Danish Dairy Board, Inc.v.The Ministry of Commerce and Industry of the Republic of Cyprus

Trademark Trial and Appeal Board

Aug 12, 1999

No. 92019815 (T.T.A.B. Aug. 12, 1999)

Paper No. 97
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 11, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Danish Dairy Board, Inc.
v.
The Ministry Of Commerce and Industry of the Republic of
Cyprus
_____
Cancellation No. 19,815
_____
Richard H. Koby of Hartman & Craven LLP for Danish Dairy
Board, Inc.
Costa N. Kensington of Kensington & Ressler L.L.C. for The
Ministry of Commerce and Industry of the Republic of Cyprus
_____
Before Simms, Cissel and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 10, 1990, the mark "HALLOUMI" was registered1
on the Principal Register as a certification mark for
cheese, based on use in commerce since June of 1946. The
registration states that the mark, "as used by persons
authorized by the certifier, shows that the cheese product

1 Reg. No. 1,591,489; affidavit under Section 8 filed and
accepted.
Cancellation No. 19,815
2
is produced only in Cyprus using [the] historic method
unique to that country."
On April 24, 1991, a petition to cancel the
registration was filed by Danish Dairy Board, Inc., which
asserted as grounds for cancellation that respondent
obtained the registration based on its claim that no cheese
bearing the mark is produced or exported by any country in
the world besides Cyprus, when in fact, the alleged mark is
the common descriptive name of the goods, and is the generic
name of all such cheeses produced and sold by competitors in
various countries throughout the world; that the mark
describes not only a type of cheese produced in Cyprus, but
also a type of cheese produced in Lebanon, Greece, Turkey,
other Middle East countries, Australia and Denmark; that
non-Cypriot "halloumi" cheeses have been exported to the
United States in competition with "Halloumi" cheese from
Cyprus since at least 1982; that the registered mark does
not identify respondent’s goods and distinguish them from
goods offered by others and produced in other parts of the
world; that petitioner is a wholly-owned subsidiary of the
Danish Dairy Board, which is a quasi-governmental
instrumentality of the kingdom of Denmark; that petitioner
is made up of Danish cheese producers and exporters of
cheeses to the United States and other countries; that the
registration sought to be canceled is likely to cause damage
Cancellation No. 19,815
3
to petitioner’s members because it tends to impair their
right to use the registered term to identify their products;
and that the registered mark is deceptive in that respondent
claims that only cheese manufactured under the auspices of
respondent may be properly called "Halloumi" cheese, whereas
this is not so, in view of the fact that many countries
throughout the world produce and export to the United States
similar cheeses under the same name or similar names.
Respondent’s answer denied the essential allegations
set forth in the petition to cancel, argued that the
petition failed to state a claim upon which relief may be
granted, and asserted laches as an affirmative defense.
That defense was dismissed by the Board on February 5, 1993.
On March 19, 1993, petitioner moved for summary
judgment. The Board denied the motion on May 3, 1994,
holding that genuine issues of material fact existed at
least as to whether the registered mark is generic, and
allowed petitioner time to amend the petition to assert the
claim of fraud. Petitioner had argued this claim in its
motion for summary judgment, but had not pleaded it in the
petition to cancel.
Petitioner then filed an amended petition to cancel,
asserting that the registration was obtained by means of
fraud, in that the statement in the application wherein
respondent (then the applicant) stated that no cheese
Cancellation No. 19,815
4
bearing the name "Halloumi" is produced or exported by any
country other than Cyprus, was knowingly false when made.
The amended petition also added the claim that the
registration should be canceled because respondent had
failed to control the use of the mark.
Respondent denied the additional claims asserted in the
amended petition.
A trial was conducted, various motions were made and
resolved during the process, and finally, briefs were filed
by both parties. Neither party requested an oral hearing
before the Board, so we have resolved this dispute based on
the evidence and the written arguments of the parties.
