You may have noticed some faux gravity in media outlets of late dealing with cheese. If you’ve been tuned to Olympic coverage, you are forgiven for having missed such rollicking headlines as: “Judge Won’t Give Gruyere the Champagne Treatment.”[i] Or Planet Money’s “cheesy story” on radio trying to decipher a label with a trade policy expert from Georgetown Law School[ii]; or its cutesy sign off: “Looks like this is going to be a real wedge issue.”[iii]
The Wall Street Journal’s Joe Queenan makes sport of an impending “Gunfight at Gruyére Gulch.”[iv] But he may have downplayed the stakes. What if you want to carry the Alpine theme into your winter entertaining and offer guests a bit of fondue or a cheese plate? How do you know what’s an authentic Gruyère cheese, if there is any such a thing? Does it matter?
Gruyéres, the Place
It seems to matter a great deal to the Swiss. After all, they popularized this nutty tasting cow milk cheese, whose origins are said to date back to the early 12th century. Named for the town of Gruyéres in western Switzerland, the cheese was introduced here to mass taste buds at the 1964 New York World’s Fair in the form of fondue[v] served at the Swiss pavilion’s Alpine restaurant.[vi]
Sampling fondue in the 1960’s was an unforgettable experience, indelibly imprinted in the U.S. psyche and connected intimately to Switzerland. That background might help explain the tenacity of the Interprofession du Gruyére, a Swiss trade association and cheese producer organization (“Interprofession”), in pursuing protection in the U.S. for the term Gruyère against some very large U.S. odds, namely U.S. dairy interests that would prefer to loosen the ties between the cheese and the Alps.
What is a Certification Mark?
The mechanism for protecting such a term under U.S. law is a certification mark and protection is achieved via registration similar to a trademark. Many European countries, as well as Vietnam, India and others, recognize a parallel protection system based on Geographical Indications (GIs). As we have elsewhere explained in previous blogs, GIs denote a close connection between a product like cheese, and a specific place, including natural features like soil, climate and vegetation, and traditions of production like cheese making, aging and curing. Some GIs indicate a very tight relationship with place; these are known in older protection systems as Appellation of Origins (also used for wine growing areas) or Protected Designations of Origin (PDOs), or in French, Appellation d’Origine Protégée (AOP) or Appellation d’Origine Controlée (AOC). If the relationship to place is a bit looser, the term applied may be simply Protected Geographical Indication (PGI).
Within the European Union system, the term Gruyère is a recognized PDO, the highest form of GI. Under the French national system, the same term is approved as a PGI. (The cheese is also made by some French producers in the areas bordering Switzerland.)
The U.S. has been reluctant to join international treaties like the Lisbon Agreement and its more recent Geneva Act that explicitly protect GIs, deferring to the interests of the powerful agricultural export lobby. Instead, our system uses certification marks to satisfy U.S. obligations under international trade agreements like TRIPS (the agreement on trade-related international property required for entry into the World Trade Organization.)
Under the Trademark Act (15 U.S.C.§ 1127), also known as the Lanham Act, protection may be afforded to a word, name symbol or device used to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of goods. Essentially, such marks are employed to certify that authorized users’ goods or services originate in a specific geographic region. Organizations that certify such characteristics may apply to register their marks at the US Patent and Trademark Office (USPTO). Several well-known U.S. certification marks have long been registered, including IDAHO POTATOES, KONA COFFEE GROWERS, and NAPA VALLEY. The U.S. system also protects foreign certification marks like ROQUEFORT. (See below.)
In 2010, Interprofession first applied to register LE GRUYÉRE as a certification mark for a type of cheese produced in Switzerland (but not France.) The USPTO rejected the application, finding that Gruyére is a type or class of firm cheese made of cow’s milk with a rich and nutty flavor, not exclusive to Switzerland. The connection between place (Switzerland) and the cheese was viewed as too weak in the mind of consumers and purchasers to warrant protection in the U.S. In 2013, Interprofession again sought protection in the U.S., but this time it modified the certification mark to encompass a design and word mark. The new mark included a Swiss cross, the letters AOC, and the words LE GRUYERE SWITZERLAND. (See photo.) That mark was granted registration, but exclusivity extends only to use of the entire mark with design and AOC[vii], not Gruyére alone. This certification mark can be applied to cheese sold in the U.S. only if the cheese originates in the Gruyére region of Switzerland (but not France.)[viii] C’est si bon!
