United States Court of Appeals 

for the Federal Circuit ______________________ 

BUREAU NATIONAL INTERPROFESSIONNEL DU 

COGNAC, INSTITUT NATIONAL DES 

APPELLATIONS D’ORIGINE,

Appellants

v.

COLOGNE & COGNAC ENTERTAINMENT,

Appellee

______________________ 

2023-1100

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

91250532.

______________________ 

Decided: August 6, 2024

______________________ 

PETER M. BRODY, Ropes & Gray LLP, Washington, DC, 

argued for appellants. Also represented by NICOLE S.L.

POBRE, KATHRYN C. THORNTON. 

 JAMES KLOBUCAR, Gearhart Law, LLC, Summit, NJ, 

argued for appellee. Also represented by RICHARD I.

GEARHART. 

 M. PATRICK YINGLING, Reed Smith LLP, Chicago, IL, 

for amici curiae Colombian Coffee Growers Federation, 

Confederation Generale Des Producteurs De Lait De 

Case: 23-1100 Document: 42 Page: 1 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

2

Brebis Et Des Industriels De Roquefort, Consejo Regulador 

del Tequila, A.C., Consorzio del Prosciutto di Parma, Distilled Spirits Council of the United States, Inc., Federation 

of the Swiss Watch Industry FH, Irish Whiskey Association, Kentucky Distillers Association, Napa Valley Vintners, Organization for an International Geographical 

Indications Network, Scotch Whisky Association. Also represented by JILLIAN L. BURSTEIN; TED A. HAGES, Pittsburgh, PA.

______________________ 

Before LOURIE, CLEVENGER, and HUGHES, Circuit Judges. 

LOURIE, Circuit Judge. 

Bureau National Interprofessionnel du Cognac, the interprofessional union of all growers, producers, and merchants of COGNAC spirits, and Institut National des 

Appellations d’Origine, an administrative agency within 

the French government (collectively, “Opposers”), are the 

entities responsible for controlling and protecting the certification mark COGNAC. Opposers filed an opposition to 

a trademark application for COLOGNE & COGNAC 

ENTERTAINMENT and corresponding design mark by 

Cologne & Cognac Entertainment (“Applicant”), a hip-hop 

record label. The United States Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board (“the 

Board”) dismissed the opposition to the challenged mark, 

holding that the mark, if used for hip-hop music and production services, was not likely to cause confusion under 

15 U.S.C. § 1052(d) or dilution under 15 U.S.C. § 1125(c) to 

the COGNAC certification mark. Bureau Nat’l Interprofessionnel du Cognac v. Cologne & Cognac Entm’t, 2022 WL 

3755301 (T.T.A.B. Aug. 25, 2022) (“Decision” or “Dissent,” 

as appropriate). For the following reasons, we vacate and 

remand. 

BACKGROUND

Unlike trademarks, which indicate a single source of a 

product or service, certification marks are used by a person 

Case: 23-1100 Document: 42 Page: 2 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

3

other than its owner with authorization from the owner. 

15 U.S.C. §§ 1127(1), 1064(5). They generally “certify regional or other origin, material, mode of manufacture, 

quality, accuracy, or other characteristics of such person’s 

goods or services or that the work or labor on the goods or 

services was performed by members of a union or other organization.” 15 U.S.C. § 1127; see also TMEP 1306.05(j) 

(showing examples). To that end, certification marks are 

expressly exempted marks of regional origin from the Lanham Act’s general rule precluding “primarily geographically descriptive” marks. 15 U.S.C. § 1052(e) (explaining 

that marks for goods may not be “primarily geographically 

descriptive of them, except as indications of regional origin 

may be registerable under section 1054 of this title”). Pursuant to 15 U.S.C. § 1054, “certification marks, including 

indications of regional origin, shall be registerable . . . in 

the same manner and with the same effect as are trademarks.” Certification marks are therefore entitled to the 

same protections as trademarks. See Institut Nat’l des Appellations d’Origine v. Brown-Forman Corp., 

47 U.S.P.Q.2d (BNA) 1875, 1891 (T.T.A.B. 1998) (“BrownForman”) (rejecting an applicant’s argument that 

COGNAC “is entitled to a more narrow scope of protection 

merely because it is a certification mark rather than a 

trademark”). 

Opposers are responsible for controlling and protecting 

the common law certification mark COGNAC for brandy 

manufactured in the Cognac region of France according to 

certain standards. The United States Alcohol and Tobacco 

Tax and Trade Bureau, the federal agency charged with 

regulating the labeling and advertising of spirits products 

in the United States, prohibits use of the term “COGNAC” 

on spirits products except for “[g]rape brandy distilled exclusively in the Cognac region of France, which is entitled 

to be so designated by the laws and regulations of the 

French Government.” 27 C.F.R. § 5.145(c)(2). Although 

COGNAC is not registered with the PTO, it is undisputed 

that it is a common law certification mark. See Brown-Forman, 47 U.S.P.Q.2d (BNA) at 1885 (“COGNAC is not a 

Case: 23-1100 Document: 42 Page: 3 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

4

generic term, but rather a valid common law regional certification mark.”); Decision at *5 (finding that Applicant 

did not dispute the evidence “regarding the history of the 

Cognac certification mark or contest that Opposers have 

been certifying Cognac destined for the U.S.”). As long as 

a common law certification mark has been shown to have

been in use prior to the date of a junior mark and not abandoned, it is entitled to the same level of protection against 

likelihood of confusion and dilution as a registered mark. 