The record before us is adequately identified by
petitioner in its brief and is not disputed, except for
respondent’s objections to the testimony of petitioner’s
witness, Mr. Kissow. Respondent timely raised many
objections to various parts of this testimony and the
exhibits to it, and the Board deferred ruling on
respondent’s motion to strike until final hearing. The
objections included arguments that petitioner failed to lay
the proper foundation, in terms of establishing the personal
knowledge of the witness or otherwise authenticating the
evidence offered, that the evidence or testimony is hearsay,
and even that the way that petitioner numbered and
identified the exhibits is unacceptable.
Cancellation No. 19,815
5
While some of respondent’s objections are well taken,
others are not. The numbering system used by petitioner did
not hinder our ability to consider this evidence, but we
have considered only the testimony and evidence that did not
suffer from the deficiencies argued by respondent.
Moreover, even if we had considered all of the objected-to
testimony and evidence, our conclusion with respect to
whether petitioner met its burden of proof on the pleaded
issues before us would not have been different.
The issues presented in this case are whether the
registration was obtained fraudulently, whether the
registered mark is generic for the goods with which it is
used, and whether respondent adequately controls the use of
its registered certification mark. The pleaded ground of
deceptiveness was neither established by the evidence nor
further argued by either party, so we deem it to have been
dropped.
Based on the record before us in this proceeding, we
hold that petitioner has not met its burden of proof in
establishing that the registration was obtained by means of
fraud or that the mark "Halloumi" is generic for a type of
cheese. Further, petitioner has not established that
respondent failed to exercise an appropriate level of
control over the goods with which the mark is used.
Cancellation No. 19,815
6
Accordingly, the certification mark registration will not be
canceled.
Turning first to the fraud claim, we note that the
statement alleged to constitute fraud is respondent’s
statement in the application that "[n]o cheese bearing the
name HALLOUMI is produced or exported by any country in the
world besides the Republic of Cyprus."
In order to prevail on the ground of fraud, petitioner
would have had to establish that respondent intentionally
made this statement knowing it to be untrue in order to
obtain a registration to which respondent knew it was not
entitled. Further, the nature of a claim of fraud mandates
that it be proven "to the hilt," with "no room for
speculation, inference or surmise," and that any doubt must
accordingly be resolved against the party charging fraud.
Smith International, Inc. v. Olin Corporation, 209 USPQ 1033
(TTAB 1981).
As the Board pointed out to petitioner in its ruling
allowing the amendment to claim fraud, relief cannot be
granted where the evidence is consistent with the assertion
that "respondent may well have believed that others who may
have been exporting Halloumi cheese to the United States had
no legal right to do so."
In our view, the evidence adduced at trial supports
this conclusion. Typical examples of the evidence
Cancellation No. 19,815
7
petitioner argues proves its claim are a news item from The
Reuter Business Report and the press release issued by the
Cyprus Embassy Trade Center on April 19, 1990. Petitioner
argues that this evidence shows that respondent was aware of
uses of the term by others at the time it claimed the
exclusive right to the term, and that, accordingly,
respondent’s statement in the application constitutes fraud.
The Reuter item quotes the Cyprus News Agency as stating
that "other countries had been exporting goat’s milk cheese
to the United States claiming the product was genuine
Halloumi." The Trade Center piece includes the following:
"Halloumi cheese has gained popularity among American
consumers and has had to compete against imports from other
countries claiming to be Halloumi."
This evidence falls short of being clear and convincing
proof that respondent intentionally misrepresented a
critical fact to the Patent and Trademark Office in order to
obtain a registration to which it knew it was not entitled.
The part of the Trade Center press release that
characterizes the imports from other countries as "claiming
to be Halloumi" uses the upper case letter "H" to present
the mark "Halloumi" just as one would present any other
trademark, and the use of the term "claiming" clearly
implies that such cheeses are not genuine "Halloumi"
cheeses. As such, the release does not establish that
Cancellation No. 19,815
8
respondent’s statement in the application constitutes fraud
on the Office. The same is true for the Reuter statement.
The words "claiming" and "genuine" make it clear that the
writer views the statement as an assertion that may not be
true.
