The Trademark Trial and Appeals Board (TTAB) recently had one of its decisions reversed by the DC Circuit. Bureau National Interprofessionnel du Cognac [“Cognac Institute”] v. Cologne and Cogac Entertainment centered on the plaintiff’s opposition to the defendant’s mark COLOGNE AND COGNAC ENTERTAINMENT.
Certification marks have the same protections as trademarks. The opposers, the Cognac Institute, are responsible for controlling and protecting the certification mark COGNAC, which refers to brandy made from a particular grape grown in a particular region of France.
The applicant sought registration of COLOGNE AND COGNAC ENTERTAINMENT for entertainment services and music composition and production services. Initially, the TTAB dismissed the COGNAC Institution’s opposition, saying that the mark, as used for hip-hop music and production services, was not likely to cause confusion. The Federal Circuit Court reversed.
In applying the DuPont factors on how to determine whether something is likely to be confusing, the court said that it has consistently held that the fame of a prior mark is a dominant consideration. Famous marks get more protection because they are more likely to be remembered; they have extensive public recognition.
There’s no statutory requirement that consumers be aware of this certification status because that would be impractical and inconsistent. So the opposers argued the COGNAC mark is a famous designator of regional origin, and the Board should, therefore, have considered whether it was famous.
The TTAB, in its underlying decision, seemed to hold that substantial sales and advertising did not establish the fame of COGNAC because most of those products were also prominently branded by other trademarks like HENNESSY. But the Federal Circuit held that it shouldn’t matter because certification marks are often combined with particular brands or particular other trademarks. That is, COGNAC alone could still be famous.
In a prior decision involving BOSE speakers, Bose had to show that both its house name and product trademark had independent trademark significance. The court found that the product mark was famous, even though it also accompanied a famous house mark. Similarly, even if COGNAC were displayed on bottles relatively smaller than a particular brand of COGNAC, that lack of visual prominence didn’t dictate whether it was famous.
The court found that the TTAB failed to properly credit evidence from news and industry articles of record reflecting the renown of the mark — in particular, that COGNAC is particularly popular within the hip hop music industry, and music production was cited in the goods/services of the application. The TTAB also appeared to have overlooked sales and other information that indicated the fame of COGNAC.
The court cited a different decision from a different board, made up of different panelists, that found COGNAC’s certification mark did achieve major commercial success and falls on the very strong end of the fame spectrum. In contrast, the Board, in this case, had not attempted to distinguish that prior decision or even address it. Here, the applied-for mark includes in its entirety the term COGNAC, and the Board didn’t explain its characterization that there’s a different appearance, sound, commercial impression, and connotation from COLOGNE AND COGNAC ENTERTAINMENT.
The TTAB also dismissed the evidence that certified COGNAC products have an intimate and legendary history with music, particularly in the lyrics and in advertisement endorsements by rap and hip hop artists in the United States. The Federal Circuit found it was an error to discount that evidence.
Ultimately, the court said it doesn’t decide whether or not there is similarity between the nature of the goods, services or trade channels, so it remanded the case to the TTAB after vacating the TTAB’s decision.
It was curious to me how much consideration the opposer and the Federal Circuit gave to the asserted popularity of COGNAC in the hip hop industry. It strikes me that in the rarefied world of the Trademark Trial and Appeal Board that they would determine cultural assumptions. Maybe it’s appropriate, and maybe it’s not, but one wonders about assumptions and legal determinations that are made about what other people think, based on lyrics in popular music and the purported drinking habits of celebrities.