See 15 U.S.C. §§ 1052(d), 1125(c) (referring to “marks” 

without specifying that they be “registered”); see also

JBLU, Inc. v. United States, 813 F.3d 1377, 1381 (Fed. Cir. 

2016) (“[T]rademark rights stem from use, not registration.”); Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1383 

(Fed. Cir. 2002) (“Unregistered marks receive essentially 

the same protection as registered marks[.]”); Decision at *2 

(“[A]n opposer may rely upon prior common law rights in 

an unregistered certification mark.”). 

Applicant seeks registration on the Principal Register 

of the composite mark depicted below (with “Entertainment” disclaimed): 

for 

Audio and video recordings featuring music and artistic performances; compact discs featuring music; 

digital materials, namely, CDs and downloadable

digital audio recordings featuring music; digital 

music downloadable from the internet; downloadable video recordings featuring music; musical 

sound recordings; musical video recordings 

Case: 23-1100 Document: 42 Page: 4 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

5

in International Class 9; and

Music composition services; production of musical 

videos; entertainment in the nature of live performances by musical artists; entertainment information services, namely, providing information 

and news releases about a musical artist; entertainment services by a musical artist and producer, 

namely, musical composition for others and production of musical sound recordings; entertainment services, namely, non-downloadable prerecorded music and graphics presented to mobile 

communications devices via a global computer network and wireless networks; entertainment services, namely, providing non-downloadable 

prerecorded music, information in the field of music, and commentary and articles about music, all 

online via a global computer network; film and 

video film production; providing a website featuring non-downloadable videos in the field of music; 

record master production

in International Class 41. Decision at *1 (quoting U.S. 

Trademark App. 88/329,690 (filed Mar. 7, 2019)). 

Opposers filed an opposition to the registration of Applicant’s mark, claiming priority as well as (1) likelihood of 

confusion with the COGNAC certification mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); and 

(2) that Applicant’s mark, by creating an association with 

the COGNAC mark, would be likely to cause dilution 

through blurring under Section 43(c) of the Trademark Act, 

15 U.S.C. § 1125(c). Applicant denied the salient allegations and asserted various defenses, including that Opposers failed to state a claim upon which relief could be 

granted. Decision at *1–2. However, the Board found that 

Applicant ultimately waived that defense by not filing a 

motion to dismiss or raising the issue at trial. Id. at *2 n.4.

In a split decision, the Board dismissed the opposition 

to the challenged mark, holding that the mark, if used for 

Case: 23-1100 Document: 42 Page: 5 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

6

hip-hop music and production services, was not likely to 

cause confusion under 15 U.S.C. § 1052(d). The majority 

found that all relevant factors set forth in In re E.I. DuPont 

DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973)

(“DuPont”), either weighed against a likelihood of confusion or were neutral. Decision at *6–15. Specifically, it 

found that the COGNAC mark is not strong or famous; that 

Applicant’s mark has a different “connotation” from that of 

COGNAC and thus is dissimilar; and that the relevant 

goods, services, trade channels, and purchasers do not 

overlap. Id. It found the consumer sophistication, actual 

confusion, and bad faith factors to be neutral, id. at *14–15, 

and did not address the other factors, id. at *6 (explaining 

that it considered only the DuPont factors “for which there 

is evidence and argument of record”). The majority therefore held that, on balance, confusion was unlikely. Id. at 

*15.

Regarding dilution under 15 U.S.C. § 1125(c), despite 

Applicant’s waiver, the Board ruled that Opposers’ pleading was defective because it did not include a specific allegation that the fame of COGNAC predated Applicant’s 

constructive use date, and further ruled that whether or 

not COGNAC’s fame predated Applicant’s use was not 

tried by implied consent. Decision at *15–16. The majority 

ruled that, in the alternative, Opposers had not proven the 

fame element of dilution, relying on its analysis of fame for 

purposes of likelihood of confusion. Id. at *16.

Administrative Trademark Judge (“ATJ”) Wolfson dissented from the majority’s dismissal of the likelihood of 

confusion claim, asserting that “the majority incorrectly 

analyzes the first, second and third DuPont factors and 

fails to accord proper weight to the fifth and thirteenth factors.” Dissent at *17 (Wolfson, ATJ, concurring-in-part, 

dissenting-in-part). ATJ Wolfson found that those errors 

“[led] the majority to find incorrectly that confusion of consumers is unlikely.” Id. ATJ Wolfson concurred that dilution was not properly pleaded or tried by implied consent, 

but opined that “given the fame of the mark and the degree 

Case: 23-1100 Document: 42 Page: 6 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

7

of association with it that Applicant’s mark engenders,” it 

is “highly likely that Opposers would succeed in their dilution by blurring claim” if it had been pleaded and tried. Id. 

at *17 n.55.

Opposers timely appealed. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. § 1071(a)(1).

DISCUSSION

I. LIKELIHOOD OF CONFUSION

Likelihood of confusion is a question of law based on 

underlying factual findings. Stone Lion Cap. Partners, L.P. 

v. Lion Cap. LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014). We 

review the Board’s ultimate legal conclusion de novo, In re 

Int’l Flavors & Fragrances, Inc., 183 F.3d 1361, 1365 (Fed.