With respect to the other evidence argued by petitioner
to support the fraud claim, we conclude that the existence
of books that note the relatively recent production in other
countries of cheese purporting to be genuine "Halloumi"
cheese does not itself establish that respondent was aware
of this phenomenon, but even if it did, respondent’s
statement in the application that matured into the
challenged registration is not inconsistent with the idea
that respondent viewed such use of the mark by others as
unauthorized use, contrary to its own right to use the mark
to certify cheese made in Cyprus in accordance with the
standards established there for its production.
In summary on this point, based on the testimony and
evidence of record, we cannot conclude that petitioner has
met the heavy burden of proof it faced in attempting to
establish, by clear and convincing evidence, that
respondent’s statement that its use of the mark was
exclusive was a material misstatement which was knowingly
false when made, and that respondent thereby intended to
obtain a registration to which it knew it was not entitled.
Cancellation No. 19,815
9
Respondent’s statement does not appear to exclude the
possibility that respondent was aware that counterfeiters
were attempting to palm off an imitation of Cypriot
"Halloumi" cheese and sell it in the United States as if it
were the cheese produced in Cyprus by entities certified to
do so by respondent.
We thus turn to the allegation that "Halloumi" is a
generic term for cheese. Petitioner made of record excerpts
from several handbooks on the subject of cheese which use
the mark in lower case letters, or some other variant of it,
in reference to cheese which originated in Cyprus. These
written materials indicate that similar cheese products have
also been produced in a few places other than Cyprus.
Petitioner’s witness Mr. Kissow testified that in his
experience as export manager for two Danish cheese makers,
he traveled extensively and was personally aware of
"halloumi cheese," featuring similar characteristics to
those of Cypriot cheese certified as "Halloumi" cheese,
produced in several other countries, including Denmark, the
place where his company, Nordex, had once produced a cheese
product, made from cow’s milk, that was intended to compete
with the Cypriot cheese made from primarily sheep’s milk and
goat’s milk and sold under the registered mark "Halloumi."
Petitioner at one point seems to acknowledge that the
mark may not be known as a generic word within the United
Cancellation No. 19,815
10
States, but argues that the printed materials of record
establish clearly that outside of the United States, the
registered mark is the generic name for cheese of this type.
Petitioner contends that this foreign generic name should
not be allowed to maintain the status of a registered
certification mark in the United States.
Petitioner goes on, however, to argue that the evidence
it made of record shows that respondent’s mark is in fact
perceived in the United States as generic term for a type of
Middle Eastern cheese. The evidence to which petitioner
refers, however, is at best somewhat unclear and ambiguous
on this point. A cookbook published here refers to "feta
and halumi" as being used in the Middle East for cooking.
Whereas this reference appears to use the word in a generic
sense, an article from Newsday magazine is less clear. It
refers to "Halloumi" cheese as "a lamb’s milk cheese that
tastes like a mozzarella and feta hybrid." In view of the
capitalization of the first letter of the mark and the
appearance of "mozzarella" and "feta" in lower case letters,
this usage of the term is not inconsistent with proper use
in reference to respondent’s certification mark. Other
examples provided by petitioner suffer from the same
problem.
Petitioner further argues that the evidence shows that
cheese manufacturers outside of Cyprus use the mark,
Cancellation No. 19,815
11
presumably without respondent’s permission, in connection
with products which are not regulated by respondent and are
not made in conformity with the traditional materials and
process used in Cyprus. Petitioner contends that this
evidence shows that such products may not be made
exclusively from sheep’s milk or goat’s milk, as is used in
the traditional Cypriot process, but instead are made from
the milk of cows. Petitioner takes the position that the
registration should be canceled because the evidence of
third-party use is persuasive proof that respondent does not
control the use of its registered certification mark.
In contrast, respondent argues that the petition to
cancel cannot be granted because petitioner has not
established that the mark is generic to consumers of cheese
in the United States of America, and further, that the
registration of a certification mark in this country may not
be canceled based on the level of respondent’s effectiveness
in controlling infringing use of its registered mark that
takes place elsewhere.
