On Remand, TTAB Sustains Cognac Institute's Section 2(d) Opposition to COLOGNE & COGNAC ENTERTAINMENT

On remand from the CAFC, the Board sustained this opposition to registration of the mark shown below, for musical recordings and production services, finding confusion likely with Opposer's common-law certification mark COGNAC for brandy. The Federal Circuit found error in the Board’s likelihood of confusion analysis as to the first, second, third and fifth DuPont factors, and so it vacated the Board's original decision and sent the case back to the Board. [TTABlogged here]. Following the CAFC's directives, the Board found the COGNAC mark to be well-known and strong, the marks more similar than dissimilar [a bit hard to swallow for me - ed.], and the channels of trade and classes of consumers related. Bureau National Interprofessionel du Cognac, Institute National de Appellations d'Origine v. Cologne & Cognac Entertainment, Opposition No. 91250532 (July 28, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

There was no dispute that COGNAC is a common law certification mark for "cognac," used in conjunction with distilled spirit products that meet prescribed standards of quality and content, produced in the Cognac region of France at locations, and under conditions, specified and regulated by French law.

Fame: Guided by the CAFC's decision, the Board changed its conclusion regarding the strength of the COGNAC certification mark: "We find that the evidence establishes that COGNAC is very well-known in connection with brandy throughout the United States and enjoys a strong reputation as a prestigious and quality brandy." The Board placed the mark "at the higher end of the fame or commercial strength spectrum, thus enjoying a wider than normal scope of protection." And so, the fifth DuPont factor "weighs strongly in favor of finding confusion likely."

The Marks: Again guided by the CAFC's decision, the Board found the phrase COLOGNE & COGNAC to be the dominant element in applicant's mark. It also found that that "the marks share a similarity in sound and appearance inasmuch as Opposers’ mark, COGNAC, is one of the more distinctive literal components of Applicant’s mark."

In addition, and in accordance with the Federal Circuit’s finding [does the CAFC make findings? - ed.] that the record shows that Applicant’s mark evokes an affluent or sophisticated lifestyle “precisely because” of its inclusion of the term “cognac,” that same meaning must be attributed to Opposers’ COGNAC mark. Accordingly, the parties’ marks share this connotation and consumers may perceive similar commercial impressions being conveyed by the marks.

The Board concluded that the parties’ marks are "overall more similar than not."

Goods/Services: Construing the evidence "in accordance with the Appellate Decision," and now taking into account "the evidence showing musicians, mainly rap and hip-hop artists, endorse various brands of Cognac and frequently use the term in song lyrics or titles" the Board found "a sufficient relationship between COGNAC brandy and Applicant’s music-related goods and services, as well as the trade channels and classes of consumers for these goods and services."

Section 2(d) Conclusion: Balancing the relevant DuPont factors, the Board concluded that "consumers are likely to mistakenly presume a connection, sponsorship, or affiliation between Applicant’s goods and services and Opposers’ previously-used COGNAC certification mark on brandy, as sold by Opposers’ authorized users." The Board declined to reach Opposers' dilution-by-blurring claim.

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TTABlogger comment: Do you think that confusion is likely in the real world? I don't. I would have found the first DuPont factor dispositive in favor of the applicant. Also, the relatedness of the goods and services seems dubious to me. 

Text Copyright John L. Welch 2025.