Cir. 1999), and its underlying findings of fact for substantial evidence, On-Line Careline Inc. v. Am. Online, Inc., 

229 F.3d 1080, 1085 (Fed. Cir. 2000). Whether or not a 

likelihood of confusion exists is determined using the factors set out in DuPont: 

(1) The similarity or dissimilarity of the marks in 

their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the 

goods or services as described in an application or 

registration or in connection with which a prior 

mark is in use.

(3) The similarity or dissimilarity of established, 

likely-to-continue trade channels.

(4) The conditions under which and buyers to 

whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, 

length of use).

(6) The number and nature of similar marks in use 

on similar goods.

Case: 23-1100 Document: 42 Page: 7 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

8

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under 

which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not 

used (house mark, “family” mark, product mark).

(10) The market interface between applicant and 

the owner of a prior mark . . . . 

(11) The extent to which applicant has a right to 

exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether 

de minimis or substantial.

(13) Any other established fact probative of the effect of use.

DuPont, 476 F.2d at 1361. 

Not all the DuPont factors are necessarily “relevant or 

of equal weight in a given case, and any one of the factors 

may control a particular case.” In re Majestic Distilling 

Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003) (internal quotation marks omitted). However, we have consistently held 

that the fame of a prior mark, when present, is a “dominant” consideration in the balancing the DuPont factors

and the likelihood of confusion analysis. Recot, Inc. v. Becton, 214 F.3d 1322, 1327–28 (Fed. Cir. 2000). “Famous 

marks are accorded more protection precisely because they 

are more likely to be remembered and associated in the 

public mind than a weaker mark.” Id. at 1327 (citing Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 

352 (Fed. Cir. 1992)). 

Opposers argue (A) that the Board applied the incorrect legal standard for fame and that its finding that the 

COGNAC mark is not famous was not supported by substantial evidence, (B) that the Board legally erred in analyzing the similarity of the parties’ marks and that its 

allegedly inconsistent findings show that its conclusion on 

Case: 23-1100 Document: 42 Page: 8 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

9

similarity was not supported by substantial evidence, and 

(C) that the Board applied the wrong legal standard in 

evaluating the relatedness of goods, trade channels, and 

consumers. We agree and address each argument in turn.

A. FAME OF SENIOR MARK

We first consider the fifth DuPont factor. That factor 

pertains to “[t]he fame of the prior mark (sales, advertising, 

length of use).” DuPont, 476 F.2d at 1361. In a likelihood 

of confusion analysis, the fame or strength of a mark is not 

a binary factor, but rather varies along a spectrum from 

very strong to very weak. Joseph Phelps Vineyards, LLC 

v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 

2017). Where on that spectrum a mark falls impacts its 

scope of protection. “A famous mark is one ‘with extensive 

public recognition and renown.’” Bose Corp. v. QSC Audio 

Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002) (quoting 

Kenner Parker Toys, 963 F.2d at 353). Fame is a “dominant” factor in a likelihood of confusion analysis because 

famous marks are afforded a broad scope of protection. 

Recot, 214 F.3d at 1327–28.

The majority seems to have required that COGNAC be 

famous for its “certification status,” rather than its geographic significance or other indicator(s) (e.g., quality, 

method of manufacture, etc.). See, e.g., Decision at *9 (explaining that the mark was used “in a manner that is not 

likely to heighten consumer awareness to the certification 

status of the term COGNAC”); id. at *10 (finding that Opposers failed to show that the “COGNAC mark is a strong 

one in terms of renown for conveying the message that the 

goods are certified by Opposers”); id. (discussing the difficulties in “measuring the level of consumer awareness for 

the goods’ certification status”). We find that to be error. 

A certification mark may be famous for “regional or other 

origin, material, mode of manufacture, quality, accuracy, 

or other characteristics of such person’s goods or services 

or that the work or labor on the goods or services was performed by members of a union or other organization,” 

15 U.S.C. § 1127 (emphasis added), but it need not be 

Case: 23-1100 Document: 42 Page: 9 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

10

famous for all of its indications, and it need not be famous 

for its certification function. 

In Brown-Forman, a Board decision that the Director 

of the PTO has deemed precedential, the Board granted 

summary judgment that “as a matter of law, . . . COGNAC

is a common law regional certification mark.” 

47 U.S.P.Q.2d (BNA) at 1884. In the process of reaching 

that determination, the Board found that “the issue is not 

whether the public is expressly aware of the certification 

function of the mark or the certification process underlying 

use of the mark, but rather is whether the public understands that goods bearing the mark come only from the region named in the mark.” Id. It further held that, for the 

mark to be a certification mark, “[n]either the statute nor 

the caselaw requires that purchasers also be expressly 

aware of the term’s certification function, per se.” Id.; see 

also Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 

121 U.S.P.Q.2d (BNA) 1477, 1483 (T.T.A.B. 2017) (similar); Tea Bd. of India v. Republic of Tea, Inc., 80 U.S.P.Q.2d

(BNA) 1881, 1887 (T.T.A.B. 2006) (similar); TMEP 

§ 1306.05(c). We agree and conclude that the same rationale applies to determining the fame of the mark. Not 

only is there no statutory requirement that consumers be 

aware of the “certification status” of the mark,1 but such a 

requirement could be impractical and inconsistent with ordinary purchasing behaviors. 

