19 August 2021 News

Schiavetti D., Genericness in US certification marks: the ‘GRUYÈRE’ case, Journal of Intellectual Property Law & Practice, Volume 16, Issue 4-5, April-May 2021, Pages 298–300

On 17 September 2015, Interprofession du Gruyère (IDG), a Swiss registered association, and Syndicat Interprofessionnel du Gruyère (SIG), a French syndicate, filed an application for a standard character certification mark for GRUYÈRE, claiming first use as early as 1982. IDG is also the owner of the certification mark No 4398395 for LE GRUYÈRE SWITZERLAND AOC’ (design), registered in 2013. In its certification, the mark indicates that the cheese originates in the Gruyère region in Switzerland and lists the various cantons and districts of origin. The International Dairy Foods Association (IDFA), US Dairy Export Council (USDEC), Atalanta Corporation (‘Atalanta’), and Intercibus Inc (‘Intercibus’) (collectively ‘the Opposers’) filed notices of opposition alleging that IDG and SIG had failed to exercise legitimate control over the proposed certification mark. Hence, ‘GRUYÈRE’ would be incapable of functioning as a certification mark under Sections 4 and 45 of the Trademark Act, 15 USC section 1052(e)(1).
The Trademark Trial and Appeal Board (‘the Board’) concluded that US consumers of cheese understand the term ‘gruyère’ as a designation that primarily refers to a type of cheese that can come from anywhere, and not specifically from Switzerland or France.