Fame is Relative in the Trademark Context

by Dennis Crouch

Joseph Phelps Vineyards v. Fairmont Holdings (Fed. Cir. 2017)

Phelps Vineyards has been selling its INSIGNIA wine for the past 40 years — often at $200+ per bottle. In 2012, Fairmont received its federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars.  Phelps Vineyard petitioned for cancellation before the Trademark Trial and Appeal Board (TTAB). Insignia

Although different market areas, Phelps Vineyards argued that the fame of its mark increased the likelihood of confusion.  However, the TTAB rejected that argument – finding that “Petitioner’s mark is not famous” and thus gave that DuPont factor no weight.  On appeal, the Federal Circuit has vacated that decision – finding that “fame” in the likelihood of confusion analysis is not a binary yes/no consideration but rather “varies along a spectrum” from not famous at all to extremely famous: think Chester Arthur to Donald Trump.   Note here – the DuPont factor of fame is totally different from dilution fame, which is a yes/no question.

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In looking at the facts of the case here, the appellate panel noted substantial evidence that INSIGNIA wine “is renowned in the wine market and among consumers of fine wine. . . . We are perplexed at the Board’s finding that INSIGNIA wine has no ‘fame,’ giving no discernable weight to this factor. . . . The factor of ‘fame’ warrants reasonable weight, among the totality of the circumstances.”

On remand, the TTAB will take-up the case again and determine whether this change impacts the results in any way.  Of course, a conclusion that INSIGNIA is famous in the wine business certainly does not directly lead to the conclusion that the mark ALEC BRADLEY STAR INSIGNIA is confusingly similar when used to sell cigars.

StarInsigniaAn interesting aspect of the decision is that it was written as a per-curiam opinion of the court (Judges Newman, Dyk, and Wallach).  However, Judge Newman also penned a concurring opinion noting two additional errors made by the board:

  1. Although the Board found that the wine and cigars are sold in the same channels of trade to the same purchasers, it did not further explore the DuPont factor of “relatedness.”
  2. In considering the likelihood of confusion of the marks, the Board did not consider Fairmont’s actual use of its mark that placed the word INSIGNIA in a dominant format – raising the likelihood of confusion.

Since these notations are in the concurring opinion, the TTAB is not directly bound to follow Judge Newman’s suggestions, but will do well to given them full consideration on remand.

 

42 thoughts on “Fame is Relative in the Trademark Context

  1. Re: “..the Board found that the wine and cigars are sold in the same channels of trade to the same purchasers..” Not legally in NY and some other states.

    1. Do the people of NY feel strongly about selling tobacco in a wine shop or has someone been “lobbied” heavily to apply governmental power for the benefit of the petitioner?

  2. Not for nuttin, but INSIGNA is known here as the store brand of a now defunct electronics retailer.

    1. Quite definitely. Anyone who considers IPRs to be constitutionally offensive should be equally outraged at TTAB oppositions.

      Strange, however, how one can count on one hand the number of suits filed or essays written about the constitutional infirmity of TTAB oppositions. It is almost as if the constitutional arguments are merely a pretext for a policy argument that one side lost, but knows that there is nothing to be gained from trying to win its desired outcome at the ballot box.

        1. If the “?” is a response to my cheap shot about pretext, please excuse the incivility. Naturally it is a curiosity to me that these same arguments—that apply with equal force to inter partes re-exams or TTAB oppositions—were never aired in those contexts. I regret the implication, however, that those who air them now are operating in bad faith. If there is something constitutionally infirm afoot now, it is better that it be noticed and rectified belatedly than not at all.

          1. were never aired in those contexts.

            On further reflection, this requires revision. Obviously these concerns were aired in the context of ex parte re-exam (what else was Patlex?), but it is curious to me that they were never aired quite so vigorously as they are in the context of IPRs.

      1. Greg, except for Teddy Roosevelt, most presidents who succeeded upon the death or assassination from the VP slot where extremely unpopular. They were never elected the first place, and probably did not have the skills to be president.

        There is a lot to be said for the winnowing process in selecting a president from his first having to achieve significant public office or other notoriety, to then having to achieve his own party’s nomination, and then to win the approval of the American people.

      2. I think you are confusing the source of patent and trademark rights. Trademark rights are established by the owner by using the mark. Even an unregistered trademark is a property right, established by the owner’s use of the mark and defendable in court. A patent is nothing at all without a patent grant.

        1. A trademark and a trademark registration are two different things. Yes, the mark is property, and the TTAB has no power to take it from you. But the registration is also property, and the TTAB can rescind your registration.

          In fact, what the TTAB can do is actually worse than what the PTAB can do. The PTAB can declare your claims to be unpatentable, and issue a certificate of correction stating as much, but in the end you still own a patent, even if that certificate of correction makes the asset much less valuable. At the end of a TTAB cancellation, however, you can end up owning nothing. The TTAB does not merely add a certificate of correction to your registration. It delists the registration from the principle register.

        2. Mike, patent rights are not granted by the government. They exist to “secure” the exclusive right of inventors in their Discoveries.

          1. My point is that you can still enforce your trademark rights even if the USPTO fails to grant you a registration. You cannot enforce patent rights if the USPTO fails to grant you a patent.

            1. Mike,

              The only reason why you have trademark rights outside of the federal system is because you have state systems which provide you with a mirror (albeit inexact) of what the federal system provides. Mere use alone gives you nothing.

              As even I learned recently**, pre-emption exists in patent law where it does not exist in trademark law.

              **I recently learned about the timing of when that patent law pre-emption took place, and was a little surprised that at first, patents were indeed a lot more like trademarks, in the notion of federal pre-emption.