In this case, Opposers argued that the COGNAC mark 

was a famous designator of regional origin. The Board 

should therefore have considered whether or not the mark 

was famous as an indicator of its geographic origin, but it 

1 Indeed, Applicant’s counsel agreed that consumers’ 

knowledge of the certification process is not necessary for 

fame and that if the Board required such a showing, then 

it legally erred. Oral Arg. at 23:56–24:32, available at

https://oralarguments.cafc.uscourts.gov/default.aspx?fl=23 

-1100_06042024.mp3. 

Case: 23-1100 Document: 42 Page: 10 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

11

did not do so. That failure alone is an error necessitating 

vacatur and remand. 

The Board also seemed to hold that substantial sales 

and advertising of certified COGNAC products could not

establish the fame of the certification mark because those 

products also prominently bear brand or house names (e.g., 

HENNESSEY). See Decision at *8–10 (“Unless there is evidence to the contrary, there is the assumption that the 

[house] mark has made an impression on the consumer 

based on the volume of sales and advertising of the goods 

or services under that mark.”); Oral Arg. at 25:53–28:20

(Applicant’s counsel agreeing that the Board applied a presumption that any fame of products was from the house 

mark, rather than the certification mark). That cannot be 

the case. Certification marks are often present with a 

house or brand name mark because they can only be used 

on third-party products. 15 U.S.C. §§ 1127(1), 1064(5). 

The fame of a house mark therefore cannot, per se, preclude a finding of fame of a certification mark that appears 

on the same product. Nor is there a presumption that the 

fame of a product is the result of the house mark over the 

certification mark. Indeed, some products may be more famous for their regional origin, as indicated by their certification mark, than for their brand name, e.g., FLORIDA 

oranges, DARJEELING tea, and GEORGIA peaches. And, 

as the Board acknowledged, it is possible that consumers 

“will ask for ‘a Cognac,’ without specifying a brand, or they 

may ask what ‘Cognac’ brands are available.” Decision at 

*8. That a brand name, e.g., HENNESSEY, may be famous 

does not mean the certification mark cannot also be famous. It is not an either/or situation.2 See Bose, 293 F.3d 

at 1374–76 (finding that product marks, ACOUSTIC 

2 Although the Board acknowledged that “this is not 

an ‘either . . . or’ proposition,” its analysis belies that assertion. Decision at *8. 

Case: 23-1100 Document: 42 Page: 11 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

12

WAVE and WAVE, were famous in addition to their house 

mark, BOSE). 

The issue of how to address sales and advertising expenditures as evidence of fame for certification marks that 

are accompanied by house or product marks is an issue of 

first impression for this court. However, we have addressed a similar issue in Bose: analyzing fame for product 

marks that travel with famous house marks. Id. at 1374. 

In that case, we concluded that “those who claim fame for 

product marks that are used in tandem with a famous 

house mark can properly be put to tests to assure their entitlement to the benefits of fame for the product marks” 

such that the product mark must be shown to have “independent trademark significance.” Id.

Finding that the Board incorrectly rejected sales and 

advertising expenditure evidence as not indicative of the 

fame of the product mark, we reasoned in Bose that that

evidence should be “seen both in the context of how the 

products are presented in advertising and sales materials 

. . . and in the context of the continuous and extensive critical consideration the marketed products have enjoyed.” 

Id. at 1375. We found that, since the record provided “evidence that the consuming public has been exposed frequently and nationwide to extensive descriptions of the two 

products,” the commercial evidence supported a finding 

that the product mark was famous even though it accompanied a famous house mark. Id. at 1376. We find the 

reasoning in Bose to be relevant and applicable to the present case. 

Here the Board correctly noted that “[i]n evaluating the 

relevance of the number of sales of certified goods or services, as well as the extent of advertising and its effect on 

consumers, we must look to what impression is being made 

on the consuming public.” Decision at *8. But it then

simply stated that it was “difficult to determine what is 

driving the significant sales from the perspective of the 

consumers” and found that “Opposers’ evidence does not 

provide sufficient support for an unequivocal conclusion 

Case: 23-1100 Document: 42 Page: 12 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

13

that their COGNAC mark is a strong one in terms of renown for conveying the message that the goods are certified 

by Opposers as to regional origin and meeting the prescribed qualities.” Id. at *8, *10. In support, the Board 

pointed out that COGNAC is often used “inconspicuously” 

on the products it appears. Id. at *9. But that is frequently 

the case for certification marks. Indeed, as the PTO has 

recognized, certification marks, by their nature, “may appear in an inconspicuous fashion.” TMEP § 1306.05(b)(iii). 

Their prominence, or lack thereof, should therefore not be 

determinative of fame. Thus, it was legal error for the 

Board to require “unequivocal” evidence that the volume of 

sales was driven by the COGNAC mark to rebut the presumption it applied that the commercial evidence was attributable to the house mark alone. 

Instead, the Board should have determined, based on 

the context-specific evidence, whether a portion of the sales 

and advertising evidence could be attributed to the 

COGNAC mark such that that evidence was indicative of 

fame for the certification mark. The Board noted, but 

failed to properly credit, evidence that “[t]he news and industry articles of record . . . reflect the renown of the brandy 

from France, and that it has been featured and is particularly popular within the hip hop music industry” and that 

Cognac has “success as a spirit.” Id. at *10. Indicia of 

critical attention and the general reputation of a marked 

product are the exact types of evidence that we found in 

Bose that the Board erroneously overlooked in determining 

that the sales and advertising numbers did not support a 

finding of fame. Bose, 293 F.3d at 1375–76. 

