Over the first two quarters of 2021, the Consortium for Common Food Names (CCFN) and a coalition of other U.S. dairy stakeholders aggressively defended the generic status of the term “gruyere” in the U.S. market against efforts by the Swiss and French gruyere Consortiums to monopolize use of the term.

Last year the U.S. Patent and Trademark Office’s Trial and Appeal Board (USPTO) rejected a Swiss and French trademark application seeking sole use of the term “gruyere”; USPTO rightfully ruled that the term was generic. Late last year the foreign Consortiums appealed that ruling to the U.S. District Court for the Eastern District of Virginia and CCFN has been leading efforts to maintain the precedential USPTO determination ever since.

In spring of this year, CCFN’s attorneys submitted briefs in the case and outlined during oral arguments a strong case for why summary judgement to uphold the earlier USPTO ruling was merited. At press time, a ruling in the case remained pending.

CCFN Executive Director Jaime Castaneda stated that “CCFN views this case as an important piece of our work to help companies retain their rights to use food and beverage terms long established in the marketplace despite predatory efforts by foreign interests to restrict those rights. USPTO carefully considered this issue last year and came to the only appropriate conclusion – that the wide-spread use of the term “gruyere” in the U.S. market clearly establishes it as a generic term and as such makes it wrong for any one interest group to monopolize usage of it.”

In a testament to years of CCFN advocacy efforts to elevate the issue of GI abuse to U.S. government officials, the Office of the U.S. Trade Representative highlighted the issue in its annual National Trade Estimate (NTE) report on tariff and non-tariff barriers to U.S. exports. The issue of common names was included in USTR’s press statement on the report, with the agency viewing the issue as a priority concern.

The comprehensive 570-page NTE report, released in late March 2021, captures the broad range of tariff and non-tariff barriers to U.S. goods and services exports put in place by countries around the world. Restrictions on the use of common food names was cited as a priority trade impediment that American producers face when seeking to export their generically named foods and beverages.

The European Union (EU) has been, and continues to be, a particularly bad actor with regard to the misuse of GI protections. USTR noted that the “U.S. remains highly troubled by the EU’s overbroad protection of GIs, which adversely impact both protections of U.S. trademarks and market access for U.S. products that use common names in the EU and third country markets.”

“USTR’s recognition of GI misuse as a means of confiscating market share is an important step toward addressing this problem,” said Jaime Castaneda, CCFN Executive Director. “We are encouraged that CCFN members’ persistent work alongside the U.S. government on this issue has elevated the concerns surrounding GI abuse from a relatively obscure issue just a decade ago to a priority for the agency.”

“It is imperative that USTR and its interagency partners work to ensure common names are not further restricted by the EU’s blatant attempts at monopolizing generic terms that consumers around the world have come to know and love,” Castaneda said.

CCFN is continuing to work with USTR to build on the precedent set in the recent U.S.-Mexico-Canada Agreement (USMCA) of including in all U.S. trade deals a list of common food names (e.g., in the case of USMCA, cheese names) that will be protected in perpetuity from countries imposing GI restrictions on them.

At U.S. Trade Representative Tai’s Senate confirmation hearing in late February 2021, Tai told Senators on the Finance Committee that she would prioritize protecting the use of common food names in future trade negotiations. She noted that the United States secured historic protections for common food names in the U.S.-Mexico-Canada Agreement (USMCA) and that she would build on that success in future trade negotiations. This follows on the heels of CCFN’s extensive work throughout last year to re-educated Congressional offices on the issue of common names and to press USTR to expand protections for those terms as it negotiates with trading partners.

In a March 2021 letter organized by CCFN, a broad cross-section of national food, agriculture, and beverage associations urged the new U.S. Trade Representative to preserve U.S. exporters’ foreign market access by protecting their rights to use common food and beverage terms around the world and rejecting EU-led efforts to hamstring global competition through restricting the use of those terms. The groups called out the EU’s continued use of trade agreements to impose barriers barring the United States and other nations from competing on a level playing field in the sale of various commonly named food and beverage products.

Tai, who was confirmed in mid-March, also has been receptive to on the need to address the growing challenges facing the use of commonly named products. As noted above, under her leadership, USTR recently issued two reports – the National Trade Estimate and the Special 301 (see above) – that included the U.S. government’s commitment to contest the EU’s continued misuse of GIs as a way of limiting exports to the EU and even to countries with which it has trade agreements.

