Raising a Glass to Geographical Indications

Case highlights differences between U.S. and EU protections

For some, Cognac signifies sophistication. It has been described as “the height of contemplative luxury” and pairs with foods from charcuterie to chocolate.

But while an aged Cognac might pair well with a dark chocolate truffle, Cognac pairings do not fare so well in the U.S. Patent and Trademark Office. The organization that administers the European geographical indication for COGNAC, along with a coalition of producers of the brandy originating from the Cognac region of France, recently emerged victorious against a company trying to pair COGNAC with its own, unrelated business.

In July, the Trademark Trial and Appeal Board refused registration of COLOGNE & COGNAC ENTERTAINMENT in stylized form. The case has been ongoing since 2019, when Institut National Des Appellations d’Origine (“INAO”) and Bureau National Interprofessionnel du Cognac (“BNIC”) filed a notice of opposition against the application, which covers goods and services including musical recording albums, musical recording services, and various entertainment services.

INAO is an agency of the French Ministry of Agriculture responsible for maintaining France’s appellation of origin system. BNIC is a trade association for Cognac makers. According to the notice of opposition, the two organizations control and enforce common law rights in the U.S. for the certification mark COGNAC for brandy.

The case illustrates the differing philosophies of protection for geographic indications (“GIs”) between the U.S. and EU, and how those philosophies influence the laws around protecting the integrity of those products.

A tale of two GI regimes

In the United States, protection for GIs often arises from trademark law, which is at its heart a consumer protection regime. On the other hand, GI protection in the EU has its roots in the French appellation of origin system, which sought to uphold the integrity of products (originally wines) defined by the “terroir” of a particular geographic region. Today, the European Commission administers GI schemes for agricultural products, wine, and spirits. While there are differing protection statuses depending on the characteristics of some products, we’ll refer to them all here as GIs.

U.S. trademark law recognizes geographic certification marks, like the COGNAC certification in this case. Certification marks require that 1) the owner does not use the mark and 2) the certification is available to anyone who meets its requirements. While ordinary trademark protections center around the source or origin of goods and services, certification marks let buyers know that the products have particular characteristics or meet specific standards.

Under U.S. trademark law, geographic certification marks are inherently distinctive. This is important because geographic descriptiveness often presents a challenge for normal trademark registration. GIs also can be protected in the U.S. with collective marks, which indicate membership in an organization, like the Cognac makers collective. However, unlike certification marks, collective marks require that the mark is either inherently distinctive or has acquired distinctiveness. For a GI, that means the applicant would need to provide evidence of secondary meaning in the geographic term, i.e., that Cognac has come to symbolize to consumers a particular type of brandy, rather than simply a region in France.

Is fame different for geographic certifications?

In 2022, the TTAB issued a decision dismissing the COLOGNE & COGNAC ENTERTAINMENT opposition. The Board recognized that the opposers have common law rights in the certification mark COGNAC predating any rights of the applicant. However, the Board downplayed the strength of the COGNAC mark, noting that advertising presented as evidence often displayed a brand name of Cognac, along with the COGNAC mark “either inconspicuously or in a manner that is not likely to heighten consumer awareness to the certification status of the term COGNAC.” Combined with other factors, including the differences between the marks, goods and services, and trade channels, the Board concluded that consumers were not likely to be confused.

BNIC and INAO appealed. One of the main issues on appeal was how strength of the mark is determined for certification marks. The organizations argued that, by diminishing the importance of the COLOGNE mark compared with the brand name – like HENESSEY – displayed on the drink’s labeling, the TTAB required a heightened standard for proving fame for a certification mark compared with other types of marks. A group of GI owners filed an amicus curiae brief in support of BNIC and INAO. (With products from NAPA VALLEY wines to ROQUEFORT cheese, the title of the brief could also stand in for a menu at the next IP conference reception.)

In August 2024, the Federal Circuit reversed and remanded. On remand, the TTAB took a very different tack from its original decision. “We find that the evidence establishes that COGNAC is very well-known in connection with brandy throughout the United States and enjoys a strong reputation as a prestigious and quality brandy,” the Board wrote. “Opposers’ COGNAC certification mark is placed at the higher end of the fame or commercial strength spectrum, thus enjoying a wider than normal scope of protection.”

The Board also found that the presence of the word “Cognac” itself in the COLOGNE & COGNAC ENTERTAINMENT mark is prominent and helps to convey “an affluent or sophisticated lifestyle.” Based on these and other conclusions, the Board determined that the COLOGNE & COGNAC ENTERTAINMENT mark is likely to cause confusion with the COGNAC certification mark.

Agreeing to disa-“brie”

Given the differences between the consumer protection rationale of U.S. law around GIs and the origin of European GIs in upholding the integrity of regional products, there are times when a GI does not have the same level of protections on both sides of the Atlantic. Both the U.S. and EU are signatories to the Trade-Related Aspects of Intellectual Property (“TRIPS”) Agreement, which mandates GI protections. But harmonizing the protections from one jurisdiction to the next can be a sticking point.

For example, in 2023, the Fourth Circuit Court of Appeals upheld a lower court’s decision that “gruyere” could not be registered with the USPTO. Consortiums of French and Swiss cheesemakers applied to register the term, but U.S. dairy producers opposed the application. The Fourth Circuit agreed with the TTAB and the federal district court that the term has become generic in the United States for a particular type of cheese. The nuances of GI protection are more numerous than the combinations on a charcuterie board. For those organizations that have secured protection, through a certification mark or otherwise, it is important to maintain those rights through enforcement and upholding standards. But the rest of us can ponder the issue over some Cognac and gruyere. Cheers!

About the Author: Suzi Morales is a writer and editor specialising in IP. She previously practised IP law, including trade mark prosecution and all types of IP litigation, for 15 years. Learn more about Suzi’s work at www.suzimorales.com/intellectual-property-law-marketing