Institut National de l'Origine et de la Qualité, Bureau National Interprofessionnel du Cognac v. Daret K. Dickens

This Opinion is Not a Precedent of the TTAB Mailed: March 2, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board _____

Institut National de l'Origine et de la Qualité and Bureau National Interprofessionnel du Cognac v.

Daret K. Dickens

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Opposition No. 91272506

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J. Scott Gerien and Joy L. Durand of Dickenson Peatman & Fogarty, for Institut National de l'Origine et de la Qualité and Bureau National Interprofessionnel du Cognac.

Todd Wengrovsky, Law Offices of Todd Wengrovsky PLLC for Daret K. Dickens. _____

Before Lykos, Goodman and English,

Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:

Applicant, Daret K. Dickens, seeks registration on the Principal Register of the standard-character mark COGNAC LIFE for "magazine publishing" in International Class 41.¹

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Opposers, Bureau National Interprofessionnel du Cognac ("BNIC") and Institut National de l'Origine et de la Qualité ("INAO"), oppose registration of Applicant's mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), claiming priority and likelihood of confusion with their common-law regional certification mark COGNAC for brandy that comes from the Cognac region of France and is produced in accordance with prescribed standards. Opposers also allege that COGNAC is a famous regional certification mark, and that Applicant's mark is likely to dilute through blurring the COGNAC mark under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).²

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In his answer, Applicant admits the allegation that he "will not use the [COGNAC LIFE] mark in association with brandy from of France."³Otherwise, Applicant denies the salient allegations in the notice of opposition.⁴

The case is fully briefed.⁵To prevail, Opposers must prove their entitlement to a statutory cause of action and at least one of their claims by a preponderance of the evidence. Genesco Inc. v. Martz, 91121296, 2003 WL 1154482, at *7 (TTAB 2003). For the reasons explained below, we find Opposers have met their burden on entitlement and their likelihood of confusion claim under Section 2(d) of the Trademark Act. We thus sustain the opposition on this claim. We do not reach Opposers' dilution by blurring claim under Section 43(c) of the Trademark Act. See, e.g., McGowen Precision Barrels, LLC v. Proof Rsch., Inc., No. 92067618, 2021 WL 2138663, at *2 (petition granted on one ground; other claims not reached); Yazhong Investing Ltd. v. Multi- Media Tech. Ventures, Ltd., No. 92056548, 2018 WL 2113778, at *13 n.52 (TTAB 2018) (Board has the "discretion to decide only those claims necessary to enter judgment and dispose of the case").

I. Opposers' "Evidentiary" Objection

In their rebuttal brief, Opposers object to "the alleged facts and evidence raised for the first time in Applicant's Brief" regarding purported third-party registrations 3 5 TTABVUE 3, ¶ 7. Citations to the record throughout the decision include references to TTABVUE, the Board's online docketing system. The number preceding "TTABVUE"

corresponds to the docket entry number; any number(s) following "TTABVUE" refer to the page number(s) of that particular docket entry.

Citations to Board decisions are to the Westlaw database. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 101.03 (2025).

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for the marks CHAMPAGNE MAGAZINE and BOURBON+.⁶Applicant did not submit evidence of the referenced third-party registrations during his assigned trial period. Absent a stipulation that is not present here, evidence may be introduced only during the assigned trial periods. Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) ("No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.").

Opposers' objection to Applicant's assertions and arguments in his brief regarding the purported third-party registrations is well-taken and sustained. "Attorney argument is no substitute for evidence." Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (TTAB 2018). We give no consideration to Applicant's arguments based on the purported third-party registrations not of record.⁷

4 5 TTABVUE. In his brief, Applicant argues a fair use defense. 18 TTABVUE 7, 10, 12. Applicant did not plead such a defense, but even if he had, such a defense is not available because Applicant seeks to register COGNAC LIFE as a service mark (i.e. a source identifier). Truescents LLC v. Ride Skin Care, LLC, No. 91158556, 2006 WL 3326525, at *4 (TTAB 2006) (fair use defense "legally unavailable" as to a Section 2(d) claim; the Board has jurisdiction over registrability only, not use).

5 After final briefing, this case was suspended pending a final determination in Opposition No. 91250532, involving Opposers' opposition to a third-party application. 21 TTABVUE. The Board's decision in Opposition No. 91250532 was appealed to the Federal Circuit and subsequently remanded. On July 28, 2025, the Board issued a final decision on remand and no appeal was filed. The proceeding before us now was resumed on January 8, 2026. 24

TTABVUE.

We have reviewed the Federal Circuit's decision in Opposition No. 91250532 as well as the Board's decision on remand and find that there is no need for re-briefing or supplemental briefing in this case, which is now ready for decision.

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II. Record

The record includes the pleadings, the submissions of the parties during their respective trial periods and, by rule, Applicant's application file. See Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).⁸

We do not list the contents of the record, but we have reviewed and considered the evidence in its entirety.⁹See Sawstop, LLC v. Felder KG, No. 91255905, 2025 WL 2400134, at *2 (TTAB 2025); see also, Quiktrip W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1036 (Fed. Cir. 2021) ("We have held 'on multiple occasions that failure to explicitly discuss every issue or every piece of evidence does not alone establish that the tribunal did not consider it.'" (quoting Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017))); In re Miracle Tuesday LLC, 695 F.3d 1339, 1348 (Fed. Cir. 2012) ("[T]he mere fact that the Board did not recite all of the evidence it considered does not mean the evidence was not, in fact, reviewed.") (citing Plant Genetic Sys., N.V. v. Dekalb Genetics Corp., 315 F.3d 1335, 1343 (Fed. Cir. 2003))). Shinnecock Smoke Shop, 571 F.3d 1171, 1174 (Fed. Cir. 2009); In re Nett Designs Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001). We are not bound by prior determinations of the Office concerning different marks based on different records.

