A U.S. appeals court on Tuesday revived a complaint from the French union of cognac makers against music label Cologne & Cognac Entertainment over the use of “cognac” in its name.
The U.S. Court of Appeals for the Federal Circuit sent the case back, opens new tab to the U.S. Patent and Trademark Office to reconsider the agency’s ruling that the hip-hop and R&B label’s name would not confuse consumers into thinking it was affiliated with the spirit.
Spokespeople and attorneys for the union – the Bureau National Interprofessionnel du Cognac (BNIC) – and the label did not immediately respond to requests for comment on the decision.
BNIC represents growers, producers and sellers of cognac, the grape brandy made in the Cognac region of France. It opposed Cologne & Cognac’s attempt to register a federal trademark covering “Cologne & Cognac Entertainment” at the USPTO, arguing that the mark would mislead customers into thinking the label was affiliated with the alcohol.
The PTO ruled for the label, finding that its name would not cause confusion when used in the music production field. A three-judge Federal Circuit panel threw out the decision on Tuesday and sent the case back to the trademark office.
U.S. Circuit Judge Alan Lourie said that the PTO miscalculated how famous “cognac” is in a way that improperly favored the label in the office’s confusion analysis.
The office should have considered “whether or not [BNIC’s] mark was famous as an indicator of its geographic origin” – like Florida oranges, Georgia peaches or Darjeeling tea – “but it did not do so,” Lourie said.
Lourie also found that the office made mistakes in analyzing the marks’ similarity and the relatedness of the goods and services they cover, noting that several hip-hop artists have partnered with cognac brands and used “cognac” in song titles and lyrics.
The case is Bureau National Interprofessionnel du Cognac v. Cologne & Cognac Entertainment, U.S. Court of Appeals for the Federal Circuit, No. 23-1100.
For BNIC: Peter Brody of Ropes & Gray
For Cologne & Cognac: James Klobucar of Gearhart Law
