US Court Of Appeals Revives BNIC’s ‘Cognac’ Trademark Fight With Cologne & Cognac Entertainment

US Court Of Appeals Revives BNIC’s ‘Cognac’ Trademark Fight With Cologne & Cognac Entertainment

Sends the matter back to the Patent and Trademark Office for reconsideration

The US Court of Appeals for the Federal Circuit has revived a complaint from the Bureau National Interprofessionnel du Cognac (BNIC), the French union of cognac makers, against music label Cologne & Cognac Entertainment over the use of ‘cognac’ in its name.

The court returned the matter to the Patent and Trademark Office (PTO) to reconsider the agency's ruling that the hip-hop and R&B label's name should not confuse consumers into thinking it was affiliated with the spirit.

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 at the PTO, arguing that the customers could be misled by the label being affiliated with the alcohol brand.

However, the PTO had ruled that the name could not be confused when used in music production.

The three-judge bench of the Federal Circuit sent the case back to the trademark office for reconsideration.

The US Circuit Judge Alan Lourie held that the PTO miscalculated how famous ‘cognac’ was and 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.”

The judge observed that the PTO made a mistake in analyzing the marks' similarity and the relatedness of the goods and services. He noted that several hip-hop artists partnered with cognac brands and used ‘cognac’ in song titles and lyrics.