IP Law Daily, TRADEMARK—TTAB: ‘COLOGNE & COGNAC ENTERTAINMENT’ mark for music not confusable with ‘COGNAC’ brandy certification mark, (Sep 22, 2022)

By Brian Craig, J.D.

The factors concerning the similarity of the marks, relatedness of the goods and services, and trade channels all weigh against a finding of likelihood of confusion.

The Trademark Trial and Appeal Board has concluded that the COLOGNE & COGNAC ENTERTAINMENT mark and design for music entertainment sought by a record label is not likely to cause confusion among consumers with the COGNAC certification mark for brandy. In dismissing the opposition filed by the French owners of the COGNAC mark for brandy, the Board concluded that the factors concerning the similarity of the marks, relatedness of the goods and services, and trade channels all favor a finding of no likelihood of confusion. Administrative Trademark Judge Frances Wolfson wrote a dissenting opinion arguing that COGNAC is a famous mark entitled to enhanced protection against a likelihood of confusion (Bureau National Interprofessionnel du Cognac v. Cologne & Cognac Entertainment, August 25, 2022, Wellington, T.).

Cologne & Cognac Entertainment, an independent record label specializing in R&B and hip-hop music, applied to register the COLOGNE & COGNAC ENTERTAINMENT design mark in connection with music recordings in International Class 9 and music entertainment in International Class 41.

The owners of the common law COGNAC mark for brandy, Bureau National Interprofessionnel du Cognac and Institut National Des Appellations d’Origine, jointly filed an opposition to the applied-for mark. The owners of the COGNAC mark for brandy claimed priority and likelihood of confusion with their common-law regional certification mark COGNAC for brandy that comes from the Cognac region of France and is produced in accordance with prescribed standards. The owners of the COGNAC brandy mark argued that their mark is famous, and that the record label’s mark is likely to cause dilution through blurring.

Priority. The Board first concluded that the owners of the COGNAC mark for brandy demonstrated priority in use. The music record label did not dispute that the owners of the COGNAC certification mark have priority.

Likelihood of confusion. In the likelihood of confusion analysis, the Board concluded that the factors concerning the similarity of the marks, relatedness of the goods and services, and trade channels all weigh against a finding of likelihood of confusion. The applicant’s mark is dissimilar from the COGNAC certification mark in terms of sound, appearance, connotation and commercial impression. The parties’ respective goods and services are not related. Use the COLOGNE & COGNAC ENTERTAINMENT mark and design will not cause consumers to believe that the owners of the COGNAC mark for brandy have now ventured into the business of sponsoring or authorizing production of recordings or recording services. Nor do the respective good and services travel in similar trade channels to the same consumers. That rap and hip-hop musicians endorse various brands of Cognac, have established their own brands, and frequently use the term in song lyrics or titles does not, standing alone, demonstrate an overlap of trade channels.

The Board also found that the conditions of sale, consumer sophistication, actual confusion, and bad faith factors are neutral. Weighing the relevant factors, the Board found that no likelihood of confusion exists.

Dilution. Next, the Board concluded that the owners of the COGNAC certification mark for brandy failed to demonstrate dilution through blurring. The dilution claim was not sufficiently pleaded or tried by the parties. The owners of the COGNAC mark did not demonstrate by a preponderance of the evidence that the COGNAC certification mark is famous for likelihood of confusion, let alone for dilution purposes, which is a more difficult standard to meet.

Dissent. Administrative Trademark Judge Frances Wolfson dissented from the majority’s dismissal based on likelihood of confusion. While Wolfson concurred in the majority’s decision to dismiss the dilution by blurring claim, she disagreed with the majority on the likelihood of confusion analysis. Wolfson contended that COGNAC is a famous mark in connection with brandy from the Cognac region of France produced under, and governed by, a strict set of laws, for purposes of the likelihood of confusion analysis. Therefore, Wolfson would find the CONGNAC mark is famous and qualifies for enhanced protection against a likelihood of confusion.

The case is Opposition No. 91250532.

Attorneys: J. Scott Gerien and Joy L. Durand (Dickenson Peatman & Fogarty) for Bureau National Interprofessionnel du Cognac and Institut National Des Appellations d’Origine. Richard Gearhart and James Klobucar (Gearhart Law, LLC) for Cologne & Cognac Entertainment.

Companies: Bureau National Interprofessionnel du Cognac; Institut National Des Appellations d’Origine; Cologne & Cognac Entertainment

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