575 F.Supp.3d 627
E.D. Va.2021Background
- Plaintiffs are Swiss and French Gruyère consortiums that sought a U.S. certification mark for the word "GRUYERE" to certify cheese originating in the Gruyère region of Switzerland and France; USPTO initially approved the 2015 standard-character application but defendants opposed at the TTAB.
- The TTAB concluded GRUYERE is generic for a type of cheese and sustained the opposition; plaintiffs brought a de novo §1071(b) civil review in the Eastern District of Virginia.
- Undisputed factual record: FDA standards of identity (21 C.F.R. §133.149) permit labeling cheese "Gruyere" without geographic limitation; large volumes of Gruyere-labeled cheese are imported from multiple countries and produced domestically.
- Major U.S. domestic producers (notably Emmi Roth and Glanbia) and numerous retailers sell cheese labeled "Gruyere" made outside the Swiss/French Gruyère region; plaintiffs’ enforcement efforts were limited and had mixed success.
- Plaintiffs hold a separate 2013 design certification mark limited to "LE GRUYÈRE SWITZERLAND AOC," but sought a broader mark covering the entire Gruyère region (Switzerland and France) in 2015.
- Court granted summary judgment for defendants, holding as a matter of law that "GRUYERE" is generic to U.S. purchasers and therefore ineligible for certification-mark registration.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "GRUYERE" is generic in the U.S. marketplace | Plaintiffs contend evidence is inconclusive and plaintiffs’ mark should be registrable | Defendants argue U.S. purchasers understand "GRUYERE" as a generic cheese type regardless of origin | Held: "GRUYERE" is generic for U.S. purchasers and ineligible for certification-mark protection |
| Relevance of absence of consumer survey evidence | Plaintiffs: lack of survey should preclude summary judgment or be construed in plaintiffs’ favor | Defendants: survey not required; other competent evidence can prove genericness | Held: absence of surveys does not preclude summary judgment; record evidence suffices |
| Probative value of federal/regulatory sources (FDA standard of identity) | Plaintiffs: FDA guidance or standards are not dispositive on trademark rights | Defendants: FDA standard permitting non-geographic use is strong evidence of genericness | Held: FDA standard of identity is persuasive and strongly probative of genericness |
| Whether plaintiffs failed to control/use the proposed certification mark | Plaintiffs argue they sought to police usage and obtained some compliance | Defendants argue plaintiffs did not exercise sufficient control (challenge before TTAB) | Held: Court did not decide control—unnecessary because genericness resolved the case in defendants’ favor |
Key Cases Cited
- Booking.com B.V. v. United States Pat. & Trademark Off., 140 S. Ct. 2298 (2020) (generic names are ineligible for federal registration)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment standard)
- Kappos v. Hyatt, 566 U.S. 431 (2012) (district court must make de novo factual findings when new evidence supplements administrative record)
- Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015) (in §1071(b) actions the district court acts as trier of fact)
- Royal Crown Co. v. The Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018) (burden on challenger to prove genericness by preponderance)
- In re Cordua Restaurants, Inc., 823 F.3d 594 (Fed. Cir. 2016) (any competent source may be used to assess consumer understanding)
- Glover v. Ampak, Inc., 74 F.3d 57 (4th Cir. 1996) (genericide doctrine explained)
- Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d 535 (4th Cir. 2004) (summary judgment appropriate where evidence of genericness is one-sided)