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III. Geographic Certification Marks

Because Opposers have pleaded ownership of a geographic certification mark, also known as a certification mark indicating regional origin, it is useful to provide a short discussion of such marks.

Section 45 of the Trademark Act defines a certification mark to include "any word, name, symbol, or device, or any combination thereof … used by a person other than its owner … to certify regional … origin … of such person's goods or services… ." 15 U.S.C. § 1127. See In re St. Julian Wine Co., No. 87834973, 2020 WL 2788005 (TTAB 2020) (involving registered marks MICHIGAN APPLES (stylized with design,

"apples" disclaimed) and MICHIGAN HONEYCRISP (stylized with design,

"honeycrisp" disclaimed) to certify apples grown in Michigan); Luxco, Inc. v. Consejo Regulador del Tequila, A.C., No. 91190827, 2017 WL 542344 (TTAB 2017) (involving application to register TEQUILA to certify spirits distilled from blue tequilana weber variety of agave plant of Mexican origin); Swiss Watch Int'l, Inc. v. Fed. of the Swiss Watch Ind., No. 92046786, 2012 WL 504693 (TTAB 2012) (involving registered marks SWISS and SWISS MADE to certify watches, clocks and their components made in Switzerland).

Section 4 of the Trademark Act provides for the registration of "certification marks, including indications of regional origin." 15 U.S.C. § 1054. Opposers have not registered the COGNAC certification mark, but instead rely on prior common law rights in COGNAC as an unregistered certification mark. Bureau Nat'l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., No. 91072088, 1988 WL

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252488, at *6 (TTAB 1988) (involving unregistered mark COGNAC for distilled brandy from a region in France) (citing Stabilisierrungsfonds fur Wein v. Zimmermann-Graeff KG, 1978 WL 21772, at *2 (TTAB 1978)¹⁰("A federal registration is merely the recognition of a common law right in a mark that existed prior to registration. Section 45 of the Act includes the term 'certification mark' in its definition of 'mark'.")).

A certification mark, as distinguished from a trademark, does not indicate commercial source or distinguish the goods or services of one person from those of another person, but "indicates that the goods or services of authorized users are certified as to a particular aspect of the goods or services." St. Julian Wine, 2020 WL 2788005, at *2 (citing 15 U.S.C. §§ 1054, 1127 and the TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1306.01 (Nov. 2025)); see also In re Nat'l Ass'n of Veterinary Technicians in Am., Inc., No. 87171093, 2019 WL 3246967, at *2 (TTAB 2019). "The message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, using methods determined by the certifier/owner ... [and] that the prescribed characteristics or qualifications of the certifier for those goods or services have been met." TMEP § 1306.01(b).

Geographic certification marks are used to certify that authorized users' goods originate in a specific geographic region. See, e.g., St. Julian Wine, 2020 WL 2788005, at *2 (MICHIGAN APPLE composite marks for apples grown in the state of

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Michigan); Luxco, 2017 WL 542344 (involving application to register TEQUILA to certify spirits distilled from blue tequilana weber variety of agave plant of Mexican origin); Swiss Watch, 2012 WL 504693 (involving registered marks SWISS and SWISS MADE to certify watches, clocks and their components made in Switzerland).

IV. COGNAC is a Certification Mark Indicating Regional Origin

Opposers submitted the declaration of Amandine Duthilleul, "an attorney employed" by BNIC, who testified that:¹¹

2. [INAO] is an administrative agency within the French Ministry of Agriculture, Food and Forestry. For over eighty years, INAO has been responsible for establishing, maintaining and protecting, both in France and internationally, France's "appellations of origin" and

"geographical indications" system.

3. … COGNAC is a well-known AOC ["appellation of controlled origin"] that has been recognized and protected by INAO and the French government for decades.

5. The COGNAC AOC is used to represent to consumers that a product bearing the COGNAC AOC comes from a defined region of France and was produced in accordance with the local and customary production method now codified in the various Decrees of the Republic of France relating to the production of products bearing the COGNAC AOC.

9. The AOC system is characterized by cooperation between the INAO, producers and merchants, and their interprofessional associations or unions which are known as "interprofessions."

10. BNIC is the interprofessional union of all growers and producers and negociants or merchants who grow, produce or deal in COGNAC eaux-de-vie de vin (which is French for "wine spirit") as defined by Article L631-1 et seq. of the French Rural Code. All parties who are engaged in the production, processing

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and trade of COGNAC are required by law to be a member of

BNIC.

15. BNIC also fulfills a number of public functions, such as monitoring stocks of COGNAC, verifying the age of COGNAC and issuing certificates of age and origin. Certificates of origin certify that the COGNAC product has met the exacting standards governing the COGNAC AOC and must accompany every shipment of COGNAC outside of the European Union. In this way, BNIC controls the COGNAC certification mark in the U.S. for wine spirits.

We find this testimony clear and definite, and thus, sufficient to prove that COGNAC functions as a geographic certification mark to indicate that brandy bearing the COGNAC mark has met the standards governing the COGNAC

"appellation of controlled origin." Cf. Exec. Coach Builders, Inc. v. SPB Coach Co., No. 91212312, 2017 WL 3034059, at *11 (TTAB 2017) ("The oral testimony even of a single witness may be adequate to establish priority, but only if it is sufficiently probative.").

