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Considering whether the Trademark Trial and Appeal Board (TTAB) erred in permitting the registration of COACH for test preparation materials over objections from the owner of COACH for handbags, the U.S. Court of Appeals for the Federal Circuit upheld the TTAB’s finding that no likelihood of confusion existed and insufficient evidence was presented to find fame to support a dilution claim. Coach Services, Inc., v. Triumph Learning LLC, Case No. 11-1129 (Fed. Cir., Feb. 21, 2012) (O’Malley, J.).
The defendant published test preparation books and software and claimed to have used the mark COACH in connection with its products since at least 1986. In 2004, the defendant filed three use-based applications to register its COACH marks for those products. The plaintiff had used the mark COACH since at least 1961 for a wide variety of “accessible luxury” products, including handbags, luggage, clothing, watches, eye glasses and wallets. The plaintiff filed a Notice of Opposition opposing registration of all three of the defendant’s COACH marks on the grounds of likelihood of confusion and dilution. The plaintiff further claimed that the defendant’s mark was barred from registration as merely descriptive when used on goods in the educational and test preparation industries. The TTAB dismissed the plaintiff’s opposition, finding that no likelihood of confusion existed between the parties’ marks and that there was no likelihood of dilution of the plaintiff’s COACH mark for lifestyle goods by the defendant’s COACH marks for educational materials. The TTAB also held that while the defendant’s COACH marks were merely descriptive, they were entitled to registration because they had acquired secondary meaning.
On appeal, the Federal Circuit determined that the TTAB correctly found no likelihood of confusion. While the parties’ word marks were identical in sound and appearance because they both used the word “Coach,” the Court agreed that the parties’ marks had completely different meanings and commercial impressions. The defendant’s COACH mark, when applied to educational materials, brought to mind a person who instructs students, while the plaintiff’s COACH mark used for luxury leather goods, brought to mind traveling by carriage. Further, the parties’ goods were wholly unrelated, and the defendant marketed to sophisticated purchasers who would exercise care in purchasing decisions, minimizing likelihood of confusion. The Court also upheld the TTAB’s finding that although COACH for handbags was famous for likelihood of confusion purposes, the significance of this factor was outweighed by the unrelated nature of the parties’ goods and different channels of trade.
Concerning dilution, the Court affirmed the TTAB’s holding that the plaintiff had not provided sufficient evidence of fame of its COACH mark to support a dilution claim. The Court explained that the burden to show fame for dilution purposes is high and rejected the plaintiff’s argument that the same evidence that established fame for likelihood of confusion purposes also established fame for dilution purposes. Notably, the Court emphasized that the burden to show fame is “not insurmountable,” and that it was not holding that the plaintiff could never establish the requisite level of fame. The plaintiff’s evidence proffered in this particular case, however, was too weak. Significantly, the TTAB only considered one year of the plaintiff’s sales and advertising of its COACH-branded products, noting that the plaintiff had not properly authenticated documents showing years of such figures and thus excluded them. Further, the plaintiff’s evidence of unsolicited media attention was lacking because most of the articles the plaintiff offered in support were dated after the defendant filed its applications, and thus did not show that the plaintiff’s mark was famous prior to the filing date as required to sustain a dilution claim. Further, the plaintiff’s brand-recognition study was not convincing because the plaintiff did not offer a witness with first-hand knowledge of the study to explain how it was conducted, and the survey was conducted several years after the defendant had filed its applications.
Finally, the Court found that the TTAB had erred in its secondary meaning analysis and vacated the TTAB’s decision solely on its finding that the defendant’s mark had acquired distinctiveness and remanded for further proceedings on that issue.
© 2013 McDermott Will & Emery
