Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC
857 F.3d 1323
| Fed. Cir. | 2017Background
- Joseph Phelps Vineyards (Vineyards) has used the mark INSIGNIA for wine since 1978; Fairmont received a federal registration in 2012 for ALEC BRADLEY STAR INSIGNIA for cigars.
- Vineyards filed a TTAB cancellation petition; the TTAB denied cancellation, finding Vineyards’ INSIGNIA was not a “famous” mark and giving that factor no weight.
- The Federal Circuit vacated and remanded solely because the TTAB applied an incorrect all-or-nothing standard for “fame” in the DuPont likelihood-of-confusion analysis.
- The Court held the proper inquiry views fame on a spectrum and from the perspective of the relevant consumer market (fine-wine consumers), and Vineyards presented substantial evidence of renown (major wine-press praise, awards, White House service).
- The Court instructed that the fame factor warrants reasonable weight and that the TTAB must consider all DuPont factors under a totality-of-the-circumstances/sliding-scale approach on remand.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Vineyards’ INSIGNIA is "famous" for DuPont fame factor | INSIGNIA is renowned in the wine market (awards, press, White House) and thus should be given weight on a spectrum | Not famous; TTAB found no fame and gave the factor no weight | Vacated TTAB: fame varies along a spectrum and must be judged within the relevant market; INSIGNIA warrants reasonable weight |
| Appropriate standard for assessing “fame” | Use market-specific, sliding-scale fame (likelihood-of-confusion context) | TTAB applied an all-or-nothing/dilution-like standard | Court rejected all-or-nothing treatment; directed TTAB to apply correct sliding-scale standard |
| Whether TTAB should consider actual marketplace use/format of registered mark | Vineyards argued marketplace impressions matter; actual use can show dominance of element INSIGNIA | Fairmont argued standard-character registration controls and format not dispositive | Concurring opinion: actual use and presentation are relevant and should be considered on remand when assessing consumer perception |
| Relatedness of goods (wine vs. cigars) | Vineyards argued potential relatedness via complementary use, same channels, same consumers—fact-sensitive; prior use and channels suggest overlap | TTAB found the products differ in composition/manufacture and downplayed relatedness | Concurrence: relatedness is fact-specific and should be evaluated on a sliding scale; TTAB must explain weight given to relatedness on remand |
Key Cases Cited
- Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir.) (fame for confusion is market-specific and varies by degree)
- In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir.) (distinguishing dilution’s binary fame from likelihood-of-confusion fame spectrum)
- In re E. I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A.) (DuPont multifactor totality-of-the-circumstances framework)
- In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir.) (relatedness may exist even where goods differ; consider channels and consumers)
- Hornady Mfg. Co. v. Doubletap, Inc., 746 F.3d 995 (10th Cir.) (standard-character registration does not override marketplace presentation; consumer perception matters)
- Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344 (Fed. Cir.) (actual commercial displays inform but do not rigidly limit analysis of a standard-character mark)
- Duopross Medi-tech Corp. v. Inviro Med. Devices, 695 F.3d 1247 (Fed. Cir.) (likelihood-of-confusion is assessed through consumers’ commercial impression)
- Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir.) (identical marks can cause consumer confusion even for different goods when perceived as related)