Case 1:20-cv-01174-TSE-TCB Document 106 Filed 12/15/21 Page 1 of 32 PageID# 3510
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` IN THE UNITED STATES DISTRICT COURT FOR THE
`EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
`
`INTERPROFESSION DU GRUYÈRE, et al.,
` Plaintiffs,
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`v.
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`U.S. DAIRY EXPORT COUNCIL, et al.,
`Defendants.
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`)
`)
`)
`)
`)
`)
`)
`
`MEMORANDUM OPINION
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`Civil Action No. 1:20-cv-1174
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`This is a dispute between European and American cheesemakers over whether the term
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`GRUYERE should receive geographic trademark protection such that the term may only be used
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`to identify and describe cheeses produced in certain portions of Switzerland and France, or whether
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`the term GRUYERE is understood by cheese purchasers in the United States to be generic in that
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`it refers to a type of cheese without regard to where that cheese is produced. Plaintiffs filed an
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`application with the United States Patent and Trademark Office (“USPTO”) to register the term
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`GRUYERE as a certification mark pursuant to 15 U.S.C. § 1127. Defendants filed an opposition
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`to that certification mark application with the Trademark Trials and Appeals Board (“TTAB”),
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`arguing that the term GRUYERE is generic. The matter was heard by the TTAB, which issued a
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`written opinion holding that the term GRUYERE is generic for a type of cheese without regard to
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`the cheese’s geographic origins and sustained the opposition to the certification mark. Thereafter,
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`plaintiffs filed this civil action contesting the TTAB’s decision pursuant to 15 U.S.C. § 1071(b).
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`In accordance with § 1071(b) the parties have engaged in additional discovery and
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`supplemented the factual record. At issue now is defendants’ motion for summary judgment, see
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`Dkt. 62, which has been fully briefed and argued orally, and is therefore now ripe for disposition.
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`1
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`I.
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`
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`The central question presented by this case is whether cheese purchasers in the United
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`States understand the term GRUYERE to refer only to a specific type of cheese produced in the
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`Gruyère region of Switzerland and France or whether cheese purchasers in the United States
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`instead understand GRUYERE as a generic term which refers to a type of cheese regardless of
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`where the cheese is produced.
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`Plaintiffs in this case are two European consortiums, the Swiss Interprofession du Gruyère
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`and the French Syndicat Interprofessional du Gruyère (hereinafter referred to collectively as
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`“plaintiffs”). In 2015, plaintiffs filed an application for a certification mark with USPTO for the
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`term GRUYERE. The certification mark would “certif[y] that the cheese originates in the Gruyère
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`region of Switzerland and France.” Application Serial No. 86759759, filed September 17, 2015.
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`Defendants in this case, the United States Dairy Export Council, the Atalanta Corporation, and
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`Intercibus Inc. (hereinafter referred to collectively as “defendants”), filed an opposition to
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`plaintiffs’ application for the certification mark, arguing that cheese purchasers in the United States
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`understand GRUYERE to be a generic term referring to a type of cheese that can be produced
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`anywhere. The parties developed an extensive record, consisting of affidavits, sales data, and
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`reference materials, and argued the issue fully before the TTAB. At the end of that proceeding, the
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`TTAB issued a detailed opinion, concluding that United States purchasers and consumers of
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`cheese understand the term GRUYERE to refer to a type of cheese that can be produced anywhere.
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`Accordingly, the TTAB sustained the opposition to the Consortium’s application for a certification
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`mark on the ground that the term GRUYERE had become generic.1
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`1 Defendants also challenged the proposed certification mark—both before TTAB and in the
`present case—on the ground that plaintiffs failed to exercise legitimate control over the
`certification mark and that the mark should therefore be invalidated. The TTAB opinion did not
`2
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`II.
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`
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`The procedural and substantive legal principles that govern this case are undisputed and
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`well-settled. Thus, the procedural principles are as follows. Summary judgment is appropriate
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`when there is “no genuine issue as to any material fact” and based on those undisputed facts the
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`moving party “is entitled to judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317,
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`322 (1986). The party moving for summary judgment “bears the initial burden” of showing that
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`no genuine dispute of material fact exists. Atkins v. Glaser T, 823 F. App’x 218, 219 (4th Cir.
