The last 6 of August, the United States Court of Appeal for the Federal Circuit (CAFC) reversed the decision of the Trademark Trial and Appeals Board (TTAB) regarding the COLOGNE & COGNAC ENTERTAINMENT mark.
The contested trademark had been filed by a music and recording label in classes 9 and 41. This was followed in 2020 by a joint opposition of “Bureau National Interprofessionnel Du Cognac” (BNIC) and the “Institut national de l’origine et de la qualité” (INAO), with the objective to defend the appellation Cognac – protected in the USA as a certification mark – against risks of confusion, deception and dilution.
In August 2022, the TTAB had issued its decision finding that:
- A certifier is required to prove consumer awareness of the “certification status” of a certification mark of regional origin. This was contrary to the relevant case law (i.e., the 1998 opposition by INAO and BNIC against Brown-Forman’s application to register “CANADIAN MIST & COGNAC” for a product consisting of a blend of 60% Canadian Mist whisky and 40% genuine Cognac (TTAB 1998)).
- There is a differentiation between certification marks of regional origin and ordinary trademarks in applying the likelihood-of-confusion test. Again, this was contrary to established precedent (i.e., in “CANADIAN MIST & COGNAC” case: the analytical framework for determining likelihood of confusion in the case of a certification mark of regional origin is no different from the framework followed in the case of an ordinary trademark).
Such TTAB decision was appealed by the BNIC and the INAO. To enhance their chances of success, oriGIn – together with some of its members holding certification marks in the USA as well as other major US stakeholders in the wine and spirits industry – contributed to prepare and signed an amicus curiae brief in support of BNIC and INAO.
The 2024 Federal Circuit’s decision rightly recognizes that certification marks, such as COGNAC, are “entitled to the same protections as trademarks,” and rejects several theories of the TTAB to treat certification marks less favorably. By remanding the case for the Board to reconsider its decision and properly address the likelihood of confusion and dilution issues, the CAFC reaffirmed the protection of certification marks in the USA. oriGIn is proud to have contributed to this outcome, together with some of its members, in the amicus curiae brief submitted to the CAFC.
More information on the CAFC decision can be found in the presentation delivered by Ms. Amandine Duthilleul – Director, Intellectual Property & GI Cognac Protection Department at BNIC – during ‘Topic i: Global challenges in trademark applications in conflict with GIs’ at the oriGIn 2024 Expert Meeting: https://www.origin-gi.com/10-11-10-2024-origins-expert-meeting-on-the-latest-developments-and-challenges-related-to-gi-protection-and-enforcement/
More information on oriGIn involvement in enforcement activities in support of its members can be found at https://www.origin-gi.com/web_articles/origin-direct-involvement-in-enforcement-activities/
