ARLINGTON, VA – A judicial ruling has determined that “gruyere” is a generic style of cheese that can come from anywhere. The decision reaffirms that all cheesemakers, not just those in France or Switzerland, can continue to create and market cheese under this common name.

In the judicial decision made public yesterday evening, the Consortium for Common Food Names (CCFN), U.S. Dairy Export Council (USDEC), National Milk Producers Federation (NMPF), and a coalition of other dairy stakeholders prevailed in their sustained fight to preserve the ability of all actors in the U.S. marketplace to use generic terms.

Senior Judge T. S. Ellis III of the United States District Court for the Eastern District of Virginia upheld the August 5, 2020, precedential decision of the U.S. Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board.

“Not only is this a landmark victory for American dairy farmers and cheese producers who offer gruyere, this win sets a vital precedent in the much larger, ongoing battle over food names in the United States,” said Jaime Castaneda, executive director for CCFN. “The European Union has tried for years to monopolize common names such as gruyere, parmesan, bologna or chateau. This verdict validates that we’re on the right path in our fight on behalf of American food and wine producers to preserve their ability to use long-established generic names.”

According to the Court’s decision, the arguments of the French and Swiss associations were “insufficient and unconvincing” and CCFN presented “overwhelming evidence that cheese purchasers in the United States understand the term GRUYERE to be a generic term which refers to a type of cheese without restriction as to where that cheese is produced.”

Meanwhile, Europe continues its aggressive and predatory efforts to confiscate names that entered the public domain decades ago. The latest attack was launched by the French and Swiss gruyere associations which had sought to register “Gruyere” as a certification mark in the United States, thereby enabling them to prevent use of the generic term by others in the U.S. marketplace. The USPTO determined last year that the application should be denied, in the process upholding the widespread generic use in the U.S. of the term “gruyere.”

“French and Swiss gruyere producers already have access to the U.S. market and the use of distinctive trademark logos,” noted Castaneda. “In fact, the Swiss association has already registered a logo certification mark with the USPTO for ‘Le Gruyère Switzerland AOC’ to help it uniquely brand Swiss gruyere. Despite this, both foreign associations appealed the USPTO’s ruling to the federal court last year.”

With support from USDEC and NMPF, their member companies, and non-member companies that contributed to supporting the opposition, CCFN dedicated extensive time and resources throughout the appeal process to demonstrate the extensive use of gruyere in the U.S. marketplace and persuasively argue that all cheesemakers and their customers should retain their rights to continue to produce and sell gruyere in the United States.

“This is a huge victory for common sense and for hard-working manufacturers and dairy farmers,” said Krysta Harden, USDEC president and CEO. “When a word is used by multiple companies in multiple stores and restaurants every day for years, as gruyere has been, that word is generic, and no one owns the exclusive right to use it. We are gratified that Judge Ellis saw this straightforward situation so clearly and upheld the USPTO Trademark Trial and Appeal Board’s finding that gruyere is an established generic term.”

“NMPF continues to firmly oppose any attempt to monopolize generic names like gruyere and to reject blatant European market-share grabs designed to limit competition,” said Jim Mulhern, NMPF president and CEO. “Today’s announcement is a landmark win for American dairy farmers and the commonly named cheeses they produce and sell around the world.”

CCFN, USDEC, and NMPF support valid geographical indications (GIs) – compound names associated with specialized foods from regions throughout the world – when used in good faith rather than to establish unfair trade barriers to the sale of common name foods and beverages.

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.”