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`2020). To serve as a bar to summary judgment, facts must be “material,” which means that the
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`disputed fact “might affect the outcome of the suit under the governing law.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 248 (1986). The party opposing summary judgment must provide more
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`than mere denials and allegations to create a dispute of material fact and must instead “set forth
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`specific facts showing that there is a genuine issue for trial.” Id. Importantly, at the summary
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`judgment stage, courts must “view the evidence in the light most favorable to . . . the non-movant.”
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`Dennis v. Columbia Colleton Med. Ctr., Inc., 290 F.3d 639, 645 (4th Cir. 2002).
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`
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`The substantive legal principles governing this case are also essentially undisputed. This
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`matter involves an application for a certification mark, which is defined under the Trademark Act
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`as “any word, name, symbol, or device” used “to certify regional or other origin, material, mode
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`of manufacture, quality, accuracy, or other characteristics” of goods. 15 U.S.C. § 1127. As the
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`TTAB has explained, “[g]eographic certification marks are used to certify that authorized users’
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`goods or services originate in a specific geographic region.” In Re St. Julian Wine Co., Inc., No.
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`reach the lack of control argument because it sustained defendants’ challenge on genericness. It
`is similarly unnecessary to address the lack of control arguments here, as defendants once again
`prevail on genericness. Further, genericness, and not lack of control, was the primary thrust of
`the briefing on this motion for summary judgment.
`3
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`Case 1:20-cv-01174-TSE-TCB Document 106 Filed 12/15/21 Page 4 of 32 PageID# 3513
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`87834973, 2020 WL 2788005, at *3 (TTAB, May 27, 2020). For example, certification marks
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`have been approved for the term Roquefort (applied to cheese from a specific municipality in
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`France, see Cmty. of Roquefort v. William Faehndrich, Inc., 303 F.2d 494 (2d Cir. 1962)), for the
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`name Cognac (applied to brandy distilled in a certain region of France, see Bureau Nat’l
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`Interprofessionnel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988)), and
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`the phrase Sunshine Tree (applied to citrus fruits originating in the state of Florida, see State of
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`Fla., Dep’t of Citrus v. Real Juices, Inc., 330 F. Supp. 428 (M.D. Fla. 1971)). Section 4 of the
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`Lanham Act provides that “certification marks, including indications of regional origin, shall be
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`registrable under this chapter, in the same manner and with the same effect as are trademarks.” 15
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`U.S.C. § 1054. Accordingly, the decision to grant or reject a certification mark application involves
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`consideration of similar factors as the decision to grant or reject a trademark application.
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`This case arises under 15 U.S.C. § 1071(b), which “permits a party in a trademark suit to
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`initiate a civil action [in district court] in the place of an appeal of the TTAB’s determination to
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`the Federal Circuit.” Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014). In
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`a § 1071(b) proceeding, the parties may introduce the record the TTAB relied on and may
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`supplement that record with additional evidence. When new evidence is offered in a § 1071(b)
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`proceeding, district courts “must make de novo factual findings that take account of both the new
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`evidence and the administrative record.” Kappos v. Hyatt, 566 U.S. 431, 446 (2012). The Fourth
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`Circuit has made clear that district courts must review both the administrative record and any new
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`evidence de novo, in comparison to the more deferential substantial evidence standard applied
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`when a party appeals a TTAB decision to the Federal Circuit. See Shammas v. Focarino, 784 F.3d
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`219, 225 (4th Cir. 2015). Thus, the determination of genericness in this case is made de novo, and
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`the TTAB’s opinion is not given deference. The Fourth Circuit has further clarified that in
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`4
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`§ 1071(b) proceedings the district court, and not a jury, “acts as the trier of fact.” Id.; see also
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`Belmora LLC v. Bayer Consumer Care AG, 987 F.3d 284, 298 (4th Cir. 2021), cert. denied, No.
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`21-195, 2021 WL 5284616 (U.S. Nov. 15, 2021).
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`
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`III.
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`
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`Given that summary judgment is appropriate only where there are no genuine disputes of
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`material fact, see Fed. R. Civ. P. 56, this analysis properly begins by identifying the record facts
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`as to which no genuine dispute exists. Local Rule 56(B) directs a movant for summary judgment
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`to include in its submission a section listing all material facts as to which the movant contends no
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`genuine dispute exists. The nonmovant must then respond to each numbered paragraph, either
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`admitting or contesting the putative undisputed fact and citing admissible record evidence to
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`establish a genuine dispute of material fact. The nonmovant’s failure to respond to a fact listed by
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`the movant constitutes an admission that the fact is undisputed. Local Rule 56(B). Accordingly,
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`the facts recited here are derived from defendants’ list of material facts and plaintiffs’ responses.