V. Entitlement

Entitlement to a statutory cause of action must be established in every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1373 (Fed. Cir. 2020) (citing Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128 n.4 (2014)). Where, as here, there are multiple opposers, each opposer must prove its own entitlement. Int'l Dairy Foods Ass'n v. Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, No. 91232427, 2020 WL 4559436, at *10 (TTAB 2020) (each opposer must prove its entitlement), aff'd, Interprofession du Gruyère v. U.S. Dairy Exp. Council, 575 F. Supp. 3d 627 (E.D. Va.

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2021) aff'd, Interprofession du Gruyère v. U.S. Dairy Exp. Council, 61 F.4th 407 (4th Cir. 2023).

To demonstrate entitlement, each Opposer must prove that its claims are within the zone of interests protected by the statute (i.e., it has a "real interest" in the outcome of the proceeding) and that it has a reasonable belief in damage that is proximately caused by registration of the mark (i.e., it has a reasonable basis for its belief in damage). Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1305-06 (Fed. Cir.

2020).

Ms. Duthilleul testified that "Opposers are responsible for protecting the COGNAC AOC from misuse and appropriation both in France and internationally, including in the US."¹²Specifically, INAO is a French administrative agency

"responsible for establishing, maintaining and protecting, both in France and internationally, France's 'appellations of origin,'" (AOC), including the COGNAC AOC.¹³"The AOC system is characterized by cooperation between the INAO, producers and merchants, and their interprofessional associations or unions which are known as 'interprofessions.'"¹⁴BNIC is the interprofessional union of all growers, producers and merchants of COGNAC brandy.¹⁵"All parties who are engaged in the production, processing and trade of COGNAC are required by law to be a member of

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BNIC."¹⁶BNIC controls the COGNAC certification mark in the U.S. by monitoring the stock and verifying the age of COGNAC brandy and issuing certificates of age and origin for COGNAC brandy that meets the COGNAC AOC standards.¹⁷ Based on the foregoing testimony, we find that INAO and BNIC have each proven a real interest in the outcome of this proceeding and a reasonable basis for a belief in damage if Applicant's mark is registered.¹⁸Bureau Nat'l Interprofessionnel Du Cognac v. Int'l Better Drinks, 1988 WL 252488, at *6 (finding entitlement based on

"legal duty to oversee the production and sale of 'COGNAC' brandy and to protect the significance of the designation 'COGNAC' as an appellation of origin for brandy"). Each Opposer thus has established its entitlement to bring this statutory cause of action.

VI. Likelihood of Confusion Priority

To establish prior common law rights in the COGNAC certification mark, Opposers must prove by a preponderance of the evidence that the COGNAC mark was distinctive and in use as a certification mark before the earliest priority date on

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which Applicant may rely. See DeVivo v. Ortiz, No. 91242863, 2020 WL 1227592, at *3-4 (TTAB 2020); Exec. Coach Builders, 2017 WL 3034059, at *6 ("[B]ecause unregistered marks are not entitled to the presumptions established under Trademark Act Section 7(b)-(c), it is Opposer's burden to demonstrate that it owns a trademark that was used prior to Applicant's first use or constructive use of its mark and not abandoned."). In assessing whether Opposers have established common law priority, we consider the evidence of record as a whole. W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125-26 (Fed. Cir. 1994) ("[O]ne should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use.").

The COGNAC certification mark is inherently "distinctive because it serves to designate and certify the particular geographic origin of the relevant goods." St. Julian Wine, 2020 WL 2788005, at *7; cf id. ("[P]er Section 2(e)(2) of the Trademark Act, a registered certification mark containing a geographic designation that functions to certify regional origin is not considered geographically descriptive."); see also Tea Bd. of India v. Republic of Tea Inc., No. 91118587, 2006 WL 2460188, at *21 (TTAB 2006) ("[W]e consider DARJEELING inherently distinctive as a certification mark indicating geographic origin as it inherently identifies the geographic source of the tea.").

As discussed more fully in Section V.B.1 below, the record further shows that third parties controlled by Opposers have been using the COGNAC certification mark, long

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before Applicant's October 27, 2020 application filing date¹⁹(i.e. constructive use date), which is the earliest date Applicant may rely on for priority. The record shows that he does not use his mark to provide the identified service of "magazine publishing" to other parties but rather uses his mark as the title of a magazine, a good that is not identified in the involved application.²⁰We therefore find that Opposers have established priority.

Likelihood of Confusion

The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks, i.e., the DuPont analysis derived from the seminal case setting forth possible probative factors. In re Accelerate s.a.l., No. 77522433, 2012 WL 684459, at *1 (TTAB 2012) (citing Motion Picture Ass'n of Am., Inc. v. Respect Sportswear, Inc., No. 75654662, 2007 WL 1144942, at *4 (TTAB 2007)). We have considered each DuPont factor for which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019); see also Apex Bank v. CC Serve Corp., 156 F.4th 1230, 1234 (Fed. Cir. 2025). Varying weights may be assigned to each DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 1355 (Fed. Cir. 2011); see also In re Charger Ventures, 64 F.4th 1375, 1381 (Fed. Cir. 2023) ("In any given case,

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different … factors may play a dominant role and some factors may not be relevant to the analysis.") (citation omitted).

1. Commercial Strength or Fame of the COGNAC Certification Mark The fifth DuPont factor involves "[t]he fame of the prior mark (sales, advertising, length of use)." DuPont, 476 F.2d at 1361. The fame or commercial strength of a mark is not a binary factor, but varies along a spectrum from very strong to very weak. Id. at 1366; Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 2017); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340 (Fed. Cir. 2015). "Where on that spectrum a mark falls impacts its scope of protection." Bureau Nat'l Interprofessionel du Cognac v. Cologne & Cognac Ent., 110 F.4th 1356, 1366 (Fed. Cir. 2024).

