‘Fame’ is Not All-Or-NothingJune 6, 2017

The Court of Appeals for the Federal Circuit (“CAFC”) vacated a decision by the Trademark Trial and Appeal Board (the “Board”) denying a petition by Joseph Phelps Vineyards, LLC for cancellation of a trademark held by Fairmont Holdings, LLC. The CAFC held that the Board used an incorrect standard when analyzing the ‘fame’ factor for likelihood of confusion. The court remanded for redetermination using the correct legal analysis.

The Board denied Vineyard’s petition stating that, despite success in the marketplace, it was not persuaded that their mark was a famous one, entirely discounting the ‘fame’ factor. The CAFC found that categorizing ‘fame’ as an all-or-nothing factor was incorrect and the Board should have applied the totality of the circumstances standard, considering all the relevant factors on a sliding scale. Fame is to be determined from the viewpoint of consumers of like products and necessitates reasonable weight, on an appropriate spectrum.

‘Fame’ is the fifth du Pont factor used to analyze likelihood of confusion regarding trademark infringement. Marks deemed ‘famous’ are often considered to weigh in favor of confusion, and therefore legal protection, as consumers are more likely to have an association with, or certain expectations regarding, products with that mark. 

A concurring opinion called attention to two additional issues to be considered on remand. First, the Board was incomplete in its analysis of ‘relatedness’ as it did not consider all aspects of this factor. Since ‘relatedness’ may be exhibited by complimentary products, it should also not be considered all-or-nothing, but evaluated on a sliding scale. Second, the Board did not properly consider Fairmont’s actual use of its mark, stating the appearance and format should be given appropriate weight. The intent of reassessment of these two issues is to provide increased consistency in the Board’s rulings.

For more information or if you have questions, please contact one of our MVS IP attorneys or call us at (515) 288-3667.

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