Most notably, each piece of evidence the Board highlighted to show that the mark is not famous, due to its allegedly diminished placement, would appear to show the 

opposite, consistently and frequently using the term 

COGNAC, irrespective of and sometimes without reference

to a house or brand name. See, e.g., Decision at *9 (reproducing images of bottles and excerpting news articles, advertisements, and cocktail recipes that all mention 

Case: 23-1100 Document: 42 Page: 13 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

14

COGNAC)3; see also Bose, 293 F.3d at 1374 (“[C]onsumer

awareness of the product mark apart from the fame of the 

associated house mark, whether demonstrated directly or 

indirectly, is a reliable test of the independence of the product mark from its parent house mark.”). The Board needed 

to consider whether or not the COGNAC certification mark 

was famous, independent of the brand or house marks it 

often appears with, yet it failed to do so. That was legal 

error.

In addition to, or perhaps because of, the Board’s legal 

errors, its factual findings regarding fame were inconsistent. In one breath, it concluded that “the evidence of 

record shows that Cognac . . . is a popular spirit in the 

United States, with impressive sales in terms of both the 

number of products sold and overall dollar value of those 

sales,” the record “reflect[s] the renown of the brandy from 

France,” COGNAC “is particularly popular within the hip 

hop music industry,” and it has “success as a spirit.” Decision at *10. Yet despite those factual findings, the Board 

puzzlingly concluded that the mark is not famous at all and 

merely “distinctive and entitled to a normal scope of protection.” Id. Those inconsistencies rise to the level that, 

even were there not legal errors, the Board’s finding that 

COGNAC is not famous was not supported by substantial 

evidence. See Honeywell Int’l Inc. v. Mexichem Amanco 

Holding S.A. De C.V., 865 F.3d 1348, 1354 (Fed. Cir. 2017) 

(finding the Patent Trial and Appeal Board’s analysis 

flawed due to internal inconsistencies); Linear Tech. Corp. 

v. Int’l Trade Comm’n, 566 F.3d 1049, 1064 (Fed. Cir. 2009) 

(finding that an International Trade Commission decision 

3 That those articles, recipes, and products frequently use a lowercase “c” is of no consequence. See Decision at *9. Although lack of capitalization may be relevant 

in determining whether or not a mark has become generic, 

which is not at issue here, it is not relevant to whether or 

not a mark is famous. 

Case: 23-1100 Document: 42 Page: 14 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

15

that was “internally inconsistent” was “not supported by 

substantial evidence”).

Notably, although its decision is not binding, a different panel of the Board, with a similar record before it, 

reached the opposite conclusion—just as the dissenting 

ATJ in this case did. See Dissent at *28. The prior Board 

decision found that the “COGNAC certification mark has 

achieved major commercial success in the United States 

when used in association with brandy and, therefore, the 

COGNAC certification mark would fall on the very strong 

end of the spectrum of fame for purposes of the likelihood of 

confusion analysis” and that the fame DuPont factor therefore “weigh[ed] heavily in favor of finding a likelihood of 

confusion.” Bureau Nat’l Interprofessionnel du Cognac v. 

Enovation Brands, Inc., 2020 WL 1528535 at *6 (T.T.A.B. 

2020) (emphasis added). The Board in this case did not attempt to distinguish that prior decision or otherwise address it. 

We leave it to the Board on remand, under the abovestated legal standard, to determine the extent of the fame 

of COGNAC and thus to what scope of protection it is entitled. Because fame is the “dominant” factor in a likelihood 

of confusion analysis and affects the overall strength and 

level of protection of the mark, on remand the Board should 

reconsider all of the DuPont factors for which there is argument and evidence of record. 

B. SIMILARITY OF MARKS

We next consider the first DuPont factor. It deals with

the similarity or dissimilarity of the marks in their entireties, considering their appearance, sound, connotation, and 

commercial impression. DuPont, 476 F.2d at 1361. However, it may be appropriate, in certain circumstances, to 

consider that, “one feature of a mark may be more significant than another, and it is not improper to give more 

weight to this dominant feature in determining the commercial impression created by the mark.” Coach Servs., 

Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. 

Case: 23-1100 Document: 42 Page: 15 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

16

Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW 

Holdings, LLC, 82 U.S.P.Q.2d (BNA) 1901, 1905 (T.T.A.B.

2007)); see also In re Nat’l Data Corp., 753 F.2d 1056, 1058 

(Fed. Cir. 1985) (“[T]here is nothing improper in stating 

that, for rational reasons, more or less weight has been 

given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in 

their entireties.”). “The proper test is not a side-by-side 

comparison of the marks, but instead ‘whether the marks 

are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks 

would be likely to assume a connection between the parties.” Coach Servs., 668 F.3d at 1368 (quoting Leading 

Jewelers Guild, 82 U.S.P.Q.2d at 1905). When one mark 

incorporates the entirety of another mark, it has been

found to be similar. See, e.g., Coca-Cola Bottling Co. of 

Memphis, Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 

556 (CCPA 1975); TiVo Brands LLC v. Tivoli, LLC, 

129 U.S.P.Q.2d (BNA) 1097, 1115 (T.T.A.B. 2018). 

As the Board acknowledged, the Applicant’s mark “incorporates the term COGNAC” in its entirety. Decision at 

*11. Further, it found that “COLOGNE & COGNAC is the 

dominant element,” which “appears prominently above the 

smaller and merely descriptive or generic term 

ENTERTAINMENT.” Id.; see also id. at *1 (noting that 

“Entertainment” was disclaimed). However, the Board

found that the marks were not similar because Applicant’s 

mark “engenders a different appearance, sound, commercial impression and connotation” from the certification 

mark. Decision at *11. But the Board’s explanation for 

that conclusion fails to provide the necessary support. 

