An association of several Swiss and French business owners previously filed a trademark application seeking protection for the name “GRUYERE” in relation to cheese. According to the association, gruyere is “painstakingly made from local, natural ingredients using traditional methods that assure the connection between the geographic region and the quality and characteristics of the final product.” Against their arguments, the Trademark Trial and Appeal Board denied the application. On appeal at the federal district court level, the court similarly ruled that gruyere-branded cheese does not have to originate from the Gruyere region of Europe. The opposition in the district court case argued that gruyere had become generic, and that consumers believed that it applied to a certain type of cheese as opposed to the location where that cheese originated. U.S. District Judge T.S. Ellis agreed, finding that “the term GRUYERE may have in the past referred exclusively to cheese from Switzerland and France,” but that “decades of importation, production, and sale of cheese labeled GRUYERE produced outside the Gruyère region of Switzerland and France have eroded the meaning of that term and rendered it generic.”
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One basic tenet of trademark law is that rights are territorial. One interesting example of this principal is the ongoing dispute between Bacardi and the government of Cuba pertaining to “HAVANA CLUB” rum. The Havana Club rum brand was nationalized by the Cuban government and has been produced and distributed throughout the world in partnership with Pernod Ricard, a French company. However, due to the embargo, Havana Club has never been sold by Pernod inside the United States. Instead, the family that previously owned the brand formed an alliance with Bacardi, who produces the rum in Puerto Rico and sells it in the United States. Yet due to some exceptional circumstances, the Cuban government owns the U.S. trademark registration for “HAVANA CLUB.”
In 2006, when the U.S. “HAVANA CLUB” trademark registration came due for renewal, the U.S. Treasury Department declined to provide the Cuban government with a license to pay the necessary fees. Instead of giving up the trademark registration, the Cuban government appealed the decision, a process which lasted over ten years. In 2016 the U.S. Treasury Department finally granted permission for the Cuban government to pay the necessary fees to renew its trademark registration and the U.S. Patent and Trademark Office, in an apparent aberration from its usual procedures, treated this payment as timely.
Bacardi has now asked a Federal District Court to deem the action taken by the U.S. Patent and Trademark Office as unlawful and beyond the scope of its authority. If Bacardi succeeds, it would likely mean that the registration owned by the Cuban government will be deemed expired and Bacardi’s pending applications will be free to move forward toward registration.
On December 17, 2021, the American jewelry brand David Yurman filed a lawsuit in the Southern District of New York against its 8-year-old Canadian-based rival, Mejuri, asserting two counts of unregistered trade dress infringement and state law dilution.In the complaint, David Yurman Enterprises LLC, David Yurman IP LLC, and Yurman Retail North America LLC (collectively “Yurman” or “Plaintiffs”) allege that Mejuri, Inc. and Mejuri (US), Inc. (collectively “Mejuri” or “Defendants”) are infringing Yurman’s trade dress rights to several of the pieces Yurman has designed, advertised, and sold over the course of more than 40 years, particularly those with its signature twisted helix cable motif in its Pure Form® and Sculpted Cable collections. For example, Yurman claims its Pure Form® Cable Bracelet is strikingly similar to Mejuri’s Croissant Dôme Bracelet or Croissant Dôme Cuff Bracelet. Further, Yurman claims that Mejuri is using the same type of advertising images, the same models, and the same female empowerment messaging to attract its consumers.
As a result, Yurman argues that consumers who see Mejuri’s “copycat” products “either at the point of purchase or thereafter, have been and will continue to be actually confused into thinking that the Mejuri product is related to Yurman.” Yurman adds that “ordinary consumers are likely to be confused as to the source, sponsorship, affiliation, or approval relating to the Mejuri products vis-à-vis [its own products]”, which in turn is damaging to its goodwill and reputation. Furthermore, Yurman asserts that Mejuri’s actions were designed to “blur” and “dilute Yurman’s extremely well-known trade dress, and to create confusion and mistake and to deceive consumers into the false belief that Mejuri’s products are associated with, affiliated with, sponsored by, endorsed by, or otherwise connected to Yurman and its products.” However, Yurman recognizes its product quality is still unmatched, stating: “Unfortunately for Mejuri’s customers, Mejuri is unable or unwilling to match Yurman’s product quality, selling products that quickly tarnish and are of lesser overall quality.”
For Mejuri’s alleged infringement and dilution of Yurman’s trade dress, Yurman is seeking a permanent injunction, damages (including actual, direct, indirect, consequential, special, and treble damages), attorneys’ fees and costs, and a court order requiring Mejuri “to melt down and recycle any remaining inventory of the infringing products and take down and destroy any and all advertising and promotional materials, displays, marketing materials, web pages, and all other data or things relating to the infringing products.”
The case is David Yurman Enterprises LLC, et al. v. Mejuri, Inc., et al., 1:21-cv-10821 (SDNY).
The U.S. Patent and Trademark Office (“USPTO”) recently announced that it will transition to the electronic issuance of patents and trademark registrations in 2022. Such “digital certificates” have been the norm in many foreign countries for years.
Currently, the USPTO delivers or mails a printed patent to the correspondence address of record upon issuance. By switching to digital, physical delivery will be replaced by issuance via the USPTO’s patent document viewing systems. Patentees would be able to download and print their electronically issued patents. According to the USPTO, this change will expedite the process of patent issuance to within one week of the patent number being assigned.
With respect to trademarks, the USPTO anticipates that the transition to digital delivery will begin later in 2022. Electronically-issued certificates are expected to speed the registration process by at least two weeks.
For those who prefer an official certificate, however, the USPTO will continue to print them upon request for $25 per copy.