1. “Whether the majority’s decision rejecting Opposers’ likelihood-of confusion claim was legally erroneous and must be reversed because:”
a. “The majority applied the wrong legal standard for fame (which this Court considers the ‘dominant factor’ in the likelihood-of-confusion analysis) by requiring COGNAC to be famous for its ‘certification status’ rather than its geographic significance;”
b. “The majority analyzed the similarity of the parties’ marks under an incorrect legal standard, finding that the challenged mark was not similar to the COGNAC mark despite incorporating it, based on a purported material factual finding about the differing ‘connotations’ of the parties’ marks that lacked any citation to, or basis in, the record evidence; and”
c. “The majority applied the wrong legal standard in evaluating the factors concerning the relatedness of goods, trade channels, and consumers, by focusing on Opposers’ service of certifying, rather than on the goods bearing the COGNAC certification mark?”
2. “Whether the Board’s decision as to Opposers’ dilution claim was legally erroneous and must be reversed because:”
a. “The panel applied erroneous pleading standards in dismissing the claim by requiring Opposers to plead dilution on an element-by-element basis and by failing to construe Opposers’ factual pleading in accordance with the Federal Rules of Civil Procedure; and”
b. “The majority applied an erroneous legal standard in evaluating whether the COGNAC mark is famous for dilution purposes?”
1a. “The majority seems to have required that COGNAC be famous for its “certification status,” rather than its geographic significance . . . . We find that to be error.
1b. “However, the Board found that the marks were not similar because Applicant’s mark “engenders a different appearance, sound, commercial impression and connotation” from the certification mark. But the Board’s explanation for that conclusion fails to provide the necessary support.
1c. “The Board’s failure to consider that evidence seems to stem from an erroneous comparison between the Opposers’ services of certifying and Applicant’s goods, services, and trade channels. Rather, the proper comparison is between the goods, services, and trade channels of certified users of the COGNAC mark (e.g., HENNESSEY) to Applicant’s goods, services, and trade channels.”
2a. “We conclude that, under the correct pleading standard, Opposers sufficiently pleaded their dilution claim.”
2b. “Because we vacate the Board’s finding that COGNAC is not famous for purposes of likelihood of confusion, we likewise vacate the Board’s finding that COGNAC is not famous for purposes of dilution.
