In 2019, a New Jersey-based entertainment company submitted a trademark application to the U.S. Patent and Trademark Office for a range of services, including music production, performance recordings, and entertainment-related offerings. The mark incorporated the word "Cognac," which sparked concerns among French producers of the same name.
The Bureau National Interprofessional du Cogn, a French organization representing Cognac brandy producers, contested the application. BNIC asserted that "Cognac" is a geographical indication, denoting products from a specific region in France. Its use in a trademark for unrelated services could mislead consumers about the origin of the goods or services.
In 2022, the Trademark Trial and Appeal Board ruled in favor of BNIC. The board determined that BNIC held exclusive rights to the "Cognac" certification mark and that the use of "Cognac" in the entertainment company’s mark could confuse consumers. However, the board also noted that the entertainment mark was distinct enough to avoid confusion, primarily because "Cologne & Cognac" formed a dominant part of the mark.
BNIC provided historical and cultural context, emphasizing that "Cognac" has long been associated with music, especially in the hip-hop community. Artists such as Snoop Dogg and 50 Cent have collaborated with Cognac brands, reinforcing the connection between the product and the music industry.
Despite this, the board dismissed the likelihood of confusion under Section 2(d) of the Trademark Act, arguing that the brand name in the entertainment mark would dominate consumer perception. The board also dismissed a dilution claim, citing improper pleading.
A dissenting opinion from Judge Wolfson challenged the board’s reasoning, highlighting the strong overlap between the music and Cognac industries. He argued that the board failed to properly assess the likelihood of confusion due to shared audiences and market channels.
BNIC appealed the decision to the U.S. Court of Appeals for the Federal Circuit. During oral arguments, the court panel signaled that the board’s decision was likely to be overturned. The judges criticized the board for failing to properly evaluate the fame of the "Cognac" certification mark and for making assumptions about consumer perception.
Judge Clevenger noted that the board incorrectly assumed that the presence of "Cognac" in the entertainment mark would automatically lead to a presumption of dominance by the brand name. Judge Hughes pointed out that the board did not adequately distinguish between the fame of the "Cognac" mark and the brand name itself.
The case highlights the complexities of trademark law, particularly in cases involving geographical indications and the risk of consumer confusion. It also underscores the importance of trademark monitoring, especially for businesses using names that may have historical or cultural significance in other industries. This dispute also exemplifies concerns around UDRP cases when brands overlap. Understanding Cybersquatting is also essential in today’s digital landscape.