Argument Preview / Panel Activity

As we explained earlier this week, two cases that will be argued in June at the Federal Circuit attracted amicus briefs. The second of those cases is Bureau National Interprofessionnel Du Cognac v. Cologne & Cognac Entertainment. In this case, the Federal Circuit will review a judgment of the Trademark Trial and Appeal Board, which dismissed an opposition against Cologne & Cognac Entertainment’s mark. This is our argument preview.

In their opening brief, the appellants, Bureau National Interprofessionnel Du Cognac and Institut National Des Appellations D’Origine, provide context for their dispute. They explain how, “[i]n a two-to-one split decision, the Board held registrable a mark prominently incorporating without permission the certification mark COGNAC, holding that the mark (combining the phrase COLOGNE & COGNAC ENTERTAINMENT and a design featuring, inter alia, a bottle of COGNAC), if used for hip-hop music and production services, was not likely to cause confusion or dilution.”

In appealing the ruling with respect to likelihood of confusion, the appellants say “the majority’s holding . . . is replete with fundamental legal and factual errors as to each” of the relevant factors. Turning to the first of those factors, fame, the appellants argue “[t]he majority erred in holding that, to establish the strength or fame . . . , the certifier is required to prove that the mark is renowned for its ‘certification status.’” They argue “[t]he majority also wrongly held that Opposers’ evidence of substantial sales and advertising of certified COGNAC products could not establish the fame of the certification mark because those products also prominently bear brand names.” Refuting this idea, they maintain that “fame is not an either/or proposition: both the certification mark and the brands it certifies can be famous, as is the case here.” Turning to the second factor, similarity, the appellants argue that, “[g]iven Applicant’s incorporation of the famous COGNAC mark into the dominant portion of its own COLOGNE & COGNAC mark and no countervailing facts, the marks should have been deemed ‘highly similar’ under settled law.” Concerning the last factor at issue, the relatedness of goods and services, they contend “[t]he majority likewise legally erred by comparing Applicant’s goods and services to Opposers’ certification services.” The “correct comparison,” they maintain, “is between Applicant’s goods and services, on one hand, and certified COGNAC goods and their suppliers, on the other.”

The appellants next address their dilution claim. They argue the Federal Circuit “has made clear that ‘the Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.’” They contend that “the majority’s ruling in the alternative on the merits was . . . erroneous, because it rested on the same incorrect legal standard for fame applied by the majority to the likelihood-of-confusion claim.“

The Scotch Whisky Association; Colombian Coffee Growers Federation; Confederation Générale Des Producteurs De Lait De Brebis Et Des Industriels De Roquefort; Consejo Regulador del Tequila, A.C.; Consorzio del Prosciutto di Parma; Distilled Spirits Council of the United States, Inc.; Federation of the Swiss Watch Industry FH; Irish Whiskey Association; Kentucky Distillers’ Association; Napa Valley Vintners; and Organization for an International Geographical Indications Network filed an amicus brief in support of the appellants and reversal. They argue “the Board majority concluded that COGNAC is not a famous certification mark because, on a label, the COGNAC mark often exists in a less prominent position when compared to the trademark.” They disagree with this fact’s relevance. It “is merely reflective of the inherent nature of geographic certification marks in contrast to trademarks and other certification marks.”

In its response brief, Cologne & Cognac Entertainment argues that the appellants’ “common law certification mark, based on a totality of the evidence submitted before the Board, warrants at best an intermediate scope of protection as opposed to being deemed a ‘famous’ mark as understood in the eyes of trademark law.” It then turns to the issue of confusion. Regarding the similarity factor, it maintains “the Board did properly meet the substantial evidence standard as the Board cited both the Appellee’s and Appellants’ evidence in making the ultimate determination as to whether the marks in question are similar.” On the factor of relatedness, Cologne & Cognac Entertainment contends that “the principles relied on by Appellants are not analogous and are inopposite to those here” and that the “proper case law, given the marks in question, shows that the goods/services are not related.”

Cologne & Cognac Entertainment then turns to the dilution claims. It highlights how “the Board determined that the Appellants’ common law certification mark is not a famous mark” and then argues that, “[i]f a trademark is not a famous mark, then there can be no dilution.” Cologne & Cognac Entertainment then turns to the arguments made in the amicus brief. According to Cologne & Cognac Entertainment, “the United States has never been party to any agreement, treaty, etc. that would extend . . . ‘dilution plus’ protection as so sought by the amici.”

In their reply brief, the appellants argue the “Applicant concedes that the proper test to evaluate fame of a certification mark is the public’s awareness of the mark as a geographical indication, but . . . that is not the test the TTAB majority applied.” Furthermore, regarding the dilution claim, they argue the “Applicant simply ignores this Court’s uniform precedents rejecting the type of ‘element-by-element’ pleading standard erroneously applied by the Board in sua sponte dismissing the claim.”

Oral argument will be heard on Tuesday, June 4. We will keep track of this case and report on any developments.