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`• GRUYERE cheese production dates to at least 1115 AD, and GRUYERE cheese
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`originated in western Switzerland in the Gruyère region in the Canton of Fribourg. In time,
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`GRUYERE production expanded to east-central France along the border between
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`Switzerland and France. Swiss and French GRUYERE producers make cheese from the
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`unpasteurized milk of cows that graze on alpine grasses. The resulting cheese goes through
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`a rigorous aging and production process.
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`• GRUYERE cheese has been granted protected status in Europe. Specifically, in 2011, the
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`European Union recognized Swiss GRUYERE with a protected designation of origin
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`(“PDO”). In 2012, France’s National Institute of Origin and Quality approved a protected
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`geographical origin (“PGI”) for French GRUYERE. These PDO and PGI indications
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`5
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`require that GRUYERE cheese cannot be sold in the European Union unless it is produced
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`in the Gruyère region spanning an area across Switzerland and France and meets other
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`quality standards.2
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`•
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`In 2010, the Swiss Consortium applied to the USPTO to register the words “LE
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`GRUYERE” as a certification mark for cheese produced in Switzerland (but not cheese
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`produced in France). The USPTO rejected the mark, finding that “‘GRUYERE’ is a type
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`or class of firm cheese made of cow’s milk with a rich and nutty flavor” and that
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`GRUYERE was a generic term for this type of cheese. Dkt. 69-1 at 7–10.
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`•
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`In 2013, the Swiss Consortium sought and received from the USPTO a certification mark
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`for a design with stylized font, the letters “AOC”, a Swiss cross, and the words “LE
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`GRUYÈRE SWITZERLAND.” This design can be applied to cheese sold in the United
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`States only if the cheese originates in the Gruyère region of Switzerland (but not France).
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`The certification mark is pictured below.
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`2 The parties do not dispute that the PDO and PGI designations do not control the use of the term
`GRUYERE in the United States. Any restriction on the use of the term GRUYERE in the
`United States must be governed by the trademark law of this country.
`6
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`• The design certification mark for “LE GRUYERE SWITZERLAND AOC,” is distinct
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`from the certification mark at issue in this case. The design certification mark that the Swiss
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`plaintiff has already obtained simply means that when a cheese bears the design
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`certification mark (stating “LE GRUYERE SWITZERLAND AOC” and featuring the
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`graphic of the Swiss cross) that cheese must come from Switzerland. The certification mark
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`sought by plaintiffs in this case is much broader and would require that any time the term
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`GRUYERE is used on cheese that the cheese must have been produced in the Gruyère
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`region of Switzerland and France. There is no dispute that the outcome of the present case
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`does not affect the validity of the design mark that the Swiss plaintiff has already obtained.
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`• Data from the United States Department of Agriculture (“USDA”) shows that, as of 1995
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`(the earliest year for which data is available) cheese labeled GRUYERE was imported into
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`the United States from Switzerland, France, the Netherlands, Germany, Austria, Belgium,
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`and Denmark. USDA data also shows that from 2010–2020, cheese labeled GRUYERE
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`was imported into the United States from Switzerland, France, the Netherlands, Germany,
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`Egypt, Denmark, Austria, Belgium, Ireland, the Czech Republic, Italy, and Tunisia.
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`• Cheese produced in the United States has been sold as GRUYERE since at least 1987. At
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`that time, Roth Käse, an American cheesemaker, imported Swiss-style manufacturing
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`equipment and began producing cheese in Wisconsin which was labeled and sold as
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`GRUYERE in the United States.
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`•
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`In 2010, Roth Käse was purchased by Emmi AG, a Swiss company and a member of the
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`Swiss Consortium that is one of the plaintiffs in this case. Roth Käse and Emmi AG merged
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`their U.S. operations, which became Emmi Roth USA, Inc. (“Emmi Roth”).