Fame for likelihood of confusion purposes arises only so long as a "significant portion of the relevant consuming public ... recognizes the mark as a source indicator,"

Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 1375(Fed. Cir. 2005), or, more precisely stated for the context of the mark at issue here, as an indicator that the brandy bearing the mark comes from the Cognac region of France. Bureau Nat'l Interprofessionel du Cognac v. Cologne & Cognac Ent.,

110 F.4th at 1366 (explaining that in considering fame under the fifth DuPont factor, the issue is not whether the COGNAC certification mark is famous or commercially strong for its certification function, but rather whether the COGNAC mark is famous or commercially strong as an indicator of its geographic origin). A finding that a mark is famous plays a dominant role in a likelihood of confusion analysis because of the

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broad scope of protection afforded famous marks. Id. at 1365-66; 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. … Accordingly, we hold that the fame of the mark must always be accorded full weight when determining the likelihood of confusion."); Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.3d 350, 352 (Fed. Cir. 1992) ("The fifth duPont factor, fame of the prior mark, plays a dominant role in cases featuring a famous or strong mark. Famous or strong marks enjoy a wide latitude of legal protection.").

The record shows that "[t]he COGNAC product was first exported to the [United States] in 1794 and has been continuously sold in the US since such time."²¹The number of brandy bottles bearing the COGNAC certification mark imported into the United States, and their approximate value, are set forth below for the years 2018 to

2022.²²

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In 2021, the U.S. was the largest market for COGNAC products "with over 51.5% of the world market share."²³

Figures for prior years (from 2007 to 2017) show imports to the United States of COGNAC brandy ranging from a low of approximately 43 million bottles in 2009 with an approximate value of nearly half a billion dollars and increasing consistently to a high of more than 82 million bottles in 2017 valued at more than $1.3 billion.²⁴We find that the annual volume and approximate value of COGNAC brandy imported to the U.S. since 2007 is substantial.

As for advertising, "BNIC and its members have spent millions of dollars advertising and promoting COGNAC throughout the [United States] resulting in billions of media impressions. Between 2010 and 2022, BNIC alone spent more than $5.2 million promoting COGNAC in the [United States] resulting in more than 1.8 billion media impressions."²⁵BNIC's U.S. marketing activities include "media and trade relations, events, and robust social media campaigns" that "focus on showcasing and promoting the COGNAC geographical indication and creating awareness about the regions' history, terroir, and product range expertise among US consumers."²⁶

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"Since 2010, BNIC has cultivated a worldwide Cognac Educator program which certifies professionals and leaders in the spirits industry who are committed to educating consumers about COGNAC culture, spreading COGNAC knowledge and promoting the COGNAC appellation" and who "regularly lead COGNAC masterclasses and tastings, as well as other initiatives, for bartenders, wine merchants, distributors, importers and media in the US."²⁷As of September 30, 2002, the date of the Duthilleul Declaration, BNIC had "ten Certified Cognac Educators in the US located in key markets like San Francisco, San Diego, Portland, New York, Atlanta, Boston, Chicago, Las Vegas and Washington, DC."²⁸ Further, since 2017, BNIC has worked with "an award-winning food, wine and spirits public relations and marketing agency based in New York City," on a "robust"

marketing campaign with "programming includ[ing] multi-city trade, media and influencer education events" and the development of "the Cognac Connection: a virtual platform designed to educate and inspire trade and media professionals about COGNAC. The campaign also includes an annual COGNAC-based cocktail competition for professional bartenders called the Cognac Connection Challenge. … Since 2020, hundreds of US bartenders have participated in the Cognac Connection Challenge."²⁹

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Certified COGNAC wine spirts have garnered publicity "in countless publications"

throughout the United States, including THE NEW YORK TIMES, THE WASHINGTON

POST, THE WALL STREET JOURNAL, WINE SPECTATOR, THE LOS ANGELES TIMES,

CBS.com, Forbes.com, FoxNews.com, WINE ENTHUSIAST, and THE ATLANTIC.³⁰"From March 2019 to February 2022 alone, COGNAC was featured or mentioned in over 507 articles with an aggregate circulation of over 988 million."³¹ Excerpts from representative articles are set forth below:³²

• "It was a weekend to remember for hip-hop star Jay-Z … [a]ttending a socially distanced Grammy's event on Sunday night … as he racked up his 23^rd Grammy, while his wife Beyoncé, took home her 28th trophy, making her the Recording Academy's most-decorated female artist of all time. Meanwhile, on the East Coast, one of Jay-Z's limited-edition Cognac bottles raised $52,500 for charity." Cognac State of Mind: Rare Brandies from Jay-Z and Frank Gehry Raise Funds for Charity, WINE SPECTATOR, Mar. 18, 2021.

• Usher "the eight-time Grammy winner is making a big splash with his new Rémy Martin partnership, encompassing a (very) limited-edition Cognac and accompanying NFT as well as a 'multi-sensory immersive experience' in association with the artist's My Way Las Vegas residency at Park MGM."

Smooth Duet: Usher and Rémy Martin Cognac, WINE SPECTATOR, Sept. 6, 2022.