In 2015, Interprofession joined with its sister French cheesemaking association to apply again to register GRUYÉRE at the USPTO as a plain word mark for cheese originating in the Gruyére regions of both Switzerland and France and made from Alpine grass fed cows according to traditional methods. The USPTO approved registration of this mark and published it for opposition in the normal course. The application attracted the attention of the U.S. Dairy Export Council which filed an opposition to register the mark.[ix] The Council argued that cheese purchasers in the U.S. understood Gruyere to be a “generic term” referring to a type of cheese that can be produced anywhere.[x] After extensive briefing, the Trademark Trial and Appeals Board (TTAB), which adjudicates oppositions to registrations, issued a detailed opinion. It concluded that purchasers and consumers of cheese in the U.S. understand Gruyére to refer to a type of cheese that can be produced anywhere. The Swiss and French associations begged to differ and filed an appeal at the Eastern District of Virginia.[xi]
Adieu Ma Fondue?
The district court found on summary judgment that the term Gruyére was generic in the U.S., based on the TTAB record and new evidence introduced by the parties. The evidence included: history of sales of cheeses marked Gruyere that were produced in the U.S. since at least 1987[xii]; history of cheeses imported from countries other than Switzerland and France that were labeled Gruyere; and failure by the Swiss and French associations prior to 2012 to “police” the use of these offending Gruyere marks during a notable period of time (meaning they did not adequately assert their rights to prevent those other producers from distributing faux gruyére in the U.S.)
Some background is useful. Interprofession reached an agreement in 2013 with a Wisconsin producer (whose origins were actually in Switzerland) to discontinue using the Gruyere label on cheese it distributed under the house brand Emmi Roth. But that agreement did not extend to cheese that clients of Emmi Roth distributed under their private labels. That explains why Boar’s Head could sell Gruyere cheese not from Switzerland (see photo) or the Wegman grocery chain could continue selling their “Mild Gruyere,” even if they bought such cheese from Emmi Roth of Wisconsin.[xiii]
Because generic terms are not entitled to protection under the law, as recently discussed by the Supreme Court in Booking.com, the court found that Gruyere was not registrable.
Gunfight at Gruyere Gulch Far From Over
The Swiss and French associations were more than disappointed by the decision rendered. They were disbelieving. “With this decision” said Philippe Bardet, the director of Interprofession,” you can make a little cheese, a big cheese, a hard cheese, a processed cheese—and you can give the name ‘gruyere ‘for all types of cheese.”[xiv] Impossible!
He makes a good point that is relevant to us consumers. What do these cheese names really mean? What is an authentic cheese? An artisanal cheese? Do all cultures (and countries) recognize certain cheeses as having the same distinctive qualities? Can a cheese name become generic through the introduction of “copycat” forms of production that are untethered from the original conditions that make for distinctive taste and quality? What then does it take to maintain the integrity of a product in a global world? Is Gruyére destined to wind up like Brie or Chablis in the U.S., unhinged from their origins?
What is Really Going on Here? Muddled Trade Policy and GI Envy
This case and the related questions are being aired against a backdrop of international trade policy. After a decade of sluggish progress on the part of the U.S. Trade Representative (and scuttling of the TransPacific Partnership)[xv], U.S. industry awakened to find that the European Union was pressing forward with bilateral and regional free trade agreements (FTAs) that include robust protection of GIs.[xvi] The markets at stake are critical: China, Canada, Japan, Mexico and the Mercosur region, to name a few. Among the lists of agreed protected GIs in these FTAs are many cheese names.