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`• Currently, Emmi Roth produces sells some of its cheese through its own house brand,
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`7
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`“Roth,” and sells the remainder of its cheese through private label sales to numerous
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`retailers that sell Roth cheese under their own brands and labels. In 2013, Emmi Roth and
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`the Swiss Consortium reached an agreement that Roth would stop using the term
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`GRUYERE on its house brand and would instead call the cheese “Grand Cru.” Notably,
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`this change did not apply to Roth’s private label customers, which remain free to use the
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`term GRUYERE when they resell Roth’s cheese products to customers in the United
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`States. As part of the agreement between Emmi Roth and plaintiffs, Roth agreed to educate
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`its customers that they should not use GRUYERE to describe cheese made in Wisconsin,
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`but the customers remain free to use the term GRUYERE as a label for their cheese if they
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`choose to do so.
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`•
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`In September 2014, Roth sent a letter to the grocery store chain Wegmans, one of Roth’s
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`private label customers, acknowledging that Wegmans sells Roth’s Wisconsin-made
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`cheese as GRUYERE in Wegmans grocery stores. See Dkt. 72-4 at 54. In this letter, an
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`executive for Roth write that “[w]e know of course that Wegman’s sells our Wisconsin-
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`made Grand Cru® cheese under Wegmans private label as ‘Mild Gruyere.’” Id.
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`Significantly, the Roth executive did not object to Wegmans labeling its American-
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`produced cheese as GRUYERE, but instead explained that Roth “fully support[s] our
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`customers’ rights to determine the labeling of their private label products.” Id.
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`• From 2014–2020, Emmi Roth sold more than
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` of cheese for consumption
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`in the U.S. market, including
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` of cheese in 2020 alone. Some of this cheese
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`was sold under Roth’s own label and marked as “Grand Cru,” some was sold by private
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`label customers as GRUYERE, and some was sold by private label customers under other
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`labels. All of this cheese was made in Wisconsin.
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`• There is no record that plaintiffs attempted to police the use of the term GRUYERE in the
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`United States prior to 2012. Plaintiffs did undertake efforts to protect the term GRUYERE
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`from 2012 to 2017. These efforts included sending letters asking retailers and
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`manufacturers to cease using the term GRUYERE to label cheeses which were not
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`produced in the Gruyère region of Switzerland and France. These attempts to control the
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`use of the term GRUYERE achieved only limited success. Some cheese sellers, including
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`Ammerland Dairy in Germany and the Wisconsin Milk Marketing Board, agreed to comply
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`and stopped using the term GRUYERE to refer to cheeses not made in the Gruyère region
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`of Switzerland and France. But many producers and retailers continued to use the term
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`GRUYERE to label cheeses created outside the Gruyère region of Switzerland and France,
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`including Boars’ Head, Dairyfood USA, Dietz & Watson, Finlandia, Intersouce, Red
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`Apple, Trader Joe’s, Wegmans, and Wood River Creamery.
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`•
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`In 2015, plaintiffs filed the application with the USPTO at issue in this case, seeking to
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`register the standard character term “Gruyere” (without the design previously registered in
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`2013 limited to Switzerland) as applied to cheese products. That application is the subject
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`of this case. The application for the certification mark explains that “[t]he certification
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`mark, as used by persons authorized by the certifier, certifies that the cheese originates in
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`the Gruyère region of Switzerland and France.” Application Serial No. 86759759, filed
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`September 17, 2015.3
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`3 The application for the certification mark further explains that the Gruyère region includes
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`1) In Switzerland this region includes the cantons of Fribourg, Vaud, Neuchatel,
`Jura, and the districts of Courtelary, La Neuveville, Moutier as well as the
`communes of Ferenbalm, Guggisberg, Mühleberg, Münchenwiler, Rüschegg and
`Wahlern of the canton of Bern. 2). In France this region includes the departments
`of Doubs, Jura, Haute-Saône, Savoie and Haute-Savoie as well as the cantons of
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`• The USPTO approved the 2015 application, and defendants subsequently filed an
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`opposition. In proceedings before the TTAB, defendants argued that the certification mark
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`was invalid for two reasons: (1) the term GRUYERE is generic and therefore unregistrable
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`and (2) that plaintiffs failed to exercise legitimate control over the mark. The TTAB ruled
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`in defendants’ favor on the ground of genericness and did not reach the control issue.
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`• The TTAB opinion considered a variety of evidence, including reference materials, U.S.
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`food labeling standards, commercial sales data, industry practice, and internet evidence.
