Raise A Snifter And Listen To The Music: U.S. Court Mulls COGNAC And Hip-Hop

On August 6, 2024, in Bureau National Interprofessionnel Du Cognac v Cologne & Cognac Entertainment, Case No. 23-1100, the United States Court of Appeals for the Federal Circuit (the Court) vacated a decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (the Board).  The Board had previously determined that there was no likelihood of confusion between the certification mark COGNAC and a trademark application for a design including the words COLOGNE & COGNAC ENTERTAINMENT Design (the Mark) for hip-hop music and production services.

The Bureau National Interprofessionnel du Cognac (representing all growers, producers, and merchants of COGNAC spirits) and Institut National des Appellations d’Origine opposed the Mark on the basis of a likelihood of confusion with the COGNAC certification mark. The Board dismissed the opposition, finding that the Mark, if used for hip-hop music and production services, was unlikely to cause confusion with the COGNAC certification mark. The Board concluded that the COGNAC mark is not strong or famous and that there is no overlap in the relevant goods, services, trade channels and purchasers.

On appeal, the Court vacated the Board’s decision and remanded the case to the Board for reconsideration.  The Court held that the Board erred in its confusion analysis, by applying the wrong legal standard for “fame” and incorrectly analyzing the marks’ similarities and the relatedness of the goods and services.  On the issue of fame, the Court noted that the Board should have considered whether the COGNAC certification mark was famous as an indicator of its geographic origin, rather than for its “certification status”. Additionally, the Court criticized the Board for concluding that the marks had different connotations, noting that this was contradicted by the evidence and “the Board’s own findings that COGNAC is associated with affluent and upper-class consumers.”  With respect to the goods and services, the Court held that the Board erred by not comparing the goods, services, and trade channels of certified users of the COGNAC mark (e.g., HENNESSEY) to the applicant’s goods, services, and trade channels and failed to acknowledge admissions by the applicant that “the association between cognac and the music industry is commonplace”.

Summary By: Michelle Noonan