French and Swiss consortiums have failed to convince a US appeals court on 3 March that only cheese made in the Gruyère region of France and Switzerland can be labelled Gruyère cheese.

In US Dairy Export Council Atalanta Corporation, and Intercibus Inc v. Interprofession du Gruyère and Syndicat Interprofessionel du Gruyère, the US Court of Appeals for the Fourth Circuit granted summary judgment to dairy industry representative organisation US Dairy Export Council, food importer Atalanta Corporation, and Intercibus Inc. in their opposition to registering gruyere as a certification mark; the certification was applied for by Swiss and French consortiums Interprofession du Gruyère and Syndicat Interprofessionel du Gruyère.

The judgment said: ‘Like a fine cheese, this case has matured and is ripe for our review. For the reasons to follow, we conclude that the term “GRUYERE” is generic as a matter of law and affirm the decision of the district court.”

Richard Zachary Lehv and Daniel M. Nuzzaci from Fross Zelnick Lehrman & Zissu and Carl E. Jennison and John N. Jennison from Jennison & Shultz represented the Swiss and French consortiums.

Fross Zelnick is known for its involvement in high-profile trademark disputes involving household names like Lego and Peloton. Virginia-based Jennison & Shultz focuses on copyright and trademark law.

Heavy hitter Mayer Brown’s Nicole A. Saharsky represented US Dairy Export Council Atalanta Corporation, and Intercibus Inc. She is a co-leader of the firm’s Supreme Court and appellate practice. They were also represented by Brian G. Gilpin, Zachary R. Willenbrink and Jennifer L. Gregor from Godfrey & Kahn which has a robust IP practice, with its head office in Wisconsin and offices in Washington DC.

Gruyère cheese has protected designation of origin (PDO) and protected geographical indication (PGI) in the EU. The judgment notes that 'PDO and PGI designations for “Gruyère” each set forth detailed requirements that dictate the process of gruyere production, including that the cheese be produced in specified areas of Switzerland (pursuant to the Swiss PDO) and France (pursuant to the French PGI).’ Parallel protections, however, do not exist in the US.

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In 2015, Interprofession du Gruyère filed an application to register the term GRUYERE as a certification mark at the US Patent and Trademark Office (USPTO) that would certify that the cheese originates from the Gruyère region of Switzerland and France.

US Dairy Export Council filed an opposition to the mark, arguing that US customers would understand the term ‘gruyere’ to denote a type of cheese that could be produced anywhere. The USPTO’s Trademark Trial and Appeal Board (TTAB) agreed, ruling in 2020 that the word gruyere was too generic to function as a trademark for cheese.

The TTAB determined that the term ‘gruyere’  is generic because ‘purchasers and consumers of cheese understand the term “gruyere” as a designation that primarily refers to a category within the genus of cheese that can come from anywhere'.

The Swiss and French consortiums then went to the District Court for the Eastern District of Virginia which agreed with the TTAB - ruling that the term had become generic through genericide and was no longer eligible to be registered as a certification mark.

The appeal court judgment noted that the Food and Drug Administration has issued a standard of identity for Gruyere cheese, which sets forth requirements that must be met for cheese to be labeled as ‘those requirements are far less stringent than those governing gruyere production in Switzerland and France. For example, and as specifically relevant  to this appeal, the FDA standard of identity does not impose any geographic restrictions as to where gruyere-labelled cheese can be produced'.

President and CEO of the US Dairy Export Council Krysta Harden said: “This is an outstanding result for manufacturers and farmers here in the United States. We’re grateful that the Appeals Court agreed that nobody owns the exclusive right to use generic terms. This sets a terrific precedent for the right to use common food names in the United States. Now we need other countries to likewise stand up for what’s right and defend that use just as strongly.”