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`• After plaintiffs initiated this review of the TTAB decision, the parties engaged in additional
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`discovery and further supplemented the record. This additional evidence includes
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`deposition testimony from cheese industry experts, reference materials information from
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`U.S. customs data about imports of cheese labeled GRUYERE, and sales information
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`about Glanbia, a new cheesemaker in the United States that sells cheese labeled as
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`GRUYERE.
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`Amberieu-en-Bugey, Bellegarde-sur-Valserine, Belley, Brénod, Ceyzériat,
`Champagne-en-Valromey, Coligny, Collonges, Ferney-Voltaire, Gex, Hauteville-
`Lompnes, Izernore, Lagnieu, Lhuis, Nantua, Oyonnax-Nord, Poncin, Pont- d'Ain,
`Saint-Rambert-en-Bugey, Seyssel, Treffort- Cuisiat, Virieu-le-Grand, Péronnas,
`Oyonnax-Sud, Viriat, Oyonnax, Bourg-en-Bresse in the department of Ain, the
`cantons of Fontaine-Française, Saint-Jean- de-Losne, Seurre in the department of
`Côte-d'Or, the cantons of Saint-Laurent-du-Pont and Touvet in the department of
`Isère, the cantons of Bourbonne-les- Bains, Bourmont, Clefmont, Fayl-la-Forêt,
`Laferté- sur-Amance, Langres, Longeau-Percey, Val-de- Meuse, Neuilly-
`l'Evêque, Nogent, Prauthoy, Terre- Natale in the department of Haute-Marne, the
`cantons of Beaurepaire-en-Bresse, Cuiseaux, Pierre-de-Bresse, Saint-Germain-du-
`bois in the department of Saône-et- Loire, the cantons of Bains-les-Bains, Darney,
`Lamarche, Monthureux-sur- Saône, Plombières-les- Bains, Xertigny in the
`department of Vosges, the cantons of Delle, Fontaine, Giromagny, Rougemont-
`le-Château, Valdoie, Châtenois -les-Forges, Danjoutin, Beaucort, Grandvillars,
`Offemont, Belfor in the department of Territoire de Belfort.
`Application Serial No. 86759759, filed September 17, 2015. This Order refers to this area
`as the “Gruyère region of Switzerland and France” for ease of reference.
`10
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`IV.
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`
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`It is undisputed that “[w]hether an asserted mark is generic or descriptive,” which is the
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`central issue in this motion, “is a question of fact.” Royal Crown Co., Inc. v. The Coca-Cola Co.,
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`892 F.3d 1358, 1364 (Fed. Cir. 2018). Although questions of fact are not often appropriate for
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`resolution on a motion for summary judgment, the Fourth Circuit has held that a challenge to a
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`term’s genericness can be properly resolved on summary judgment where “the evidence of
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`genericness was so one-sided that no genuine issue of fact existed.” Retail Servs., Inc. v.
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`Freebies Publ’g, 364 F.3d 535, 546 (4th Cir. 2004); accord Institut National Des Appellations
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`D’Origine v. Vintners Int’l Co., 958 F.2d 1574 (Fed. Cir. 1992) (affirming a grant of summary
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`judgment where the record showed “no genuine dispute as to whether Chablis is used in the
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`United States as the generic name for a type of wine with the general characteristics of French
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`Chablis.”) (internal quotations omitted). The Federal Circuit has also noted that genericness may
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`be resolved on summary judgment where “uncontested evidence of genericness” if the non-
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`moving party offers only weak, “indirect evidence [that] cannot raise a genuine issue of material
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`fact even when considered in a light most favorable to” the non-moving party. BellSouth Corp. v.
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`DataNational Corp., 60 F.3d 1565, 1571 (Fed. Cir. 1995).
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`Summary judgment in this case may also be appropriately considered because, as
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`previously discussed, “a district court in a § 1071(b) action reviews the record de novo and acts
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`as the finder of fact.” Belmora LLC, 987 F.3d at 298. Therefore, if summary judgment on this
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`motion is denied, the case will proceed to a bench trial and not a jury trial. It is true that a
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`different standard of review applies at a motion for summary judgment than would apply at a
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`bench trial, as a motion for summary judgment requires that a district court “view the evidence in
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`the light most favorable to . . . the non-movant,” Dennis, 290 F.3d at 639, while at a bench trial, a
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`district judge is required to assess the credibility of witnesses and “has the duty to weigh
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`evidence and draw reasonable inferences and deductions from that evidence.” Invs. Title Ins. Co.