The Board’s primary rationale for its finding that the 

marks are dissimilar was that COGNAC “informs consumers that the brandy being sold by the certified users comes 

from the Cognac region of France” whereas the Applicant’s 

mark “projects an image of sophistication and elegance.” 

Id. To the extent that the Board reached its conclusion that 

the connotations of the marks are different because 

Case: 23-1100 Document: 42 Page: 16 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

17

Opposers’ mark is a certification mark, we find that to be 

legal error. As the dissent points out: 

There is nothing in the language of Section 2(d) 

which mandates or warrants application of one 

level of likelihood of confusion analysis (i.e., the 

duPont analysis) in cases where the plaintiff’s 

mark is a trademark or service mark, but a different and more limited likelihood of confusion analysis in cases where the plaintiff’s mark is a 

certification mark. Section 2(d) does not distinguish between certification marks, on the one 

hand, and trademarks and service marks on the 

other. 

Dissent at *20; see also Brown-Forman, 47 U.S.P.Q.2d

(BNA) at 1891 (rejecting an applicant’s argument that 

COGNAC “is entitled to a more narrow scope of protection 

merely because it is a certification mark rather than a 

trademark”). Simply because COGNAC “informs consumers that the brandy being sold by the certified users comes 

from the Cognac region of France,” it does not mean that it 

cannot also “project an image of sophistication and elegance.” For example, just because the use of the FLORIDA 

certification mark for oranges may inform a consumer that 

the fruit product originates in Florida, it does not mean

that it cannot engender other qualities, such as freshness

or juiciness. For the Board to have limited COGNAC’s 

“connotation” to its certification function was error. 

More importantly, the record shows that Applicant’s 

mark “projects an image of sophistication and elegance” 

precisely because of its use of COGNAC. Indeed, the Board 

acknowledged that “the combination of terms ‘cologne’ with 

‘Cognac’ creates an image of a person wearing cologne and 

drinking brandy, projecting a certain lifestyle, such as one 

of leisure and high-living.” Decision at *11. And the Board 

found that COGNAC “is perceived as having a reputation 

for being a drink for an older or affluent clientele,” id. at 11 

n.38 (citing record evidence), but it made no such findings 

concerning the connotations of “cologne.” The dissent 

Case: 23-1100 Document: 42 Page: 17 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

18

points out that discrepancy, explaining that none of the 

record evidence “associate[s] the term ‘cologne’ with affluence, refinement, or the upper class. Indeed, to the extent 

Applicant’s mark evokes a lifestyle of leisure or high living, 

the materials show that it is the term COGNAC alone that 

projects this image.” Dissent at *19 n.56; see also id. at *18 

(“The meaning of Opposers’ mark has been incorporated 

into Applicant’s COLOGNE & COGNAC mark. For consumers of Applicant’s goods or services, the term COGNAC 

projects the identical meaning in Applicant’s mark as in 

Opposers’ mark . . . .”). Yet, despite the majority’s factual 

findings, the Board concluded that the “connotation and 

commercial impression of Applicant’s mark differs significantly from the meaning attributed to Opposers’ certification mark.” Decision at *11. Such conclusion that the 

marks have different connotations is contradicted by the 

record evidence and by the Board’s own findings that 

COGNAC is associated with affluent and upper-class consumers. It is therefore not supported by substantial evidence. See Honeywell, 865 F.3d at 1354; Linear Tech., 

566 F.3d at 1064. 

We do not decide the ultimate issue of whether or not 

the marks engender a different appearance, sound, or commercial impression such that they are dissimilar, DuPont, 

476 F.2d at 1361; we leave the Board to consider that on 

remand.

C. RELATEDNESS OF GOODS, TRADE CHANNELS, AND 

CONSUMERS

The Board addressed the second and third DuPont factors together, which consider the “similarity or dissimilarity and nature of the goods or services” and the “similarity 

or dissimilarity of established, likely-to-continue trade 

channels.” DuPont, 476 F.2d at 1361. Although the record 

evidence for each of those factors may overlap, that does 

not dictate the same conclusion for each. However, like the 

Board, we discuss the two in tandem.

Case: 23-1100 Document: 42 Page: 18 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

19

We question the Board’s declaration that certain record 

evidence is not “relevant” or “probative” to those factors. 

For example, the Board acknowledged that other entities 

had attempted “to adopt the same mark for musical recordings or entertainment services, e.g., SINATRA, 

MOTORHEAD, AC/DC, etc., and alcoholic beverages,” but 

then concluded that it was “unclear how this type of evidence is relevant.” Decision at *13. The Board likewise 

dismissed Opposers’ evidence that “COGNAC certified 

product has an intimate and legendary history with music, 

particularly rap and hip-hop music, in the United States,” 

including the use of authorized COGNAC products in song 

titles and song lyrics, and in partnerships between hip-hop 

artists and certified COGNAC brands. Id. at *12–13. We 

do not opine on the exact weight that that evidence should 

be given, but find that it was error for the Board to discount 

that evidence completely; it is undoubtedly relevant to the 

relatedness of goods, services, and trade channels. 

