CAFC Tosses Out TTAB's Dismissal of COGNAC Opposition Due to Flawed Application of the DuPont Factors to a Certification Mark
The CAFC vacated and remanded the Board's decision [pdf here] dismissing an opposition to registration of the mark shown below, for music and production services. Opposers claimed likelihood of confusion with, and likely dilution of, the COGNAC common law certification mark, but a divided Board panel found that the relevant DuPont factors either favored the applicant or were neutral. The CAFC, however, agreed with the opposers/appellants, ruling that the Board applied an incorrect legal standard for fame and erred in analyzing the similarity of the marks and the relatedness of the goods/services. The Board also erred in dismissing the dilution claim as inadequately pled. Bureau National Interprofessionel du Cognac, Institute National de Appellations d'Origine v. Cologne & Cognac Entertainment, 2024 USPQ2d 1421 (Fed. Cir. 2024) [precedential].
Fame: The Board erred in requiring that the opposers show that COGNAC is famous for its "certification status" rather than its geographical significance or other characteristics (e.g., quality). The court agreed with opposers that the question was whether COGNAC is famous as a designator of regional origin.
The Board also erred in requiring "unequivocal" evidence that the volume of sales "was driven by the COGNAC mark to rebut the presumption that it applied that the commercial evidence was attributable to the (accompanying) house mark alone." Moreover, the Board's factual findings regarding fame were inconsistent.
We leave it to the Board on remand, under the above-stated legal standard, to determine the extent of the fame of COGNAC and thus to what scope of protection it is entitled. Because fame is the “dominant” factor in a likelihood of confusion analysis and affects the overall strength and level of protection of the mark, on remand the Board should reconsider all of the DuPont factors for which there is argument and evidence of record.
Similarity of the Marks: The Board erred in concluding that the marks at issue have different connotations because applicant's mark "projects an image of sophistication and elegance while COGNAC informs consumers of that the goods are certified as coming from France." The CAFC determined that this conclusion was contradicted by the evidence "and by the Board's own findings that COGNAC is associated with affluent and upper class consumers."
DuPont factors two and three: The Board improperly discounted the evidence that "COGNAC certified product has an intimate and legendary history with music, particularly rap music and hip-hop music, in the United States." This error apparently arose from the Board's comparison of opposer services of certifying with applicant's goods, services, and trade channels, rather than with the product certified.
Dilution: The Board dismissed the dilution claim as being improperly pled because opposer did not specify a date when the COGNAC mark became famous. The CAFC, however, found that the notice of opposition, "[a]lthough not a model of clarity, when read in a light most favorable to Opposers, such statement could be reasonably interpreted to mean that COGNAC has been famous for many years— necessarily before Applicant’s constructive use date only a few months prior."
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TTABlogger comment: Apparently the CAFC likes its COGNAC.
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 8/08/2024
3 comments
3 Comments:
Is it possible that the Fed Cir is confusing certification marks with geographical indications?
Good Queston. How about a guest blog post on that very question?
The Federal Circuit lambasted the Board for disregarding Applicant’s admission of the association between the hip-hop industry and cognac, and it pointed to substantial evidence in the record decisively showing the association between hip-hop and cognac. Hard to disagree with these facts but…
The Federal Circuit mentions right at the beginning that Applicant is “a hip-hop record label.” Fine. But the Applicant’s goods and services in the opposed Application do not claim or mention hip-hop. I therefore expected the usual statement from the Board (and the Federal Circuit) that, because the Applicant’s goods and services were claimed broadly enough to encompass ANY genre of music, hip-hop was of course relevant. The outcome likely would have been the same but it did strike me that the Federal Circuit “read” hip-hop into the Applicant’s goods/services based only on the business of Applicant’s company.
I also think the Federal Circuit was confusing a “famous certification mark” with famous trademarks, e.g. Tiffany or Louis Vuitton, despite its lip service to the distinction between certification marks and trademarks. Despite its defective pleading of dilution, Opposer could walk away with a right in gross, depending on how the Board handles the case on remand. I have faith in the Board.
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