We find that petitioner’s evidence of the use of the
registered mark by makers of cheese outside of Cyprus is de
minimis. Mr. Kissow’s testimony, even if it did not suffer
from the aforementioned problems with foundation and
hearsay, still must be considered in light of the fact that
Cancellation No. 19,815
12
he owned and worked for businesses which stood to benefit
from the cancellation of respondent’s registration.
The petitioner bears the burden of establishing by the
preponderance of the evidence that cancellation is
appropriate because the mark is generic or because
respondent has failed to control its use. See Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307 (Fed. Cir. 1989). When we consider all
of the evidence asserted by petitioner to establish that the
registered mark is a generic term used to identify a type of
cheese produced "worldwide," and we also consider the
evidence and testimony made of record by respondent to the
effect that the registered mark is not generic, but rather
functions as a certification mark indicating that the cheese
bearing it is produced in Cyprus in accordance with the
standards established by the government there, we cannot
conclude that petitioner has met its burden of establishing
genericness by a preponderance of the evidence.
Respondent’s survey of consumers in the United States,
however, is not the reason we reach this conclusion. The
survey is fatally flawed, in that it asked the wrong
question. Because the interviewers asked the interviewees
whether they associate the term "Halloumi" with a particular
country, the survey did not establish whether or not the
mark had become generic. As petitioner points out, asking
Cancellation No. 19,815
13
the question that respondent asked is tantamount to asking
whether a person associates vodka or chow mein with
particular countries. Positive responses naming Russia and
China, respectively, would hardly prove that "vodka" and
"chow mein" are non-generic terms which are appropriate for
registration as certification marks.
Rather than the survey evidence, our conclusion that
respondent’s evidence outweighs the evidence of petitioner
on this issue is based on the testimony provided by
respondent’s witnesses Professor Anifantakis; Dr. El-Salam;
Mr. Edelman; Dr. Hadjiluca; Ms. Kyriacou; and Mr. Delihas.
While not all of these witnesses are totally independent of
interest in this matter, their common conclusion is
supported by other evidence of record, including books and
news articles that identify Cyprus as the source of
"Halloumi" cheese. Additionally, as respondent points out,
the term "halloumi" is not listed in the dictionaries
respondent made of record. If the mark were in fact
generic, we would expect dictionaries to list it and give an
explanation of its meaning.
In summary on this issue, after considering all of the
evidence on this point, we find that petitioner has not met
its burden of establishing by a preponderance of the
evidence that respondent’s registered certification mark is
a generic term in the United States or elsewhere.
Cancellation No. 19,815
14
Turning then to the remaining issue before us in this
proceeding, we find that petitioner has also failed to meet
its burden of proof in establishing that the registration
should be canceled because respondent has failed to control
the nature and quality of the goods to which the mark is
applied. Contrary to petitioner’s arguments, respondent has
taken reasonable actions to control the use of the mark.
While such control could not possibly be absolute,
respondent has exercised control which is reasonable under
the circumstances.
Petitioner has made of record no evidence that
respondent has failed to control the use of the mark in
Cyprus or in the United States. In fact, there is a good
deal of information in the record concerning the Cypriot
standards, how they are enforced there, and how respondent
has taken action against attempted importation into the
United States of products improperly labeled as "Halloumi."
There is no support for the idea that the foreign owner
of a U.S. registration of a certification mark is somehow
charged with the practical impossibility of controlling
absolutely the use of the mark throughout the world,
irrespective of the governing laws outside of its own
country and the United States. As respondent points out,
the registration petitioner seeks to cancel by means of this
proceeding does not and cannot grant respondent rights in
Cancellation No. 19,815
15
countries other than the United States. Respondent’s
actions to control the use of its mark in Cyprus and here
have not been shown to be below the level necessary to
maintain its United States registration.
In summary, petitioner has not shown by a preponderance
of the evidence that the mark is generic or that respondent
has failed to control adequately its use, nor has petitioner
established by clear and convincing evidence that respondent
committed fraud in the procurement of the registration.
Accordingly, the petition to cancel the registration is
denied.
R. L. Simms
R. F. Cissel
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial & Appeal Board