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Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC

“Famousness” of Mark is Not a Binary Inquiry

Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, (Fed. Cir. May 24, 2017) (Per curiam: Newman (concurring), Dyk, Wallach) (TTAB) (3 of 5 stars)

Fed Cir vacates TTAB denial of cancellation petition. Vineyards, the petitioner, has sold wines under the INSIGNIA mark since 1978. It sought cancellation of Fairmont’s 2012 federal registration of BRADLEY STAR INSIGNIA for cigars and cigar products. The TTAB erroneously analyzed the “fame” of Vineyards’ mark as an all-or-nothing test, giving it zero weight after concluding that the mark was not famous. Per Palm Bay Imports, 396 F.3d 1369 (Fed. Cir. 2005), fame should be evaluated along a spectrum. The opinion discusses the evidence tendered by Vineyards and concludes that its “fame” should have received at least some weight, “among the totality of the circumstances.” Op. at 5.

Concurrence: Judge Newman raises concerns about other aspects of the TTAB’s analysis, including the TTAB’s analysis of DuPont’s “relatedness” factor, and the TTAB’s incomplete treatment of Fairmont’s actual use of its registered mark in evaluating the likelihood of confusion.