected designation of origin in Europe since May 2013.[11] In time, Gruyère production expanded to east-central France along the border between Switzerland and France.[12] However, as the Court ruled, gruyère’s origins are not anchored enough in the mind of the average American purchaser so that it would prevent U.S cheesemakers to sell products under this name. Indeed, “when cheese consumers in the United States walk into a retail store and ask to purchase gruyere cheese, they do so without intending to limit their request only to Swiss or French-made cheese”.[13] In turn, the plaintiffs cited different U.S dictionaries whose definitions of gruyere did not involve mentions of Switzerland or France.[14] Moreover, the TTAB opinion collected examples of newspaper articles, trade publications, and websites that used the term GRUYERE to refer to Wisconsin-produced cheese.[15] According to the evidence brought to the debate, Judge T.S Ellis concluded that “while some individuals understand ‘Gruyère’ to have an association with Switzerland (and, to a lesser degree, France)”, the term “Gruyère” “has come to have a well-accepted generic meaning through the process of genericide and is no longer universally understood to indicate cheese produced in the Gruyère region.”[16] As a result, in the United States, the name “Gruyère” is free to use. Based on this recent decision, it would be interesting to see the destiny of other European regions’ products such as Champagne. If the term is widely protected in France, allowing the “Syndicat des Vignerons de Champagne” to file oppositions to any trademark registrations that would include the name of the famous liquor (in 1993, Yves-Saint-Laurent failed to commercialize a perfume under the name “Champagne”[17], will the relevant consumer in North America associate the bubble bottle with the French northern region from which it comes?
Footnotes
