Manatt Litigation Partner Samantha Katze and Digital and Technology Partner Lisa Rosaya wrote an article for Law360 discussing the Federal Circuit’s decision that establishes a new standard for assessing evidence of third-party uses of a certification mark in deciding whether a certification mark is famous.
According to the article, when hip-hop record label Cologne & Cognac Entertainment (CC&E) applied to register their logo as a trademark, the owners of the certification mark “cognac” for liquor opposed, asserting that registration of CC&E’s mark would create confusion and dilute the distinctiveness of the famous “cognac” certification mark, among other arguments. The Trademark Trial and Appeal Board (TTAB) dismissed the opposition, finding that the certification mark was not famous based on the evidence provided, including the third-party uses of the term in advertisements.
On appeal, the U.S. Court of Appeals for the Federal Circuit vacated the TTAB’s ruling and remanded the case with guidelines for the TTAB to consider in its evidentiary analysis as to whether the certification mark was famous. “Given the Federal Circuit's conclusion that evidence of sales and advertising relating to use of a certification mark in conjunction with third-party marks can prove fame, owners of certification marks should take care to collect and submit as much evidence as possible in TTAB proceedings to show widespread use of their marks in the market,” the authors wrote.
Law360 subscribers can read the full article here.