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`v. Bair, 296 F. App’x 332, 333 (4th Cir. 2008). But given the Fourth Circuit’s command that
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`district court judges act as finders of fact in § 1071(b) actions, the Court would be required to
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`find further facts as needed from the complete factual record compiled by the parties in this
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`proceeding were the case to go to trial. In that respect, therefore, the Court would find the
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`following facts from the factual record:
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`• Roth Käse was founded in the United States in 1987 with the purpose of producing
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`GRUYERE cheese in the United States and first produced cheese in 1992. Dkt. 73-5 at
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`6. Roth Käse produced hundreds of thousands of pounds of cheese in the United States in
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`its first year, with its flagship cheese labeled as GRUYERE as. Id. In 2010, Roth Käse
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`was sold to Emmi AG, a Swiss company, and the two entities merged to form Emmi
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`Roth. At the time of the merger, Roth Käse was producing in the United States and
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`selling approximately
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` of cheese labeled as GRUYERE every year.
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`Id.
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`• Even after the merger between Roth Käse and Emmi AG, Emmi Roth continued
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`producing cheese in the United States and selling that cheese as GRUYERE in the
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`United States, under both its own label and through private label customers that resold
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`that cheese. In 2012 Emmi Roth sold nearly
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` of its U.S.-made cheese
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`labeled as GRUYERE under its own Roth brand and sold an additional
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` of this cheese through its private label customers who could label the cheese any
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`way they wished. The below sales figures show the annual pounds of U.S.-made cheese
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`labeled as GRUYERE sold by Emmi Roth from 2012 to 2020. Although the bottom row
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`of the chart is labeled “Domestic Private Label Branded Gruyere,” only some of Emmi
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`Roth’s private label customers actually resell the cheese as GRUYERE, and they are not
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`required to use that name.
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`
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`• The term GRUYERE has been applied to non-Swiss, non-French-produced cheeses by
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`U.S. cheesemakers and cheese retailers for decades. Not until 2012 did plaintiffs begin
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`efforts to control the use of the term GRUYERE in the United States, and those efforts
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`have met only limited success. Indeed, many prominent retailers continue to use the term
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`GRUYERE without respect to the geographic origin of the cheese, and defendants have
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`introduced undisputed evidence that hundreds of thousands of pounds cheeses labeled as
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`GRUYERE are either produced in the United States or imported from regions other than
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`the Gruyère region of Switzerland and France and sold in the United States every year.
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`•
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`In 2016, a new company, Glanbia, began producing cheese in Idaho that it sells in the
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`United States labeled as GRUYERE. Glanbia sold over
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` of
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`GRUYERE cheese in 2018 and 2019, and sold over
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` of
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`GRUYERE in 2020.
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`• The record evidence shows that more than
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` of GRUYERE cheese
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`produced outside the Gruyère region of Switzerland and France were sold in the United
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`States in each year from 2016 to 2020. This includes sales of GRUYERE cheese
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`produced in the United States by Emmi Roth and Glanbia.
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`As noted, the central issue in this matter is whether the term GRUYERE has become
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`IV.
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`Case 1:20-cv-01174-TSE-TCB Document 106 Filed 12/15/21 Page 14 of 32 PageID# 3523
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`generic for a certain type of cheese and is no longer understood to refer only to cheese which
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`comes from the Gruyère region of Switzerland and France. Also as noted, the legal principles that
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`govern genericness are well-settled. It is textbook law that “generic terms can never obtain
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`trademark protection.” Booking.com B.V. v. United States Pat. & Trademark Off., 915 F.3d 171,
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`177 (4th Cir.), as amended (Feb. 27, 2019), aff’d, 140 S. Ct. 2298 (2020). As the Supreme Court
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`has explained, “[a] generic name—the name of a class of products or services—is ineligible for
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`federal registration” as either a trademark or as certification mark. U.S. Pat. and Trademark Off.
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`v. Booking.com B.V., 140 S. Ct. 2298, 2301 (2020). Generic terms are ineligible for certification
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`mark protection, or indeed any trademark protection, because they are incapable of telling
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`consumers where the product with a generic name was produced. Id. at 2303.