• With his 2002 chart buster "Pass the Courvoisier," Busta Rhymes helped cognac cast off its musty, buttoned up image, restoring it as the liquor of the hip and fabulous. Since then, it has become one of the country's fastest growing premium spirits, with sales spiking 23 percent from 2002 to 2006. … The four behemoth cognac houses - Courvoisier, Hennessy, Martell, and Rémy Martin - date back far enough to be legends in their own right, and their mystique endures…. A Taste for the Ages[,] Hip Once Again, Cognac Enjoys Spirited Rebirth, THE BOSTON GLOBE (Boston.com) Jan. 17, 2008.

• "In the course of its centuries-long life Cognac has been considered a drink for

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the poor, an exclusive property of upscale gentlemen's clubs and a symbol of hip-hop excess. At present, Cognac distillers draw from all facets of this varied past to create some of the finest tasting and most exclusive liquors on the plant." Top 10 Cognacs, FOX NEWS (FoxNews.com), Mar. 20, 2018.

• "Cognac used to have a reputation as an old man's drink, but the French brandy is enjoying a revival. … A shift began in 2001, when rap artist Busta Rhymes came out with his hit song, 'Pass the Courvoisier.' … [The song] 'was huge for the brand,' [said Courvoisier's marketing manager], 'because it went on all the big hit lists." French Cognac Maker Gets a Boost from Rap Music, NPR, Jan. 2, 2009.

• "Courvoisier has been an iconic house of [Cognac brandy] for the best part of 200 years, served across the royal court of Europe and at legendary moments in history such as the opening of the Eiffel tower." Jon Potter, Maison Courvoisier, Why Cognac's Best Years are Still Ahead, FORBES.COM, June 11,

2022.

• "And how about Remy Martin's legendary LOUIS XIII [Cognac brandy]?

Packaged in a stunning bespoke crystal - capped by a fleur-de-lis topper—it is perhaps the most recognized ultra-luxury offering atop any backbar." Your Favorite Cognac is About to Get a Lot More Expensive, Forbes.com, Jan. 12,

2021.

• "Classic meets contemporary as one of the most historic cognac houses, Martell Cognac, teams with one of the most cultivated leasers of the new generational hip-hop and cultural powerhouse, Quavo." Quavo and Martell Cognac Join Forces for the Culture with 'Make Your Statement' Movement, BET.com, Dec.

21, 2018.

In addition to unsolicited media coverage, since 2018 BNIC has published a digital magazine "called Culture Cognac at culture.cognac.fr. … dedicated to sharing the culture around COGNAC with connoisseurs and consumers, and promoting the COGNAC certification mark."³³Copies of the digital magazine in the English language are attached to Ms. Duthilleul's declaration.³⁴

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Notably, COGNAC brandy also has been the subject of numerous books including:

COGNAC: THE STORY OF THE WORLD'S GREATEST BRANDY (published in 2013) by Nicholas Faith; COGNAC: THE SEDUCTIVE SAGA OF THE WORLD'S MOST COVETED SPIRIT (© 2005) by Kyle Jarrard; THE WORLD OF COGNAC (published in 2017) by Michelle Brachet; COGNAC: A LIQUID HISTORY by Salvatore Calabrese; THE COGNAC COMPANION - A CONNOISSEUR'S GUIDE by Conal Gregory; and THE LITTLE BOOK OF COGNAC by Christian Pessey.³⁵Representative excerpts from two of these books are below.³⁶

• "Historically in the United States, African-American consumers have always been the driving force behind VS cognac sales. This is probably due to soldiers in Vietnam (a former French colony) mixing cognac with soda or coke to dilute it in the hot and humid conditions … These soldiers returned home with the idea that cognac had a very high social status…. For many years, cognac has gone hand in hand with black American urban culture, and particularly hip hop." THE WORLD OF COGNAC.

• "Often expensive, Cognac is always classy. … Elegant, because it is an indisputable symbol of high refinement[.]" THE SEDUCTIVE SAGA OF THE WORLD'S MOST COVETED SPIRIT.

Of further significance, COGNAC is defined in three dictionaries and ENCYCLOPEDIA BRITANNICA as meaning a brandy from a specific region in France:³⁷ MERRIAM-WEBSTER: "[N]oun, often capitalized"; "a brandy from the departments of Charente and Charente-Maritime distilled from white wine";

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COLLINS ENGLISH DICTIONARY: "Cognac is a type of brandy made in the south-west of France";

MACMILLAN DICTIONARY: "[A] type of brandy made in France, or a glass of this brandy"; and

ENCYCLOPEDIA BRITANNICA (published Mar. 19, 2020): "[C]ognac, a brandy produced in the Charente and Charente-Maritime départments of France and named for the town of Cognac in the locality. French law limits the use of the name to brandy made from the wine of a specified grape variety, distilled twice in special alembics, or pot stills, and aged for a prescribed period in Limousin oak."

The dictionary definitions and encyclopedia entry support that consumers are likely to recognize COGNAC as an indicator that brandy bearing the mark comes from the Cognac region of France. Cf. Luxco, 2017 WL 542344, at *10 (explaining that dictionary definitions and encyclopedia entries identifying Tequila as an alcoholic beverage from Mexico tended "to show that Tequila has significance as a designation of geographic origin" and is not generic for such goods).

We find the evidence of record, summarized above, demonstrates that a significant portion of the relevant consuming public recognizes the COGNAC certification mark as indicating that brandy bearing the mark comes from the Cognac region of France, and falls on the high end of the fame spectrum as an indicator of geographic origin for purposes of the fifth DuPont factor, and therefore enjoys a wider than normal scope of protection.

The fifth DuPont factor thus weighs heavily in favor of finding a likelihood of confusion.

