Holland & Knight LLP

You may be wondering what fame, hip-hop, and cognac have in common. According to a recent opinion of the U.S. Court of Appeals Federal Circuit, certification trademarks are the answer. We have written about certification marks in the past and how they are different from trademarks. Briefly, trademarks indicate the source of goods or services, e.g., a swoosh on sneakers indicates they originate with Nike, while certification marks indicate a product’s compliance with a standard that may be related to geography (Idaho potatoes), quality (Woolmark) or characteristics of production (union label).

Cognac is a grape brandy that comes from the Cognac region of France and conforms to standards enforced in part by the French government. Although it is not a registered trademark in the U.S. but has been recognized for many years as a common law certification mark that indicates a combination between geographic origin, quality, and methods of manufacture. COGNAC is only legal for brandies that meet the standards. The Alcohol and Tobacco Tax and Trade Bureau enforces these standards in the U.S. under 27 C.F.R. SS 5.145 (c)(2). What about COGNAC used for goods or services that are not related to alcohol? The answer depends on how famous the certification mark is.

In 2019 Cologne & Cognac Entertainment (C&CE), a hip-hop label, applied to register COLOGNE & COGNAC ENTERTAINMENT as a mark for live and recorded performances. The Bureau National Interprofessionnel du Cognac, which owns the mark, and the Institut National des Appellations d’Origine, a French government administrative agency that regulates the production of Cognac, (collectively the Opposers), opposed C&CE’s registration, claiming, in part, that the proposed mark would confuse consumers. In a split decision, the Trademark Trial and Appeal Board (the “Board”) rejected the opposition, basing its ruling in part on finding that the Opposers failed to prove that the COGNAC mark was famous and, therefore, was entitled to only “a normal scope of protection” for purposes of the Board’s likelihood of confusion analysis.1

Famous Marks

The strength of a mark varies along a spectrum from very strong to very weak. The Federal Circuit, in Bureau Nat’l Interprofessionnel du Cognac v. Cologne & Cognac Entm’t2, found that the COGNAC mark may be famous. Though it is rare for an unregistered mark to be found famous, in a fairly scathing decision vacating and remanding the Board’s decision, the Federal Circuit, in Bureau Nat’l Interprofessionnel du Cognac v. Cologne & Cognac Entm’t,2 found that the COGNAC mark may be famous.

According to the court, a fundamental legal error by the Board was its requirement that the public recognition and renown of a certification mark must relate to its “certification status” or “function” as a certification mark. Consumers recognized the goods for their certification rather than other indicators like geographic origin, quality, or methods of manufacture. The court rejected this conclusion and held that a certification “needs not be famous” for all its indications or for its certification function. The Board was instead required to determine whether Cognac is “famous” as an indicator of its geographical origin. The court also disagreed that the Board had considered the evidence provided by the Opposers in order to establish the fame for the COGNAC trademark. The Board, despite acknowledging that “Cognac” is “a popular spirit with impressive sales in the United States,” and that “the

record is replete with the use of ‘cognac’ in articles, some from well-known publications,” rejected this evidence, because it “did not provide sufficient support for an unambiguous conclusion” that COGNAC was famous. The Board argued that the evidence for this conclusion was either based upon the certified users’ brand products’ sales and advertising (e.g. HENESSEY, REMY MARTIN), or that COGNAC was used in advertisements, news articles, or on products in a way that was inconspicuous in comparison to the product trademarks. The court pointed out that certification marks are used only on third-party goods, and therefore they will be used in conjunction with a product trademark or house brand. The Board must instead determine, based on “context-specific evidence,” whether some portion of the sales and advertising evidence should be attributed to the COGNAC mark. Instead, the Board must determine, based on “context-specific evidence,” whether some portion of the sales and advertising evidence should be attributed to the COGNAC mark.[was]Notably, the court found that the very evidence relied on by the Board to show that COGNAC was not famous because of its inconspicuous use or placement appeared to show the opposite – the consistent and frequent use of COGNAC irrespective of or without the mention of a house brand or product mark. The court concluded that setting aside the legal errors related to the Board’s fame analysis, these factual inconsistencies show that the conclusion that COGNAC was not famous was not supported by substantial evidence.

Takeaway

Though it may be counterintuitive that an unregistered certification mark for a certain type of spirit may block the use by a hip-hop record label of a similar mark for music entertainment services, under U.S. law it is possible. Companies should be careful to evaluate the strength of any certification marks, even those for completely disparate goods or service. Stay Tuned

Because of the Federal Circuit’s decision to remand the Boards’ decision dismissing the Opposers opposition, it is still unclear whether COGNAC, the first unregistered certificate mark, will be found to be famous. If so, this could impact the Boards’ likelihood of confusion analyses. The Bureau National Interprofessionel du Cognac also applied to register COGNAC in the interim as a certification trademark for “grape-brandy distilled in France’s Cognac region in compliance with French government laws.” The application is noteworthy for its “first use anywhere” of 1643 and “first use in trade” of 1794. The application is pending.

Notes

1 Bureau Nat’l Interprofessionnel Du Cognac & Institut Nat’l Des Appellations D’origine, No. 91250532, 2022 WL 3755301, at *10 (Aug. 25, 2022). This was a significant departure from a previous Board decision in 1998 that found the COGNAC certification marks “would fall at the very high end of the spectrum for purposes of the likelihood-of-conflict analysis …” Institut Nat’l Des Appellations D’origine v. Brown-Forman Corp., 47 U.S.P.Q.2d. 1875 (T.T.A.B. 1998).

2 110 F.4th 1356, 1366 (Fed. Cir. 2024).