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`
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`A term which was once non-generic and conveyed the quality or origins of good can
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`become generic over time through a process called genericide, which occurs when a generic term
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`“ceases to identify in the public’s mind the particular source of a product or service but rather
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`identifies a class of product or service, regardless of source.” Glover v. Ampak, Inc., 74 F.3d 57,
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`59 (4th Cir. 1996). McCarthy, the leading treatise on trademark law explains that “[t]he concepts
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`of ‘generic name’ and ‘trademark’ are mutually exclusive. Thus, if, in fact, a given term is
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`‘generic,’ it can never function as a mark to identify and distinguish the products of only one seller”
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`or geographic region of production. 2 THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND
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`UNFAIR COMPETITION § 12:1 (5th ed. 2020) (hereinafter “McCarthy”).
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`Under the Lanham Act, the test for genericness is “[t]he primary significance of the
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`registered mark to the relevant public rather than purchaser motivation.” 15 U.S.C. § 1064(3);
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`accord Glover, 74 F. 3d at 59 (“To become generic, the primary significance of the mark must be
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`its indication of the nature or class of the product or service, rather than an indication of [a
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`Case 1:20-cv-01174-TSE-TCB Document 106 Filed 12/15/21 Page 15 of 32 PageID# 3524
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`particular geographic] source.”). Consistent with this, the Federal Circuit has explained that “the
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`relevant public’s perception is the primary consideration in determining whether a term is generic.”
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`Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 969 (Fed. Cir. 2015) (internal
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`quotations omitted). And in this respect, the party opposing registration—here, defendants—
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`“bears the burden of proving genericness by a preponderance of the evidence.” Royal Crown Co.,
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`892 F.3d at 1366.
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`
`
` V.
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`
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`Given these legal principles, it is appropriate to consider de novo the record compiled by
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`the parties in this case and determine whether summary judgment is appropriate. Defendants
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`contend that the factual record in this case points indisputably to the conclusion that cheese
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`purchasers in the United States understand the term GRUYERE to refer to a generic type of cheese
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`without reference to the geographic location where the cheese is produced. Plaintiffs disagree,
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`arguing that the evidence is inconclusive and therefore cannot support summary judgment.
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`
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`Although the term GRUYERE may once have been understood to indicate an area of
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`cheese production, the factual record makes it abundantly clear that the term GRUYERE has now,
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`over time, become generic to cheese purchasers in the United States.
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`
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`Controlling authority makes clear that to ascertain the genericness of a term, courts may
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`consider “any competent source,” In re Cordua Restaurants, Inc., 823 F.3d 594, 599 (Fed. Cir.
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`2016). A competent source for determining genericness may include “not only consumer surveys,
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`but also dictionaries, usage by consumers and competitors, and any other source of evidence
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`bearing on how consumers perceive a term’s meaning.” Booking.com B. V., 140 S. Ct. at 2307 n.6.
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`In evaluating claims that a term has become generic, the Federal Circuit has considered the use of
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`that term on “various packaging and marketing materials” in the relevant industry, Royal Crown
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`Case 1:20-cv-01174-TSE-TCB Document 106 Filed 12/15/21 Page 16 of 32 PageID# 3525
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`Co., 892 F.3d at 1370, as well as the use of the purportedly generic term “in the [relevant] industry
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`and by the media.” Princeton Vanguard, LLC., 786 F.3d at 970.
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`Although courts and scholars have noted the usefulness of survey data in trademark
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`cases, neither plaintiffs nor defendants have introduced a consumer survey in this case. Plaintiffs
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`argue that the absence of survey data should result in an inference that such a survey would show
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`that consumers do not understand the term GRUYERE to be generic and that defendants’ failure
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`to provide a consumer survey should preclude summary judgement. Not so. The Federal Circuit
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`has made clear that while “consumer surveys may be a preferred method of proving genericness
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`under the proper test of purchaser understanding,” genericness may be established without
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`survey data. BellSouth Corp., 60 F.3d at 1570. McCarthy confirms this conclusion, explaining
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`that “[m]ost courts hold either that there is no requirement for a survey or that no adverse
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`inference should be drawn from the failure of a party to conduct a survey.” MCCARTHY §
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`32:195. Further, the Federal Circuit has cautioned that courts should “not infer from [a party’s]
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`failure to provide survey evidence that such evidence would be harmful” to that party’s case.
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`Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1054 (Fed. Cir.
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`2012). Accordingly, the absence of a consumer survey by either party does not preclude
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`summary judgment. Instead, summary judgment may be granted only if the undisputed material
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`facts make it abundantly clear th