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2. Similarity or Dissimilarity of the Marks Under the first DuPont factor, we consider the "similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." DuPont, 476 F.2d at 1361; see also Stone Lion Cap. Partners, L.P. v. Lion Cap. LLC, 746 F.3d 1317, 1319 (Fed. Cir. 2014). "Similarity is not a binary factor but is a matter of degree." In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014). The proper test regarding similarity "is not a side-by-side comparison of the mark, 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." Cai v. Diamond Hong, 901 F.3d at 1373 (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)). The focus is on the recollection of an ordinary consumer, who normally retains a general rather than specific impression of trademarks. In re Bay State Brewing Co., No. 85826258, 2016 WL 1045677, at *2 (TTAB 2016); see also Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007 (CCPA 1971) (statute "requires us to consider, among other things, the fallibility of memory over a period of time, not merely whether one can distinguish the marks at a given moment"). We do not predicate our analysis on a dissection of the involved marks; we consider the marks in their entireties. Stone Lion, 746 F.3d at 1321; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (CCPA 1981) ("It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion."). On the other hand, "there is nothing improper in stating that, for rational reasons, more or less weight has been

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given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties." In re Nat'l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985); see also Charger Ventures LLC, 64 F.4th at 1382. We find that the term COGNAC in Applicant's mark is dominant and the additional term LIFE in Applicant's mark does not sufficiently distinguish Applicant's mark from Opposers' mark in any meaningful way.

Specifically with respect to appearance, we find the fact that Applicant has incorporated Opposers' famous COGNAC certification mark in its entirety as the first word in Applicant's mark will draw consumers visually to that part of Opposers' mark. In re Detroit Athletic Co., 903 F.3d 1297, 1303 (Fed. Cir. 2018) (finding lead words dominant); Hunter Indus., Inc. v. Toro Co., No. 85067325, 2014 WL 1649332, at *11 (TTAB 2014) ("Likelihood of confusion often has been found where the entirety of one mark is incorporated within another."); Presto Prods. Inc. v. Nice-Pak Prods. Inc., No. 91074797, 1988 WL 252340, at *3 (TTAB 1988) ("[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered[.]"); cf. Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022 (CCPA 1977) ("When one incorporates the entire arbitrary mark of another into a composite mark, the inclusion of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion."). We further find that because Opposer's COGNAC mark is the first word in Applicant's mark, the marks share a similar sound, despite the additional second word LIFE in Applicant's mark.

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With respect to connotation and commercial impression, Applicant admits that

"the term 'Cognac' featured in the COGNAC LIFE Mark refers to the brandy beverage Cognac,"³⁸and given the fame of the COGNAC certification mark, we find that consumers are likely to understand the word COGNAC in Applicant's mark as a reference to brandy from the Cognac region of France. The record supports that consumers have been exposed to sources touting COGNAC brandy as a lifestyle product - a symbol of luxury, affluence, and sophistication - and describing COGNAC brandy as a popular drink in rap and hip hop culture.³⁹Consumers therefore are likely to associate the COGNAC certification mark with such lifestyles. The addition of the second word LIFE in Applicant's COGNAC LIFE mark thus reinforces and highlights the connotation and commercial impression of the COGNAC mark with certain lifestyles, and thus, the parties' marks are quite similar in connotation and commercial impression.

In sum, when we compare the marks in their entireties, see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1371 (Fed. Cir. 2015), we find they are similar in appearance and sound, and very similar in connotation and commercial impression. The first DuPont factor heavily weighs in favor of finding confusion likely.

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3. Relatedness of the Goods and Services We next address the similarity or dissimilarity and nature of the parties' goods and services under the second DuPont factor. DuPont, 476 F.2d at 1361. "This factor considers whether 'the consuming public may perceive [the respective goods and services of the parties] as related enough to cause confusion about the source or origin of the goods or services.'" St. Helena Hosp., 774 F.3d at 752 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002)). We first address the goods and services at issue in our comparison. Because 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. Thus, the parties' correctly base their comparison under the second DuPont factor on the authorized users' goods, namely, brandy from the Cognac region of France produced in accordance with prescribed standards. St. Julian Wine, 2020 WL 2788005, at *4 (citing E. I. DuPont de Nemours & Co. v. Yoshida, 393 F. Supp. 502, 516 (E.D.N.Y. 1975) ("proximity [of products] may be measured against that of the certification mark user...")). The parties, however, incorrectly treat the involved application as covering "magazines" instead of

"magazine publishing" services, as identified in the application. As explained in the USPTO's Acceptable Identification of Goods and Services Manual (ID Manual), "magazine publishing"

refers to the service of publishing the periodicals or printed matter of others. Note that the publication of one's own periodical or printed matter is not a service because it is done primarily for applicant's own benefit and not for the

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benefit of others. Rather, it would be considered goods in Class 16, e.g., newspapers, magazines.⁴⁰

Under the second DuPont factor we therefore must consider whether goods, namely, brandy from the Cognac region of France, are related to Applicant's services of

"magazine publishing" for others.

"[I]t is recognized that goods and services may be related." In re Giovanni Food Co., No. 77796257, 2011 WL 810217, at *2 (TTAB 2011) (citing In re United Serv. Distribs., Inc., No. 73433634, 1986 WL 83661 (TTAB 1986) (mark for distributorship services in the field of health and beauty aids held likely to cause confusion with mark for skin cream)). Moreover, it is well established that the goods and services need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. Weider Publ'ns, LLC v. D&D Beauty Care Co., No. 91199352, 2014 WL 343269, at *10 (TTAB 2014) (SHAPES for a variety of beauty salon, day spa, and health spa services likely to cause confusion with SHAPE for magazines where the services are of the type normally featured in the magazines).