Ambassador Tai also participated in the Hybrid Annual Meeting for the National Association of State Departments of Agriculture in September, and when pressed about the U.S. – Mexico – Canada Agreement and GIs, she offered her strong support for common names, saying that she “understands the concerns of dairy producers, and particularly cheese manufacturers who want to export cheeses using common names for types of cheeses that they’ve been producing for decades and in some cases over generations. I want everyone to know that at USTR we remain committed to enforcing all the provisions in this agreement and certainly [to] ensuring that Canada and Mexico live up to their promises for our American dairy farmers.”

In May 2021, the Office of the U.S. Trade Representative (USTR) issued its Special 301 report on intellectual property protection, which included dealing with the misuse of GI protections as a trade priority. To help inform the report, in January, CCFN filed with USTR extensive comments, outlining GI-related developments, the roles of foreign governments in driving those policies, and the impacts on U.S. farmers and food producers.

In the report, which annually details the global challenges related to intellectual property, USTR noted the EU’s policy of blocking fair competition through the adoption of GIs that restrict the use of common food and beverage names.

In response to the EU’s aggressive promotion of exclusionary GI policies, the report said, the United States will work to ensure that:

• GI protections do not violate prior rights, such as a U.S. company with a trademark that includes a place name, for example, and do not deprive interested parties the ability to use common names, such as “parmesan” or “feta.”
• Interested parties have notice of, and opportunity to oppose or seek cancellation of, any GI protection that is sought or granted.
• Notices issued when granting a GI consisting of multiple terms identify the common name components.

USTR also indicated it will oppose efforts to extend the protection given to GIs for wines and spirits to other products.

The International Trademark Association (INTA) utilized ample input from CCFN in its comments to the European Commission on their consideration of non-agricultural geographical indications (GIs). CCFN regularly seized GI-related opportunities for comment offered by the EU and other countries in order to consistently outline the core elements of well-designed GI systems.

CCFN submitted its input to INTA earlier this year as part of its active work on the INTA GI Committee. Among the points CCFN emphasized were three key elements:

1. GI protections must be coupled with a heightened level of clarity and transparency in relation to the process and scope of GI registration as well as procedural safeguards and a balancing of the public’s interests.
2. There must be improved clarity and limits in relation to the objectives and scope of GI protection in the EU. This would include clear exclusions from the scope of protection for GIs to avoid restricting common terms.
3. There is a need for a straight-forward, transparent, and fair GI application and examination process, where the evidentiary and financial burdens are distributed fairly between interested parties.

In INTA’s comments to the European Commission, it advocated for ensuring that the process for registering non-agricultural GIs is clear and constitutes effective governance. INTA’s recommendations for any regulation of GIs include the importance of providing effective and transparent mechanisms for addressing:

1. Applications for GIs, applications for amendments, and applications for cancellation; and
2. Opposition, cancellation, and notification procedures that recognize pre-existing trademark rights with which GIs might conflict or cause confusion.

INTA’s exhortation to the EU echoed CCFN’s key themes of the risk that excessive protection poses to generic users: “INTA notes that an additional EU protection regime for non-agricultural GIs has the potential to create many conflicts between newly created non-agricultural GIs and the numerous pre-existing trademark rights protected in the Single Market and pre-existing generic terms unless careful safeguards are introduced. Such safeguards should aim to ensure a fair and transparent system, with maximum legal certainty on the scope of protection of the newly created GIs for a minimum disruption of pre-existing rights. An excessive scope of protection could unduly prejudice the existing rights of trademark holders and limit the freedom to use generic terms. The GI protection regime in the European Union needs to be fair and effective.”

In June 2021, CCFN presented in a webinar sponsored by USPTO and the African Regional Intellectual Property Organization (ARIPO) focused on the use of common names and GIs in Africa. Approximately 60 participants across the ARIPO 19-country region participated in the event.

Former U.S. Chief Agricultural Negotiator, Ambassador Al Johnson, provided a presentation on behalf of CCFN. The presentation covered the history of common names in intellectual property (IP) and the marketplace, and the importance of protecting the rights of common name users, including producers and consumers in Africa. In addition, it outlined proposals as to how these African countries can manage their IP processes to ensure transparency and due process that results in fair and objective decisions that avoid the granting of unjustified GI name monopolies.

This event is part of a series of educational efforts by USPTO in cooperation with CCFN to educate intellectual property officials in Africa and other regions about GI issues and the importance of ensuring producers and consumers who rely on generic terms retain the right to use them.