              1. No Anon, the only reason you have trademark rights at all is because you use the mark. Federal registration is not required to obtain common-law trademark rights, including the right to oppose attempts to register conflicting marks with the USPTO on the basis of your own prior rights to the mark. This is the most basic tenet of trademark rights, and either you are speaking in ignorance or deliberately downplaying the difference to strengthen your patent argument. The truth is you have no right to exclude others from practicing an invention until you have obtained a patent, but you have every right to exclude others from using your trademark if you can establish your own prior use.

                1. Common-law….

                  You mistake actions necessary – under the law with some type of establishing the law in the first instance.

                  Read again my post – realize that law is NOT just federal law, but nonetheless you need law in order to proceed. Without that law, NO amount of mere use gets you anywhere.

                  This has nothing at all to do with any “patent argument.”

                  This has everything to do with correcting your own misunderstanding that mere use alone gives you any legal right.

                  Trademark rights are an artifact of government – every bit as any other property right. Without government (and the law) mere use, mere possession, mere anything is merely “use,” “possession” or that very “anything” alone.

                  “Use” may very well be a necessary factor in obtaining a specific trademark – either at the state or federal level, but mere use alone does NOT make you have the right.

                  The right is not sui generis like that.

          2. Ned,

            Your statement here is pure legal error.

            Without that very “securing,” all that you have is an inchoate right. You remain at the starting line of the race. You do not have a legal property. You do not have a patent.

            You may have an invention.

            But you do not have ANY exclusive right until you cross the finish line (in first place) in the race. Only then can your right be secured. Only then do you have a right to be secured.

            This reminds me of the error in legal thinking of those who want to emphasize the wrong portion of a dictionary definition of “inventor” when they advance the argument that there can be only one single “true” inventor regardless of whether or not that very first person applies for a patent or not.

            This too is exactly why it is critical to note that our Constitution provides the authority (to make that property right) to Congress (as opposed to the courts). The rules of the race belong solely to Congress.

            Congress may share its authority with other branches of the government, but such sharing must abide by strict measures in order to avoid separation of powers violations.

            Just as Congress shared its power pre-1952 by allowing the Court to use the judicial power of common law to develop the meaning of the word “invention,” and just as that self same power was stripped from the judicial branch in the Act of 1952 when Congress opted for a different path with “obviousness” instead (and did so directly because the Court had turned its common law authority into a finger in the wax nose of 101, and had turned virulently anti-patent [the only valid patent is one that has not yet appeared before us].

            You need to realize exactly what that allocation of power to set the rules of the race means.

            You need to realize the difference between an inchoate right and a proper property right of a granted patent.

            The government very much grants patent rights.

            It is at the time of grant when inchoate becomes proper legal.

            ONLY when you have crossed the finish line of the race, and only when you have done so before all of the other runners in the race do you have the actual legal property rights.

            Standing at the starting line of the race only gives you one thing: the invitation to run in the race.

              1. Ned, you did not “simply quote the Constitution.”

                To wit: “patent rights are not granted by the government.

                An inchoate right is not a patent right.

                You have been able to grasp this very simple concept.

                1. An inventor has a right to a patent upon applying for it an complying with the formalities. It is not given to him by the grace of God.

                2. Nice attempt at diversion, Ned.

                  The point remains:

                  To wit: “patent rights are not granted by the government.” IS pure legal error.

    2. anony, would not be so quick to assume that opposition to cancellations have constitutional problems because they all have a right to de novo review in court. I believe Congress provided court review for all administrative proceedings involving patents and trademarks beginning in the mid-1800s until the AIA removed such rights with respect to reexaminations and never provided them with respect to postgrant reviews. We must recall that the District Court in Patlex case upheld the constitutionality of re-examinations on the basis of such right of de novo review.

      1. Ned – I have lost track of the number of times this has been explained to you.

        If the administrative body revokes the property right, then it is unconstitutional. Provided that the district court does the revocation, then the arrangement works.

        Does the TTAB revoke registered trademarks?

        1. anony, just look at the discussion of this very issue in B&B Hardware. It seems that a majority of the Supreme Court believe that de novo review is enough.

            1. Anony, I know what Stern v. Marshall said. But then we have Executive Benefits, which actually held that de novo review cures the problem.

              When I think B&B suggested is that when a losing party has a right of de novo review, there can be no constitutional violation.

              1. Why does it make sense to you that optional de novo review of administrative revocation addresses the problem?

                Policy over law never ends well. Just ask the federal circuit.

        2. anony,

          I “get” what you want to drive at; however….

          Revocation (or takings) can be by an executive branch entity (and not just by a judicial branch entity) provided appropriate controls are in place that take care of the other protections (for property) that inure to the property (created AT grant) from other parts of the Constitution.

          Those very protections are notably missing with the (wreckless, or perhaps wreck-ful 😉 ) changes Congress put in place in the AIA.

          Ned may be trying to “protect” the prior ex parte re-exam scheme, but that scheme too would have to be analyzed as to whether or not protections against improper takings are present in that scheme.

          It is known that such protections ARE absent with the AIA changes, so it is entirely proper to discuss the two separately.

          1. You can point to differences in procedure until the cows come home; you can call one a trial, and the other a reopening of the examination process; you can analogize to eminent domain and related concepts.

            But, all of this is irrelevant. What matters is who performs the act of revocation. If an administrator, then the law is unconstitutional.

            You may be able to fool yourselves, and maybe some of the posters here. The Supreme Court will see through it.

            1. You may well be correct (in the final summation), but you are not correct in regards to which branch does the taking. As I stated: the key is whether or not proper protections are in place.

  3. You know, Pres. Arthur was so unpopular at the end of his first term that he decided not to run for a second. Something to think about when you look that those juxtaposed photos…

    1. I think it will depend largely on who democrats pick. I don’t think President Trump is as much a result of his popularity as much as a result of his opponents unpopularity.

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