"Instead, likelihood of confusion can be found 'if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.'" Coach Servs., 668 F.3d at 1369 (quoting 7-Eleven Inc. v. Wechsler, No. 91117739, 2007 WL 1431084, at *10 (TTAB 2007)). The issue, of course, is not

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whether purchasers would confuse the goods and services, but rather whether there is a likelihood of confusion as to the source of the goods and services. In re Samsung Display Co., No. 90502617, 2024 WL 3451873, at *3 (TTAB 2024); In re Ox Paperboard, LLC, No. 87847482, 2020 WL 4530517, at *6 (TTAB 2020). In addition, where, as here, there is no evident relationship between the goods and services, we must consider whether there is "something more" in the record to show that the consuming public will perceive the goods and services as having the same source of origin or a connection or affiliation. St. Helena Hosp., 774 F.3d at 754 (the

"something more" rule "has application whenever the relatedness of the goods and services is not evident, well-known or generally recognized"); see also In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003) ("[T]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.") (emphasis omitted) (quoting Jacobs v. Int'l Mutlifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982)). In considering the issue of relatedness, we find the Board's decisions in Weider Publ'ns, 2014 WL 343269 (TTAB 2014) and Conde Nast Publ'ns Inc. v. Vogue Travel, 1979 WL 24922 (TTAB 1979)⁴¹comparing magazines to beauty, health and day spa services, and travel agency services, respectively, have some relevance even though they are not directly on point because Applicant's application identifies

"magazine publishing" as opposed to "magazines." The Board explained in Weider Publ'ns and Conde Nast that one circumstance in which magazines may be found

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related to goods and services is when the goods or services are of a type normally featured in magazines. Weider Publ'ns, 2014 WL 343269, at *11; Conde Nast, 1979 WL 24922, at *4. In both cases, the Board found relatedness because the services at issue, beauty, health and spa services and travel agency services, respectively, were significantly featured in the opposers' magazines. Weider Publ'ns, 2014 WL 343269, at *14; Conde Nast, 1979 WL 24922, at *6.

Here, the record shows that COGNAC brandy is a product commonly featured in magazine articles⁴²as well as other publications, such as books and newspapers.⁴³ Moreover, since 2018, BNIC has published CULTURE COGNAC, a digital magazine promoting certified Cognac products.⁴⁴Thus, although the facts here are one step removed from the facts in Weider Publ'ns and Conde Nast, because COGNAC brandy is commonly featured in magazines and other publications and because BNIC publishes its own digital magazine devoted to COGNAC brandy, it is foreseeable that consumers encountering Applicant's COGNAC LIFE "magazine publishing" services would assume that these services are sponsored by, connected to or otherwise affiliated with Opposers, the same authority that authorizes the certified users of the COGNAC certification mark for brandy.⁴⁵

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In addition, Applicant's magazine publishing services are broad enough to encompass publishing magazines for others on all subject matters, including lifestyle magazines such as those featuring content related to food and alcoholic beverages, including Cognac brandy. See In re Hughes Furniture Indus., No. 85627379, 2015 WL 1734918, at *3 (TTAB 2015) ("Applicant's broadly worded identification of 'furniture' necessarily encompasses Registrant's narrowly identified 'residential and commercial furniture.'"); In re Accelerate, 2012 WL 684459, at *4 ("Certainly applicant's broadly worded 'providing food and drink' could encompass a coffee house which is defined as a 'restaurant where coffee and other refreshments are served.' This is obviously the most rational conclusion to draw given the inclusion of COFFEE HOUSE in applicant's mark."). As discussed above, Applicant's COGNAC LIFE mark evokes the commercial impression of lifestyles associated with COGNAC brandy, namely, luxury, affluence, sophistication and rap and hip hop culture, thus suggesting that Applicant specializes in publishing magazines with this type of content. This further supports a finding that reasonable consumers encountering Applicant's COGNAC LIFE mark would mistakenly believe that Opposers, who authorize use of their is not persuasive. "Although confusion, mistake or deception about source or origin is the usual issue posed under Section 2(d), any confusion made likely by a junior user's mark is cause for refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation or connection." Hilson Research, Inc. v. Society for Human Resource Mgmt., No. 91084491, 1993 WL 290669, at *5 (TTAB 1993); see also In re Majestic Distilling Co., 315 F.3d 1311, 1316 (Fed. Cir. 2003) ("[T]he mistaken belief that [a good] is manufactured or sponsored by the same entity ... is precisely the mistake that § 2(d) of the Lanham Act seeks to prevent"); Federal Bureau of Investigation v. Societe: 'M. Bril & Co., 1971 WL 16592, at *7 (TTAB 1971) (proceeding number unavailable) (under Section 2(d) party must show "the purchasing public would mistakenly assume that the applicant's goods or services originate with, are sponsored by, or are in some way associated with it").