The U.S. industry planted a stake in the ground in the renegotiation last year of a trade agreement with Canada and Mexico to replace NAFTA. The resulting USMCA agreement includes provisions intended to roll back some GI protections afforded European products in Mexico and prevent the automatic inclusion of future GIs from Europe. Together with the Consortium for Common Food Names (CCFN), the Dairy Export Council has been pushing the argument that many cheese names are just “common names” and therefore can’t be protected in the U.S. — or in other countries.
The industry and the CCFN heralded the decision in the Interprofession case, claiming that the ruling “determined that gruyere is a generic style of cheese that can come from anywhere” and that “all cheese makers, not just those from France or Switzerland, can continue to create and market cheese under this common name.” [xvii] In an undignified blow, the industry also complained that “Europe continues its aggressive and predatory efforts to confiscate names that entered the public domain decades ago.”[xviii]
What Next for Gruyére?
Interprofession is not taking this salvo lying down. It filed a notice of appeal with the Fourth Circuit Court of Appeals on January 11, 2022. It remains to be seen what arguments it can make about error by the district court. Possible avenues? An attack on the court’s evaluation of evidence on consumer perceptions. Or a misreading of prior efforts to protect Gruyére. We will see
Meanwhile, pass the cheese plate and see if you can taste the difference. As for me, when it comes to Gruyére, I remain a true Swiss Miss.
[i] New York Times, Business Section, January 12, 2022.
[ii] Planet Money broadcast on National Public Radio, January 28, 2022.
[iv] “Gruyére Made in the U.S.? This Could Get Ugly,” Wall Street Journal, February 5-6, 2022.
[v] The first written recipes for fondue had appeared in 18th century cookbooks and called for Gruyère cheese. Originally a rural and rustic repast, fondue gained some glamour in the 1930s as part of a campaign by the Swiss Cheese Union.
vi] www.alpenwild.com How Melted Cheese Conquered the World, visited February 7, 2022.
[vii] The actual GI designation today is AOP; see photo.
[viii] Gruyere v. U.S. Dairy Exp. Council, 2021 BL 500810 (E.D. Va Dec 15, 2021).
[ix] Other opponents included a tiny New Jersey cheese manufacturer Intercibus, Inc., presumably included so as to humanize the “harm” of allowing Gruyére to be used only for Swiss and French cheeses, and a food retailer named Atalanta Corp, which sells a variety of cheeses on its website, including AOC Gruyere.
[x] 2021 BL 500810 (E.D. Va Dec 15, 2021)
[xi] Law students and others may recall that decisions of the TTAB may be appealed either to the Federal Circuit or to the Eastern District of Virginia. If appealed to the Federal Circuit, deference must be given to the findings of the TTAB under the Administrative Procedures Act (APA). If appellants are willing and able to undertake new evidence gathering, they may supplement the record and start afresh at a district court in the Fourth Circuit where the USPTO is located. That’s what the Swiss and French did here. As the district court explained, when new evidence is thus offered, the court must make de novo findings that take account of both the new evidence and the administrative record. Ibid.
[xii] In a cruel twist of fate, the offending production in Wisconsin of Gruyere cheese was begun by a branch of a Swiss company that was a member of theproducers consortium that later sued.
[xiii] 2021 BL 500810 (E.D. Va Dec 15, 2021).
[xiv] “Trans-Atlantic Rift: Is Gruyére still Gruyére if it Doesn’t come from Gruyéres?” New York Times, January 13, 2022, Note the attention to the correct use of the accent grave!
[xv] “Biden’s Muddled Trade Policy,” The Hill, December 24, 2021.
[xvi] While the 1995 TRIPS Agreement called for members to negotiate protections of GIs in good faith, in fact, not much happened. Meanwhile, members of the Lisbon Agreement pressed forward with the Geneva Act to more expressly protect GIs. And the EU began to include GI protections in its FTAs.
[xvii] U.S. Dairy Export Council, press release dated January 7, 2022. “Judge Rules ‘Gruyere’ is a Common Food Name and Not a Term Exclusive to Europe.” The CCFN has been pushing the dubious argument that there is a public domain of all food names that applies worldwide.