Date: January 19, 20221Attorney: Joel G. MacMull

This was the question answered by United States District Court for the Eastern District of Virginia in December when it affirmed a decision by the Trademark Trial Appeal Board refusing registration of a certification mark application for GRUYERE based on genericness (or genericide, as I like to call it.)

The central question presented was whether cheese purchasers in the U.S. understand the term GRUYERE to refer only to a specific type of cheese produced in the Gruyère region of France and Switzerland or whether, instead, they understand GRUYERE as a generic term that refers to a type of cheese regardless of where the cheese is produced. According to the opinion, which I just got around to reading, the applicants – two European consortiums – did nothing to police the use of GRUYERE in the U.S. until 2012 and, once they did, their efforts were met with only limited success. No doubt, this was attributable to decades of use of the GRUYERE mark in the U.S. prior to 2012. The opinion goes on to examine the evidence submitted by the opposer and defendant in the case, the U.S. Dairy Export Council, explaining that in almost each instance, the record provides overwhelming evidence that cheese purchasers in the U.S. understand the term to be generic for a type of cheese regardless of where it’s produced. Certification marks – or rather these registrations – provide geographic protections for all sorts of foods and beverages like Champagne, Idaho potatoes and Florida oranges. Use of these marks convey where these goods come from, while providing quality assurances to consumers. But, like all trademark registrations in the U.S., they’re also vulnerable to how they’re perceived, including where, as here, they unquestionably serve as indicators of source in other countries. Here, once again, the rule of territoriality is implicated: what’s a trademark over there may not be a trademark here, so says U.S. law. And for good reason. Not surprisingly, the plaintiffs last week filed an appeal with the Court of Appeals for the Fourth Circuit. Needless to say, I’ll be keeping my Sterno lit and my fondue forks at the ready.

If you have questions about Intellectual Property, please contact Joel MacMull.

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