CAFC Remands COGNAC Case for Reconsideration of DuPont Factors

Applicant’s mark

The U.S Court of Appeals for the Federal Circuit (CAFC) on Tuesday vacated and remanded a decision from the Trademark Trial and Appeal Board (TTAB) based on an incorrect application of the DuPont factors in determining the likelihood of confusion of a famous mark.

Bureau National Interprofessional du Cognac (“the Bureau”), the union that oversees the production of COGNAC spirits, and Institut National des Appellations d’Origine, an administrative agency within the French government, filed an opposition to a trademark application for COLOGNE & COGNAC ENTERTAINMENT (“the Applicant”), a hip-hop label.

The Certification Mark

COGNAC, a grape brandy distilled exclusively in the Cognac region of France, is an internationally regulated good produced and exported under heavy French supervision and labeled appropriately according to U.S. Alcohol and Tobacco Tax and Trade Bureau regulations. COGNAC is not a registered mark with the U.S. Patent and Trademark Office (USPTO), but it nonetheless operates as a common law certification mark. This designation certifies specific regional traits to ensure consumer transparency as to the origin of a good – in this case, that the brandy is a grape brandy produced and regulated in a specific region of France.

The Applicant, a hip-hop label, sought to register the composite mark “COLOGNE & COGNAC ENTERTAINMENT.”

The Bureau, in response, filed an opposition to the registration, claiming there was a likelihood of confusion with the COGNAC certification mark and, as a result, the Applicant’s mark would cause dilution through blurring under the Trademark Act.

The TTAB dismissed the opposition, holding that the use of “COGNAC” for hip-hop music and production services was not likely to cause confusion. Specifically, the relevant factors set forth in In re E.I. DuPont DeNemours & Co. weighed against confusion or were neutral in their application. The Bureau appealed to the CAFC.

Likelihood of Confusion Under DuPont

The CAFC first analyzed the likelihood of confusion by applying the factors provided in DuPont to the facts in the case. DuPont lists 13 factors that the TTAB will consider when determining whether a mark may be confusing as to the source – the factors aren’t necessarily given equal weight, but instead are used to formulate a general determination as to the extent of similarity. However, the fifth factor – the fame of a prior mark – was noted by the CAFC as being a “dominant” consideration in determining the likelihood of confusion. If the mark is one that has “extensive public recognition and renown,” it will be offered a broad scope of protection.

The TTAB had required that COGNAC be famous for its certification status. Instead, the CAFC clarified that the scope of fame extends beyond this status:

“A certification mark may be famous for ‘regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services …, but it need not be famous for all of its indications, and it need not be famous for its certification function.”

In addition to the TTAB’s failure to consider whether the mark was famous as an indicator of its geographic origin, the CAFC noted that the original opinion did not properly consider the impression that the certification mark made upon the public. According to the TTAB’s ruling, COGNAC is often used “inconspicuously” on the products where it appears and thus does not indicate fame. But the CAFC rejected this, noting that most products with a certification mark may be featured in this fashion without taking away the meaning of origin or quality.

The CAFC next analyzed two other DuPont factors. The first factor – the similarity of the marks in their entireties – was incorrectly applied by the TTAB. The original opinion found that the Applicant’s mark had a different appearance, sound, commercial impression and connotation. But the TTAB had failed to consider the meaning – COGNAC was acknowledged to signify a drink traditionally accompanied with affluent and upper-class consumers. In this way, the Applicant may have incorporated this meaning into their mark “COLOGNE & COGNAC.”

Building upon this, the second and third DuPont factors were combined into one to analyze the “similarity and nature of the goods or services.” The TTAB had failed to consider the COGNAC mark’s history within hip-hop/rap music, which was “undoubtedly relevant” to the relatedness of the goods. Given the TTAB’s error in applying the DuPont factors, the holding was vacated and remanded for reconsideration.

The dilution claim, which had been dismissed for insufficiency of the pleadings, was also remanded for reconsideration since the pleading contained sufficient reference to COGNAC as a famous mark.