E.D. Va. District Court Upholds TTAB Decision Finding "GRUYERE" Generic For Cheese

• Published date: 11 January 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

In a convincing opinion, the United States District Court for the Eastern District of Virginia has upheld the Board's decision [TTABlogged here] finding the term GRUYERE to be generic for cheese, and thus unregistrable as a certification mark. On the Dairy Export Council's motion for summary judgment, the court found that "the undisputed evidence produced by the parties in this case makes clear that the primary significance of the term GRUYERE, as understood by the relevant purchasing public in the United States, is a generic term for a type of cheese and does not refer solely to cheese from a specific geographic region." Interprofession du Gruyère et al. v. U.S. Dairy Export Council et al., Civil Action No. 1:20-cv-1174 (E.D. Va. December 15, 2021).

In a civil action for review of a TTAB decision under Section 1071(b), the parties may supplement the TTAB record with additional evidence. If they do, the district court "must make de novo factual findings that take account of both the new evidence and the administrative record." Kappos v. Hyatt, 566 U.S. 431, 446 (2012); see also Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015). "Thus, the determination of genericness in this case is made de novo, and the TTAB's opinion is not given deference." The judge, not a jury, is the finder of fact.

Whether a proposed mark is generic is a question of fact. "Although questions of fact are not often appropriate for resolution on a motion for summary judgment, the Fourth Circuit has held that a challenge to a term's genericness can be properly resolved on summary judgment where 'the evidence of genericness was so one-sided that no genuine issue of fact existed.'" Retail Servs., Inc. v. Freebies Publ'g, 364 F.3d 535, 546 (4th Cir. 2004)."

"The central issue in this matter is whether the term GRUYERE has become generic for a certain type of cheese and is no longer understood to refer only to cheese which comes from the Gruyère region of Switzerland and France."

A term which was once non-generic and conveyed the quality or origins of good can become generic over time through a process called genericide, which occurs when a generic term "ceases to identify in the public's mind the particular source of a product or service but rather identifies a class of product or service, regardless of source." Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996). McCarthy, the leading treatise on trademark law explains that "[t]he concepts of 'generic name' and 'trademark' are...