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26 May 2017Trademarks

Federal Circuit vacates TTAB decision over wine mark

The US Court of Appeals for the Federal Circuit has vacated and remanded a decision by the Trademark Trial and Appeal Board (TTAB) over a wine company’s trademark.

The Federal Circuit’s decision, which was handed down on Wednesday, May 24, came in a dispute between wine company Joseph Phelps Vineyards and cigar producer Fairmont Holdings.

Joseph Phelps has used the trademark ‘Insignia’ since 1978. But in 2012, Fairmont received a trademark registration for ‘Alec Bradley Star Insignia’ covering cigar products.

Joseph Phelps petitioned for cancellation, but the TTAB denied the claim, finding that Joseph Phelps’ trademark was not famous.

The Federal Circuit said that the TTAB erred in analysing the fame of ‘Insignia’ wine as an “all-or-nothing factor”.

It added: “As a result of this error, the TTAB did not properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits.”

The Federal Circuit also said in its ruling that Joseph Phelps provided sufficient evidence that ‘Insignia’ wine is renowned in the wine market and among consumers of fine wine.

“We are perplexed at the TTAB’s finding that Insignia wine has no ‘fame,’ giving no discernable weight to this factor.”

Each party was also ordered to bear its costs.

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