Bureau Nat’l Interprofessionnel DU Cognac v. Cologne

Authored by: Jeremy J. Gustrowsky

In a recent decision, the Federal Circuit addressed a unique trademark dispute between the French organizations responsible for protecting the COGNAC certification mark and a hip-hop record label seeking to register the name “COLOGNE & COGNAC ENTERTAINMENT.” The core issue was whether the use of “COGNAC” in the music and entertainment space could cause confusion or dilute the reputation of the famous French brandy certification.

The court found that the Trademark Trial and Appeal Board (TTAB) had made several errors in its analysis. Notably, the Board had incorrectly required that the COGNAC mark be famous specifically for its certification status, rather than its broader recognition as a symbol of high-quality French brandy. The court clarified that a certification mark like COGNAC can be famous for its regional or quality associations, even if consumers aren’t aware of the technical certification process.

Additionally, the court criticized the Board for downplaying evidence that COGNAC is widely recognized and popular, especially within the hip-hop community, and for failing to properly consider the overlap between the music industry and the branding of luxury spirits. The court also noted that the Board was wrong to assume that fame from sales and advertising should be attributed only to brand names like HENNESSEY, rather than the COGNAC mark itself.

Ultimately, the Federal Circuit vacated the Board’s decision and sent the case back for further review, instructing the Board to use the correct legal standards when evaluating the fame and potential confusion or dilution of the COGNAC mark. This case highlights the complexities of trademark law when cultural trends and product branding intersect.