from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 92057240.
Schneck, Law Offices of Thomas Schneck, San Jose, CA, for
Kimberly Kolback, Law Office of Kimberly Kolback, Miami, FL,
for appellee. Also represented by Miriam Richter, Richter
Trademarks, PL, Wilton Manors, FL.
Newman, Dyk, and Wallach, Circuit Judges.
Phelps Vineyards, LLC ("Vineyards") has produced
and sold wines bearing the trademark INSIGNIA since 1978. In
2012, Fairmont Holdings, LLC ("Fairmont") received
federal registration for the mark ALEC BRADLEY STAR INSIGNIA
for cigars and cigar products. On Vineyards' petition for
cancellation, the Trademark Trial and Appeal Board
("Board" or "TTAB") denied the petition,
stating the finding that:
while it appears that Petitioner's INSIGNIA branded wine
has met with success in the marketplace, we are not persuaded
on this record that Petitioner's mark is a famous mark.
TTAB Op. at 8.
TTAB found that Vineyards' INSIGNIA mark is not a
"famous" mark and gave this factor no weight. The
TTAB erred in its legal analysis, in analyzing the
"fame" of INSIGNIA wine as an all-or-nothing
factor, and discounting it entirely in reaching the
conclusion of no likelihood of confusion as to source,
contrary to law and precedent. As a result of this error, the
Board did not properly apply the totality of the
circumstances standard, which requires considering all the
relevant factors on a scale appropriate to their merits. We
vacate the Board's decision and remand for
redetermination of the merits of the cancellation petition.
Factor of "Fame"
TTAB acknowledged: "Fame for confusion purposes arises
as long as a significant portion of the relevant consuming
public . . . recognizes the mark as a source indicator,
" citing Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374- 75
(Fed. Cir. 2005) ("[T]he proper legal standard for
evaluating the fame of a mark under the fifth DuPont
factor is the class of customers and potential customers of a
product or service, and not the general public.").
TTAB applied a legally incorrect standard in applying an
all-or-nothing measure of "fame, " more akin to
dilution analysis. "While dilution fame is an either/or
proposition-fame either does or does not exist- likelihood of
confusion fame 'varies along a spectrum from very strong
to very weak.'" Id. (quoting In re
Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir.
2003)). In examination of INSIGNIA's fame, the applicable
viewpoint is that of the relevant market. Id.
("[A] mark's renown within a specific product market
is the proper standard.").
provided evidence that INSIGNIA wine is renowned in the wine
market and among consumers of fine wine. The record shows
extensive recognition and accolade for INSIGNIA brand wine.
wines were selected as Wine of the Year in 2005 and 1997,
with Wine Spectator noting that INSIGNIA wine had by 2005
earned an outstanding score in 26 of its 29 vintages and
repeatedly ranked as a "classic, " scoring between
95 and 100 points. J.A. 62. Following is a selection from the
exhibits presented to the TTAB with the testimony of Joseph
• Food and Wine, October 2011, at 150-152:
"INSIGNIA was the first Bordeaux blend produced in Napa
Valley . . . and it's still one of the most famous.
(It's also one of the best.)." (J.A. 82- 83).
• Wall St. J., March 16, 2012: "Favorite Vintage:
1994 Phelps INSIGNIA, $70 on release. A full-bodied,
generous, gorgeous wine that manages to taste youthful as
well." (J.A. 79-81).
• The Capital, February 1, 2012: "Joseph Phelps
Napa Valley INSIGNIA 2008 ($200) -- From one of the most
respected producers in the Napa Valley, this colossal blend .
. . is a wine that will last for decades." (J.A. 87-88).
• Wash. Post, February 24, 1999: "[T]his has to be
INSIGNIA, because when l love a Cabernet and don't know
what it is, I always guess my beloved INSIGNIA." (J.A.
• Balt. Sun, April 14, 1996: Fireworks explode at
tasting for '94 Joseph Phelps INSIGNIA, "But
even amid the abundance of excellent wines on show at the
MacArthur tasting, the INSIGNIA stood out . . . . In more
than a decade of attending MacArthur barrel tastings, ...