Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, No. 16-1089 (Fed. Cir. 2017)Annotate this Case
Joseph Phelps Vineyards has produced and sold wines bearing the trademark INSIGNIA since 1978. In 2012, Fairmont received federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars and cigar products. On Vineyards’ petition for cancellation, the Trademark Trial and Appeal Board (TTAB) denied the petition, stating that: while it appears that Petitioner’s INSIGNIA branded wine has met with success in the marketplace, we are not persuaded on this record that Petitioner’s mark is a famous mark. The Federal Circuit vacated. TTAB erred in its legal analysis, in analyzing the “fame” of INSIGNIA wine as an all-or-nothing factor and discounting it entirely in reaching the conclusion of no likelihood of confusion as to the source, contrary to law and precedent. 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.