The Board’s failure to consider that evidence seems to 

stem from an erroneous comparison between the Opposers’

services of certifying and Applicant’s goods, services, and 

trade channels. Rather, the proper comparison is between 

the goods, services, and trade channels of certified users of 

the COGNAC mark (e.g., HENNESSEY) to Applicant’s

goods, services, and trade channels.4 Applicant claims that 

the Board merely made a “typo” in that section of its analysis, Applicant’s Br. at 28, but the repeated references to 

Opposers in the Board’s decision make that argument unpersuasive. The Board explained that consumers will not 

believe that “Opposers are affiliated with any of 

4 The Board explained that “[b]ecause Opposers’ 

mark is a regional certification mark, . . . it is not used by 

its owners, 15 U.S.C. § 1127, but is instead used by authorized users,” and its analysis was therefore “based on the 

authorized users’ goods.” Decision at *12. But that assertion carries little weight when the Board goes on to repeatedly refer to Opposers’ activities. Id. at *12–13.

Case: 23-1100 Document: 42 Page: 19 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

20

[Applicant’s] goods or services,” that “Opposers have now 

ventured into the business of sponsoring or authorizing 

production of recordings or recording services or the other 

goods or services of Applicant,” and that “either Opposer 

provides musical sound recordings or any services related 

to the music industry.” Id. at *12–13 (emphases added). 

That incorrect comparison was legal error. 

The Board also appears to have improperly discounted 

evidence of partnerships between hip-hop artists and certified COGNAC products because the artists also developed 

a brand or house name for their own products. See id. at 

*13. But as with our discussion of fame, supra Sec. I.A, and 

for similar reasons, the use of a brand name on a product 

does not necessarily negate the use of the certification 

mark on the same product. See Dissent at *20. The record 

shows that at least five well-known hip-hop artists have 

produced a certified COGNAC product. Decision at *13; see 

also Dissent at *22–24 (highlighting other evidence of connections between the hip-hop industry and COGNAC). 

That they have done so under a personal brand does not

negate their undisputed relationship with certified 

COGNAC products. 

Moreover, the Board failed to acknowledge admissions 

by Applicant that were contrary to its conclusion. As the 

dissent pointed out, Dissent at *22, Applicant admitted 

that “the association between cognac and the music industry is commonplace” and that there is “prolific use of the 

term ‘cognac’ or brands of cognac in song lyrics, song titles, 

etc.,” J.A. 1063—facts that the majority did not substantively address. And at oral argument, Applicant’s counsel 

once again reiterated that the record shows that “the 

COGNAC houses,” such as REMY and MARTEL, “are engaging with the hip-hop industry,” Oral Arg. at 30:13–23, 

and that “there are some players, there are some celebrities 

who are involved with [the COGNAC industry],” id. at 

31:52–32:14. Indeed, Applicant’s counsel ultimately 

acknowledged that “there is an association” between the 

hip-hop industry and COGNAC. Id. at 33:37–42. Those 

Case: 23-1100 Document: 42 Page: 20 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

21

admissions are not determinative of DuPont factors two 

and/or three, but the Board should consider them on remand.

As with similarity of the marks, we do not decide the 

ultimate issue of whether or not there is a similarity between the nature of the goods, services, and/or established, 

likely-to-continue trade channels, DuPont, 476 F.2d at 

1361, and leave the Board to consider that on remand. 

* * * 

In sum, we vacate the Board’s holding of no likelihood 

of confusion and remand for reconsideration of that issue

in light of this opinion. 

II. DILUTION

When reviewing a lower tribunal’s dismissal of a claim 

under Federal Rule of Civil Procedure 12(b)(6) for insufficiency of the pleadings, we do so de novo, accepting all wellpleaded factual allegations in the complaint as true and 

construing the pleadings in the light most favorable to the 

plaintiff.5 See Corcamore, LLC v. SFM, LLC, 978 F.3d 

1298, 1306 n.3 (Fed. Cir. 2020); Young v. AGB Corp., 

152 F.3d 1377, 1379 (Fed. Cir. 1998); TMBP § 503.02. Rule

8(a)(2) “generally requires only a plausible ‘short and plain’ 

statement of the plaintiff’s claim,” showing that the plaintiff is entitled to relief. Skinner v. Switzer, 562 U.S. 521, 

530 (2011). To survive dismissal under Rule 12(b)(6), a 

complaint must “contain sufficient factual matter, accepted 

as true, to ‘state a claim to relief that is plausible on its 

face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting 

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A 

5 In an opposition proceeding before the Board, the 

opposer is considered the plaintiff and the applicant is considered the defendant. 37 C.F.R. § 2.116(b). Likewise, the 

Notice of Opposition is considered the complaint, and its 

sufficiency is determined in accordance with the Federal 

Rules of Civil Procedure. 37 C.F.R. §§ 2.116(a), (c).

Case: 23-1100 Document: 42 Page: 21 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

22

claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable 

inference that the defendant is liable for the misconduct 

alleged.” Id.

In order to prevail on a dilution by blurring claim, a 

plaintiff (in this case, Opposers) must ultimately prove 

that: 

(1) plaintiff owns a famous mark that is distinctive;

(2) the defendant is using a mark in commerce that 

allegedly dilutes the plaintiff’s famous mark;

(3) the defendant’s use of its mark began after the

plaintiff’s mark became famous; and

(4) the defendant’s use of its mark is likely to cause 

dilution by blurring.

