A Certification Mark May Be Famous for Any Reason and May Connote More Than the Product’s Place of Origin

BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. COLOGNE & COGNAC ENTERTAINMENT

Before Lourie, Clevenger and Hughes.  Appeal from the Trademark Trial and Appeal Board.

Summary:  Fame and likelihood of confusion analyses must thoroughly consider all relevant factors and evidence, including the potential for consumer confusion in related markets.

Bureau National Interprofessionnel du Cognac, the interprofessional union for Cognac spirits, and Institut National des Appellations d’Origine, an administrative agency within the French government (collectively, “Opposers”), filed an opposition to a trademark application for COLOGNE & COGNAC ENTERTAINMENT and a corresponding design mark filed by Cologne & Cognac Entertainment (“Applicant”), a hip hop record label.  The Trademark Trial and Appeal Board dismissed the opposition, holding that the mark, used for hip hop music and production services, was not likely to cause confusion or dilution of the COGNAC certification mark.

On appeal, the Federal Circuit vacated the TTAB’s decision and remanded the case for further proceedings.  The court found that the Board applied the incorrect legal standard for fame when it ruled that the COGNAC mark was not famous for its “certification status.”  The court explained that a certification mark may may be famous for regional or other origin, material, mode of manufacture, quality, accuracy,  or any other characteristic of the certified goods or services.

The Federal Circuit also found that the Board erred in assessing the similarity of the marks.  The Board concluded that the marks had different connotations because the COGNAC mark communicated that the product originated in a particular region, while the COLOGNE & COGNAC mark projected “an image of sophistication and elegance.”  The Federal Circuit held that a certification mark may connote more than a place of geographic origin, and it noted that the record demonstrated that the term COGNAC also projected an image of sophistication and elegance. 

The Federal Circuit also considered Opposers’ dilution claim.  The court ruled that the Board improperly dismissed Opposers’ dilution claim for not having specified a particular date by which their mark became famous.  It was sufficient to give notice that the mark was famous at some point prior to the junior mark’s constructive use date.   

Editor: Sean Murray