IP Law Daily, TRADEMARK—TTAB: On remand, Board sides with French cognac authorities in music trademark dispute, (Jul 30, 2025)

By George Basharis, J.D.

The Trademark Trial and Appeal Board ruled that a hip-hop label’s composite mark including the term “COGNAC” is likely to cause confusion with the French regional certification mark for brandy, reversing its prior decision after a Federal Circuit remand.

On remand from the U.S. Court of Appeals for the Federal Circuit, the Trademark Trial and Appeal Board has issued a final decision siding with French authorities who control the COGNAC geographic certification mark, sustaining their opposition to registration of the COLOGNE & COGNAC ENTERTAINMENT mark by a hip-hop and R&B label. The Board’s new ruling reverses its previous dismissal and adopts the Federal Circuit’s directive to reevaluate several likelihood-of-confusion factors, particularly the fame and strength of the COGNAC mark as an indicator of geographic origin (Bureau National Interprofessionnel du Cognac v. Cologne & Cognac Entertainment, No. 91250532 (T.T.A.B. July 28, 2025)).

Certification mark gains wider protection after Federal Circuit reversal. The long-running dispute centers on an application by Cologne & Cognac Entertainment for a stylized mark featuring the term COGNAC in connection with music recordings and entertainment services in Classes 9 and 41. The Bureau National Interprofessionnel du Cognac (BNIC) and the Institut National Des Appellations d’Origine (INAO) opposed the registration, asserting likelihood of confusion and dilution by blurring based on their common law certification mark for brandy produced in the Cognac region of France.

In 2022, the Board dismissed the opposition, concluding in a divided decision that the COGNAC certification mark was not famous and that confusion was unlikely due to differences in the marks, the goods and services, and the trade channels. It also dismissed the dilution claim as insufficiently pleaded.

The Federal Circuit vacated that decision in August 2024, holding that the Board had committed multiple legal errors. The appellate court found that the Board incorrectly analyzed fame by requiring that consumers recognize COGNAC as a certification mark, rather than as a well-known indicator of geographic origin. The court emphasized that fame under the DuPont framework does not depend on consumer awareness of the certification function itself. The court also faulted the Board’s treatment of sales and marketing data and found that it failed to properly evaluate record evidence connecting Cognac with the music industry, particularly in hip-hop culture.

The Federal Circuit further held that the dilution claim was sufficiently pleaded, reasoning that the opposition provided adequate notice that COGNAC had become well known long before Cologne & Cognac Entertainment’s alleged first use.

Board reconsiders likelihood of confusion. Revisiting its analysis, the Board adhered to its earlier findings that the opposers have standing and priority, and that the mark COGNAC qualifies as a valid regional certification mark for brandy under U.S. law. It then conducted a fresh analysis of the DuPont factors as instructed by the Federal Circuit.

As to fame, the Board reversed its previous conclusion and determined that the COGNAC mark enjoys substantial commercial strength in the United States. It credited unrebutted evidence of nearly $2 billion in U.S. Cognac shipments in 2019 and hundreds of millions in annual sales dating back over a decade. The Board also gave weight to promotional efforts by BNIC, including public relations campaigns, media partnerships, and educational initiatives. It found that the COGNAC mark is widely recognized by U.S. consumers as identifying brandy from a particular region of France and placed the mark at the higher end of the commercial strength spectrum.

With respect to the similarity of the marks, the Board departed from its earlier analysis and concluded that the overall commercial impression of Cologne & Cognac Entertainment’s mark is similar enough to create a likelihood of confusion. The Board emphasized that COGNAC remains the dominant element in both marks and that the term’s connotation of prestige and French authenticity is central to the entertainment label’s branding. It rejected the applicant’s argument that the musical context changes the meaning of the mark, observing that the appeal to elegance and luxury derives from the fame of the certification mark itself.

Relatedness of goods and trade channels. The Board also reconsidered the relatedness of the parties’ goods and services. In the original decision, the Board found no meaningful connection between brandy and music entertainment. On remand, however, it accepted BNIC’s and INAO’s evidence and arguments that Cognac has long-standing cultural associations with hip-hop artists and is frequently referenced in lyrics, endorsements, and advertising.

The Board acknowledged that while brandy and music recordings are not functionally related, the overlap in marketing channels and the increasing convergence of liquor branding and entertainment make confusion plausible. It held that consumers encountering the applicant’s mark could mistakenly believe that the COGNAC authorities were sponsoring or otherwise associated with the entertainment label.

Dilution claim also sustained. In addition to reversing course on the likelihood of confusion claim, the Board also sustained the dilution claim. It found that the fame of the COGNAC mark was sufficient under the higher standard for dilution, and that the applicant’s use of the mark in a separate industry would impair the distinctiveness of the certification mark. The Board noted that because certification marks are not used by their owners but appear across a range of producers’ goods, they are particularly susceptible to dilution by blurring when adopted in unrelated commercial contexts.

Based on the revised analysis, the Board sustained the opposition on both grounds and refused registration of the COLOGNE & COGNAC ENTERTAINMENT mark.

The Case is Opposition No. 91250532.

Judge: Wellington, T.

Attorneys: J. Scott Gerien (Dickenson Peatman & Fogarty APLC) for Bureau National Interprofessionnel du Cognac and Institut National Des Appellations d'Origine. Richard Gearhart (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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