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certification mark on brandy, also authorize, sponsor or are otherwise associated with Applicant's "magazine publishing" services. Cf. Giovanni Food, 2011 WL 810217, at *3 ("We observe that the Board has found the 'something more' requirement to be met where applicant's mark made clear that its restaurant specialized in registrant's type of goods" (citing In re Golden Griddle Pancake House Ltd., (GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services confusingly similar to GOLDEN GRIDDLE for table syrup) and In re Azteca Rests. Enters., Inc., (AZTECA MEXICAN RESTAURANT for restaurant services confusingly similar to AZTECA for Mexican food items)). Indeed, since the record shows that BNIC does in fact publish a digital magazine promoting certified Cognac products, it is likely that consumers encountering Applicant's "magazine publishing" services will mistakenly assume that Applicant is publishing the magazine for Opposers on their behalf. We thus find a commercial relationship between COGNAC brandy and Applicant's COGNAC LIFE "magazine publishing" services for others. In addition, circumstances support finding "something more" here, namely, the renown of Opposers' COGNAC certification mark and the substantial similarity between the parties' marks in meaning and commercial impression. In In re Opus One, Inc., No. 75722593, 2001 WL 1182924, at *2, 4, 6 (TTAB 2001) (finding "something more" established where identical mark used for "restaurant services" and "wine" based on the "strong and arbitrary character of registrant's OPUS ONE mark and the resulting broad scope of protection to which the mark is entitled, and in the nature of the specific commercial relationship between wine and restaurant services") (internal citations omitted); In

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re Mucky Duck Mustard Co., No. 73603019, 1988 WL 252484, at *3 (TTAB 1988) (although not expressly addressing "something more," the Board found that "because of the substantial similarity in the marks and the unique and memorable nature of registrant's mark [THE MUCKY DUCK], … customers of registrant's restaurant who encounter applicant's 'MUCKY DUCK' and design mustard in the grocery store or supermarket are likely to believe that the mustard originates with or is in some way associated with registrant, that is, that the restaurant is selling its own 'special' mustard through retail outlets."); cf. Giovanni Food, 2011 WL 810217, at *4 ("something more" requirement not met to demonstrate relatedness of mustard and catering services where, among other things, "nothing [was] placed in the record upon which to base a finding that the mark JUMPIN JACK'S is a "very strong, unique"

term as the mark MUCKY DUCK was held to be."). Indeed, "the greater the degree of similarity between the applicant's mark and the [opposer's] registered mark, the lesser the degree of similarity between the applicant's goods or services and the [opposer's] goods or services that is required to support a finding of likelihood of confusion." Opus One, 2011 WL 1182924, at *3.

Considering all of the circumstances in this case as a whole, we find that the parties' goods and services are commercially related and that "something more" has been established such that the second DuPont factor favors finding a likelihood of confusion.

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4. Trade Channels, Buyers to Whom Sales are Made and Consumer Sophistication

We turn next to the similarity or dissimilarity of established, likely-to-continue channels of trade and "[t]he conditions under which and buyers to whom sales are made, i.e. 'impulse' vs. careful, sophisticated purchasing" under the third and fourth DuPont factors, respectively. DuPont, 476 F.2d at 1361. The parties mistakenly argue whether trade channels and consumers for COGNAC brandy are related to trade channels and consumers of magazines, as opposed to "magazine publishing," the services identified in Applicant's involved application. They similarly argue the sophistication of purchasers of brandy and magazines.

Again, the involved application identifies "magazine publishing" services, as opposed to magazines. The record is devoid of evidence based on the correct identification of services for Applicant. We thus find the third and fourth DuPont factors neutral.

5. Absence of Actual Confusion Applicant argues that he "has not experienced a single instance of actual confusion…. It is respectfully submitted that, since Applicant's magazine has been widely available since shortly after the application filing, any consumer confusion would have certainly occurred by now."⁴⁶In response, Opposer argues that "there is no evidence for the Board to conclude that there has been an opportunity for confusion to occur if confusion were likely."⁴⁷

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Applicant's arguments implicate the seventh DuPont factor, the nature and extent of any actual confusion, as well as the related eighth DuPont factor, the extent of the opportunity for actual confusion, as argued by Opposer. See DuPont, 476 F.2d at 1361. These DuPont factors require us "to look at actual market conditions, to the extent there is evidence of such conditions of record." In re Guild Mortg. Co., No. 86709944, 2020 WL 1639916, at *8 (TTAB 2020).

As explained, we must consider whether there has been actual confusion between the COGNAC mark used by authorized users on brandy and "magazine publishing"

- not magazines - because these are the services identified in the application. Applicant admits that he uses his mark for a magazine and not "magazine publishing" services for others, the services identified in the application,⁴⁸so there has been no opportunity for actual confusion or the absence thereof. See, e.g., Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 WL 2188890, at *30 (TTAB 2021) ("for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred"). The seventh and eighth DuPont factors are neutral.

6. Weighing the DuPont Factors Our final task is to weigh the DuPont factors for which there has been evidence and argument in this proceeding and "explain the results of that weighing." Charger Ventures, 64 F.4th at 1384.

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The high degree of fame of the COGNAC certification mark is a dominant consideration in our analysis entitling the mark to a wider than normal scope of protection; the fifth DuPont factor weighs heavily in favor of finding a likelihood of confusion. Applicant's COGNAC LIFE mark also is similar to Opposers' COGNAC certification mark in appearance and sound, and very similar in connotation and commercial impression such that the first DuPont factor also heavily weighs in favor of finding confusion likely. Based on the record, we further find a commercial relationship between brandy and magazine publishing services and "something more" to establish relatedness such that the second DuPont factor favors a likelihood of confusion. This is especially true in light of the fact that under the fifth DuPont factor, Opposers' mark is entitled to an expansive scope of protection. The parties' trade channels, the buyers to whom sales are made and buyer sophistication under the third and fourth DuPont factors are neutral as are the seventh and eighth DuPont factors concerning the absence of actual confusion. All of the relevant factors weigh in favor of a likelihood of confusion, two heavily so. We therefore find that there is a likelihood of confusion between Opposers'

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Trademark Act Section 2(d). We do not reach Opposers' dilution claim under Section 43(c) of the Trademark Act.

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