US Appeals Court Sends Dispute Between French Cognac Cartel And Music Label Back To USPTO

You know, when you've written as much as I have about trademark disputes, there are times when you think you've seen everything, only to have the universe remind you that the depth of silliness around trademarks can always get deeper. The subject of today's conversation is going to be a certification mark. While afforded similar protections to a trademark, they are primarily used by a third party, with permission of the owner of a trademarked product, to validate that a product meets certain agreed upon quality standards from the trademark owner. You can find some examples here, but one that is easy to understand is the Energy Star certification mark. To have an Energy Star stamp or mark included on the packaging or product of an electronic good, it must meet the Energy Star standards. Meanwhile, other related goods or services cannot use the Energy Star" term or symbols in a way that would be confusing to the public. Make sense? Sweet.

The Bureau National Interprofessional du Cognac group, or BNIC, is a consortium in France of makers of cognac. The BNIC has a certification mark for cognac in the United States. Unless a cognac product meets certain standards, it cannot call itself cognac. Silly in my view, but not nearly as silly as when the BNIC decided to oppose a trademark application in the United States for a music label called Cologne & Cognac Entertainment merely for using cognac" in its name. The USPTO managed to get the question on this opposition right, allowing the mark to proceed because the liquor markets and music industry markets aren't related and the public was not going to be confused between the two.

But the BNIC appealed that decision and the appeals court, which should be investigated for drinking cognac on the job, sent this back to the USPTO stating that it had erred in its analysis for what protections the BNIC mark is afforded.

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.

This. Is. Fucking. Absurd.

For starters, as I mentioned, certification marks are for quality standards or the achievement of certain criteria. They are not geographical indicator marks, a la Champagne, which appears to be what the appeals court is referring to. Part of the problem here is that the American trademark system doesn't have GI marks, and instead will occasionally afford GI type protections via collective marks and, sometimes, certification marks. But those really are tangential uses, with quality and standards being the primary purpose. The fact is that cognac is named after a region in France, but the mark in question is the name of the drink that is almost certainly more famous worldwide than this region. Georgia Peaches" is different than Cognac." One tells you what the product is and where it came from. The other is merely the name of the product.

But, fine, perhaps you want to argue that a certification mark in this case is doing the job of what would elsewhere be a GI mark. That still doesn't make any of this infringement. The music business is an industry entirely unrelated to the alcohol industry, as the USPTO rightly pointed out. And no amount of hip-hop artists either partnering with cognac companies or rapping about the drink in their songs is going to somehow cause the public to think that the music label has literally anything to do with a cartel of cognac makers in a region in France.

Now, I have no idea what the USPTO will do as a result of this judicial rebuke, but I sure hope to god it won't merely roll over and rescind its previous approval for the music label's trademark. Because the idea of the BNIC being able to police language half a world away in this manner should be plainly bonkers to anyone with a working brain.