Coach Servs. Inc., 668 F.3d at 1372; see also 15 U.S.C. 

§§ 1063, 1125(c).

The Board first found that Applicant had waived its affirmative defense that Opposers had failed to state a claim. 

See Decision at *2 n.4 (“The assertion that Opposers failed 

to state a claim is considered waived because Applicant did 

not file a formal motion to dismiss or raise the issue at 

trial.”). However, despite that finding of waiver, the Board 

sua sponte found that Opposers specifically failed to plead

the third element of dilution: “that their mark became famous prior to any actual or constructive use by Applicant.” 

Id. at *15. The critical issue for the Board was that, although Opposers pleaded that COGNAC is famous, they did 

not make clear that that fame was prior to Applicant’s constructive use date. Id. The Board likewise found that dilution had not been tried by implied consent for 

substantially the same reason. Id. at *16. 

Opposers argue that their claim for dilution by blurring 

should not have been dismissed because (1) as the Board 

found, Applicant waived its assertion that Opposers failed 

to state a claim; (2) the Board applied erroneous, 

Case: 23-1100 Document: 42 Page: 22 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

23

heightened pleading standards; (3) Opposers’ complaint, 

regardless, sufficiently pleaded that COGNAC was famous 

prior to Applicant’s constructive date; and (4) the Board 

erred in finding the claim was not tried by implied consent.

We conclude that, under the correct pleading standard, 

Opposers sufficiently pleaded their dilution claim. The 

purpose of the complaint is to put the respondent on notice 

of what the complainant intends to argue. See Twombly, 

550 U.S. at 555 (“Federal Rule of Civil Procedure 8(a)(2) 

requires only a short and plain statement of the claim 

showing that the pleader is entitled to relief, in order to 

give the defendant fair notice of what the . . . claim is and 

the grounds upon which it rests.” (internal quotations omitted)); ABB Turbo Sys. AG v. TurboUSA, Inc., 774 F.3d 979, 

984 (Fed. Cir. 2014) (“Federal Rules of Civil Procedure 

8(a)(2) and 12(b)(6) together establish a notice-pleading 

standard . . . .”); O2 Micro Int’l, Ltd. v. Monolithic Power 

Sys., 467 F.3d 1355, 1365 (Fed. Cir. 2006) (“[T]he Federal 

Rules require only notice pleading by the claimant.”).

Here, the Notice of Opposition provided sufficient notice to meet the pleading standards of Rule 8. Opposers 

clearly asserted that they intended to argue dilution 

through blurring in violation of 15 U.S.C. § 1125(c). J.A. 

72. Although Opposers did not specify a date on which 

their mark became famous or a date by which it was famous, it was clear from the Notice, and from the nature of 

the claim, that Opposers intended to argue that their certification mark was famous prior to Applicant’s constructive date of first use. 

Opposers consistently and throughout their Notice refer to their mark as “famous.” See, e.g., J.A. 71 (“COGNAC 

is a famous designation for brandy . . . .”); J.A. 72 (“the famous COGNAC mark”). Moreover, their Notice of Opposition, filed on August 28, 2019, pleaded that COGNAC had 

become well-known “over many years,” J.A. 71–72, which 

was necessarily before Applicant’s constructive use date 

only five months earlier, on March 7, 2019. Decision at *4 

(“Applicant may rely on its application filing date of March 

Case: 23-1100 Document: 42 Page: 23 Filed: 08/06/2024
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. 

COLOGNE & COGNAC ENTERTAINMENT

24

7, 2019 as its constructive date of first use.”). Although not 

a model of clarity, when read in a light most favorable to 

Opposers, such statement could be reasonably interpreted 

to mean that COGNAC has been famous for many years—

necessarily before Applicant’s constructive use date only a 

few months prior. Opposers need not have specified a particular date by which their mark became famous; such is 

not necessary to prove a claim of dilution. Rather, it was 

sufficient to simply give notice that the mark was famous 

at some point prior to the junior mark’s constructive use 

date. 

Because we find that Opposers’ dilution claim was sufficiently pleaded, we need not reach the questions of 

whether it was tried by implied consent or whether the 

Board properly dismissed the claim sua sponte despite 

waiver. 

The Board also found that, had the issue been properly 

pleaded or tried by implied consent, Opposers had still not 

proven the fame element of their claim. Decision at *16. 

But that conclusion rested on the majority’s finding that 

the mark was not famous in its likelihood of confusion analysis, since fame for purposes of dilution requires a higher 

standard than that for likelihood of confusion. See id. at 

*16 n.54 (citing Coach Servs., 668 F.3d at 1373). Because 

we vacate the Board’s finding that COGNAC is not famous 

for purposes of likelihood of confusion, supra Sec. I.A, we 

likewise vacate the Board’s finding that COGNAC is not 

famous for purposes of dilution. We remand for consideration of that issue on the merits.

CONCLUSION

We have considered both parties’ remaining arguments 

but find them unpersuasive. For the foregoing reasons, the 

decision of the Board is vacated and remanded. 

VACATED AND REMANDED

COSTS

Costs to Appellants.

Case: 23-1100 Document: 42 Page: 24 Filed: 08/06/2024