Community of Roquefort v. William Faehndrich, Inc.
303 F.2d 494 (1962)
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Rule of Law:
A geographical name registered as a certification mark under the Lanham Act is valid without proof of secondary meaning. An infringement claim against such a mark cannot be defeated on summary judgment with a mere assertion that the mark has become generic; the defendant must present specific evidence creating a genuine issue of material fact that the mark's primary significance to the public is the product itself, not its origin or certified characteristics.
Facts:
- For centuries, a distinct sheep's milk blue-mold cheese has been produced and cured in the natural limestone caves in and around the municipality of Roquefort, France.
- The Community of Roquefort, a French municipality, obtained a U.S. certification mark for the term 'Roquefort'.
- The mark certifies that cheese labeled 'Roquefort' has been manufactured from sheep's milk only and cured in the natural caves of the Community of Roquefort, France.
- William Faehndrich, Inc. imported sheep's milk blue-mold cheese that was produced in Hungary and Italy.
- Upon import, Faehndrich's cheese was packaged with labels clearly indicating its Hungarian and Italian origin.
- For resale in the United States, Faehndrich repackaged the cheese, replacing the original labels with new wrappers that prominently read 'Imported Roquefort Cheese' without any indication of its true origin.
Procedural Posture:
- The Community of Roquefort sued William Faehndrich, Inc. in the U.S. District Court for the Southern District of New York for certification mark infringement.
- The plaintiffs moved for summary judgment on the infringement claim.
- The defendant filed a cross-motion for summary judgment.
- The District Court granted the plaintiffs' motion for summary judgment and issued a permanent injunction against Faehndrich.
- Faehndrich, as the appellant, appealed the District Court's judgment to the U.S. Court of Appeals for the Second Circuit.
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Issue:
Does labeling cheese that was not produced in the Roquefort region of France as 'Imported Roquefort Cheese' infringe upon a validly registered federal certification mark held by the Community of Roquefort?
Opinions:
Majority - Kaufman, Circuit Judge
Yes. Labeling cheese that was not produced in the Roquefort region of France as 'Imported Roquefort Cheese' infringes upon the valid certification mark. The Lanham Act explicitly allows for the registration of geographical names as certification marks to indicate regional origin, and unlike trademarks, such marks do not require secondary meaning to be valid. The defendant, Faehndrich, argued that 'Roquefort' has become a generic term for sheep's milk blue-mold cheese, but it failed to provide any factual evidence in its affidavits to support this claim and create a genuine issue for trial. Because the defendant's use of an identical mark on a substantially identical product is, as a matter of law, likely to cause confusion as to the origin of the goods, summary judgment for the plaintiff was appropriate.
Analysis:
This case clarifies the distinct legal status and protective power of certification marks for geographical indications under the Lanham Act. It establishes that such marks do not require the 'secondary meaning' necessary for geographical trademarks, lowering the bar for registration and protection. The decision places a significant procedural burden on defendants who claim a mark has become generic, requiring them to produce concrete evidence of public perception to survive summary judgment. This precedent strengthens the ability of regional producers to protect the value and reputation of their geographically specific products in the U.S. market.
