A recent decision of the Trademark Trial and Appeal Board (“TTAB”) highlights the overlap between trademark law and food regulatory law as well as the United States’ and Europe’s different approaches to Geographic Indications (“GIs”).  GIs identify the particular location where an agricultural product (such as cheese, wine, or spirits) originates.

Interprofession du Gruyère, a Swiss association, and Syndicat Interprofessionnel du Gruyère, a French association, jointly filed a U.S. trademark application at the U.S. Patent and Trademark Office (“USPTO”) on September 17, 2015 to register the term GRUYERE as a certification mark for cheese.  The Swiss association already owned Registration Number 4,398,395 for the certification mark LE GRUYERE SWITZERLAND AOC and Design.  In the new application, the French and Swiss associations sought to register the term GRUYERE as a word mark, meaning that they made no claim to a particular stylization or design.  In effect, if the USPTO granted registration of the French and Swiss associations’ application, the associations could prevent others in the U.S. from using the term “gruyere” on cheese made outside of the Gruyere region of Switzerland and France.

The U.S. Dairy Export Council and several other entities filed to oppose the associations’ application on the basis that the term “gruyere” is generic for a style of cheese in the U.S.  (In full disclosure, Emily was employed during part of this proceeding at the International Dairy Foods Association, another opposer in the case, and assisted it in this proceeding before joining Husch Blackwell.)  Most of the other entities ultimately withdrew their oppositions or the TTAB dismissed their claims.

The TTAB issued a precedential opinion in favor of the U.S. Dairy Export Council and its fellow opposers, declaring “gruyere” generic for cheese.  U.S. Dairy Export Council v. Interprofession du Gruyère, No. 91232442 (T.T.A.B. Aug. 5, 2020).  The TTAB found a variety of evidence persuasive, such as dictionary definitions of “gruyere” and “gruyere cheese,” use of the term in reference materials like the Oxford Companion To Cheese and The Cheese Lover’s Companion, records from the World Championship Cheese Contest, extensive use by a domestic third party in the nature of annual production of millions of pounds, website evidence showing descriptions of cheese from outside of the Swiss and French regions, the Swiss and French Associations’ limited success in their enforcement actions, and a U.S. Food and Drug Administration (“FDA”) standard of identity for “gruyere” cheese.  Notably, the opposers did not submit a survey.  While the TTAB does not require a survey to evaluate genericness, as the famous trademark treatise author and professor J. Thomas McCarthy has stated, “[c]onsumer surveys have become almost de rigueur in litigation over genericness.”  6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:192 (5th ed.).

Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère recently appealed the TTAB decision to the U.S. District Court for the Eastern District of Virginia (No. 1:20-cv-01174-TSE-TCB).  Time will tell if the TTAB decision “ages well” and is upheld.

An International Perspective on Geographic Indications and Food Standards

Many times, food and beverage producers use GIs to protect the quality and reputation of a distinctive product that comes from a particular region.  Some producers argue that the identification of origin signifies important characteristics of the product, conveying commercial value in differentiating the product from other products in the marketplace, and thereby protecting consumers from allegedly deceptive or misleading labels or products of lesser or different quality.  Some jurisdictions offer unique protection schemes for GIs to protect the use of a GI in connection with a covered product.  For example, in the European Union, GIs are protected under a variety of quality schemes (known as Protected Designation of Origin (“PDO”), Protected Geographic Indication (“PGI”), and Traditional Specialty Guaranteed (“TSG”)) designated by the European Commission.

The EU protects GIs through regulations that “aim[] at protecting the names of specific products to promote their unique characteristics, linked to their geographical origin as well as traditional know-how.”  European Commission, Quality Schemes Explained.  Authorized and protected throughout Member States and in many locations where the EU has established trade relationships, the European Commission created the quality schemes to protect the economic and cultural importance associated with these food names and to defend consumers from food fraud.  Examples include: feta (Greece, cheese), asiago (Italy, cheese), pecorino crotonese (Italy, cheese) and chorizo riojano (Spain, sausage).

A Domestic View of Geographic Indications and Food Standards

In the U.S., GIs receive no special status outside of trademark law.  The USPTO and state agencies may register GIs as trademarks or certification marks.  However, the USPTO does not protect geographic terms that are considered “generic” or “so widely used that consumers view it as designating a category of all of the goods/services of the same type, rather than as a geographic origin.”  USPTO, Geographical Indication Protection in the United States.  U.S. federal or state trademark law may protect both domestic and foreign GIs.  Examples include: IDAHO for potatoes from Idaho, FLORIDA for oranges from Florida, BRUNELLO DI MONTALCINO for wine from the Italian town of Montalcino, COGNAC for distilled spirits from France, and TEQUILA for distilled spirits from Mexico.

Additionally, the FDA and the U.S. Department of Agriculture (“USDA”) have established a variety of standards of identity for various foods including cheeses and meats such as cheddar, edam, bologna, and frankfurter.  These standards of identity act as a recipe that outline the production method and ingredients necessary to label a product with the common name provided in that standard, but do not require the product be made in a specific region or country.  Therefore, if a standard of identity exists for a particular food product, the food must meet all of the specific requirements outlined in the standard to bear that term when sold in the U.S. regardless of where it is produced in the world.

The USPTO recently issued a Trademark Examination Guide to clarify how it views standards of identity and common food names for meats and cheeses in relation to their geographic origins.  Specifically, the USPTO opined, “Because [FDA and USDA] standards of identity relate solely to production methods and ingredients, there is no requirement that the product come from a specific place, even though many of these terms identify a cheese or processed meat that once came only from the place referred to in the name. . . . .”  In other words, standards of identity relate to production methods without regard to place, in contrast to certification marks that tie a quality standard to a geographic origin.

These differing views on how to protect to GIs can cause tension in the international trade context.  The EU generally includes protections for the GIs recognized under its quality schemes when entering into a free trade agreement or trade partnership.  On the other hand, the U.S. has found that these protections effectively limit the ability for U.S. companies, and in some instances local industry, to market products using generic or common food names.  For example, the Comprehensive Economic and Trade Agreement (“CETA”) between Canada and the EU includes the protection of several common food names, such as feta, asiago, fontina, gorgonzola, and munster, and prevents companies from using those names on products (in these examples, cheese) when marketed in Canada unless the product came from the EU region designated in the applicable quality scheme.  However, under CETA, companies may use those terms in the following contexts: (1) a company owns a registered trademark containing the protected name prior to October 18, 2013 and continues to use the mark or (2) the company uses a protected name with a qualifying term such as “kind,” “type,” “style,” or “imitation” in association with the food name.  Even more recently, the EU entered into an agreement with China to protect 100 European GIs in China and 100 Chinese GIs in the EU.  The protected European GIs include several generic claims of importance to U.S. interests such as feta, asiago, and gorgonzola, among others. The agreement is expected to enter into force at the beginning of 2021.

Implications for Trademark Owners

In the new Trademark Examination Guide following the “gruyere” decision, the USPTO opined, “inclusion on the FDA or USDA list is strong evidence that the term is generic for the particular cheese or processed meat . . . .”  It is conceivable that courts and the TTAB may apply such guidance to food and beverage products more broadly.  While GIs present a controversial topic when it comes to macro issues like international trade relations and international protection of intellectual property, GIs also impact food producers when it comes to micro issues like food labeling and brand selection.  For example, the USPTO’s guidance on GIs and standards of identity may influence food producers’ strategy on whether and what type of trademark protection to pursue, whether courts and the USPTO consider a term generic, and whether some restriction precludes use of a term as a brand or even on packaging for descriptive purposes.