On May 24, 2017, Federal Circuit Judges Newman, Dyk and Wallach issued a per curiam opinion in Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC clarifying the standard for assessing the “fame” of trademarks in a likelihood of confusion context. According to the decision, fame in that context is not an all-or-nothing factor, but instead can vary “along a spectrum from very strong to very weak.” Moreover, fame must be assessed based on the totality of the circumstances, “which requires considering all the relevant factors on a scale appropriate to their merits.”
Since 1978, Joseph Phelps Vineyards had produced and sold wines bearing the trademark INSIGNIA. In 2012, Fairmont Holdings received federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars and cigar products. Vineyards petitioned for cancellation of Fairmont’s mark. The Trademark Trial and Appeal Board denied the petition, stating that, while Vineyards’ INSIGNIA wines had “met with success” in the marketplace, the Board was not persuaded that Vineyards’ INSIGNIA mark was famous.
The Federal Circuit Opinion
The Federal Circuit vacated and remanded the Board’s decision. According to the Federal Circuit, the Board erred by analyzing the fame of Vineyards’ INSIGNIA wines in a likelihood of confusion context as an all-or-nothing factor, and by discounting that factor in concluding that there would be no likelihood of confusion as to source.
The Federal Circuit cited its prior decision Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir. 2005) to note that – unlike fame in a trademark dilution context – fame in a likelihood of confusion context is not an all-or-nothing factor, but instead can vary “along a spectrum from very strong to very weak.” The Federal Circuit also clarified that such fame must be assessed based on the totality of the circumstances, “which requires considering all the relevant factors on a scale appropriate to their merits,” and that fame is analyzed from the viewpoint of the relevant market, i.e., “from the viewpoint of consumers of like products.”
In the case at hand, the Federal Circuit observed that “[t]he record shows extensive recognition and accolade for INSIGNIA brand wine.” That record included 2005 and 1997 Wine of the Year awards in Wine Spectator, as well as many other publications demonstrating the fame of INSIGNIA wines among consumers of fine wine. In view of that evidence, the Federal Circuit was “perplexed at the Board’s finding that INSIGNIA wine has no ‘fame,’” and concluded that “[i]t was error to refuse to accord any ‘fame’ to Vineyards’ INSIGNIA mark.”
In a concurring opinion, Judge Newman called attention to two other factors that “warrant review on remand.” First, the Board did not examine Fairmont’s actual use of its mark, which separates ALEC BRADLEY from STAR and INSIGNIA, and places those words in different fonts and sizes. According to Judge Newman, those actual-use factors could “present a different impression to the consumer than the standard character mark viewed in the abstract.” Second, the Board did not fully address the “relatedness” factor, i.e., whether the public would perceive the wines and cigars at issue as sufficiently related to cause confusion as to their source or origin. According to Judge Newman, the Board improperly treated relatedness as an all-or-nothing factor, “although this factor should be analyzed along a sliding scale.”