March 2012 Issue
Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1456 (Fed. Cir. Feb. 21, 2012)
Triumph Learning LLC (“Applicant”) filed use-based trademark applications for the mark COACH in various formats. Each of the applications covered computer software for use in child and adult education (Class 9), and printed materials in the field of child and adult education (Class 16). Coach Services, Inc. (“Opposer”), owner of the COACH mark for handbags, apparel, and other related products, opposed the applications on the grounds of likelihood of confusion, dilution, and descriptiveness. Opposer asserted numerous prior registrations for the COACH mark for various products and services, including handbags, luggage, clothing, watches, eye glasses, and wallets. Opposer also offered evidence of its use of the COACH mark, including evidence of its trade channels, advertising and marketing efforts, and unsolicited media attention, among others. The TTAB dismissed Opposer’s opposition on all three counts.
On appeal to the Federal Circuit, Opposer argued that the TTAB erred when it (1) improperly balanced the DuPont likelihood-of-confusion factors to find no likelihood of confusion; (2) ignored substantial evidence showing that Opposer’s COACH mark was famous for dilution purposes; and (3) found that Applicant’s descriptive COACH mark had acquired distinctiveness. In response, Applicant argued that (1) the TTAB correctly found no likelihood of confusion “in light of the vast differences in the parties’ respective goods, the channels of trade through which those goods are sold, and the vastly different commercial impressions made by the marks on consumers”; (2) the TTAB correctly found no likelihood of dilution because Opposer did not meet the stringent standards for fame under the Trademark Dilution Revision Act (“TDRA”) and because “its mark has not become the principal meaning of the word “coach”; and (3) Applicant’s mark had acquired secondary meaning.
As an initial matter, the Federal Circuit affirmed the TTAB’s exclusion of certain printed corporate annual reports that were submitted by Opposer through a notice of reliance. The appeals court rejected Opposer’s argument that the printed reports were admissible through notice of reliance alone (and, thus, were self-authenticating) because identical copies of the annual reports were available online. The court acknowledged that although the TTAB’s decision in Safer Inc. v. OMS Investments Inc., 94 U.S.P.Q.2d 1031, 1039 (TTAB 2010), allowed for submission of annual reports obtained from the Internet by notice of reliance, Opposer’s printed annual reports did not appear to have been obtained from the Internet and did not bear the identifying information required under Safer, namely, the online source and date accessed. The appeals court also pointed out that the annual reports had been submitted in October 2008, and the TTAB’s decision in Safer did not issue until 2010 (pre-Safer Internet printouts were not self-authenticating). The court also dismissed Opposer’s argument that one of Opposer’s witnesses had authenticated the annual reports in her testimony deposition by referring generally to the fact that certain advertising information was publicly available in Opposer’s “annual report.” The Federal Circuit agreed with the TTAB that this testimony was not sufficient to authenticate the annual reports or independently establish the information contained therein.
Turning to Opposer’s likelihood-of-confusion claim, the Federal Circuit reviewed the TTAB’s findings on certain DuPont factors: (1) the strength or fame of Opposer’s COACH mark; (2) the similarity of the parties’ goods; (3) the channels of trade; (4) the classes of consumers; and (5) the similarity of the marks in their entireties. On appeal, Opposer argued that the TTAB failed to give proper weight to (1) the fame of its COACH mark; (2) the identical nature of the parties’ marks; and (3) the overlap between the parties’ goods and the overlap and sophistication of the parties’ customers.
Regarding the strength/fame factor, the Federal Circuit agreed with the TTAB’s finding that Opposer’s COACH mark was famous for purposes of likelihood of confusion. The court also agreed with the TTAB that, despite the undisputed similarity between the parties’ respective marks, they had different meanings and created distinct commercial impressions. This was especially true, the TTAB noted, given that the word “coach” is a common English word that has many different definitions in different contexts. As such, the court found that Applicant’s COACH mark, when applied to educational materials, brought to mind someone who instructs students, while Opposer’s COACH mark, when used in connection with luxury leather goods, including handbags, suitcases, and other travel items, brought to mind traveling by carriage. Thus, the distinct commercial impressions of the marks outweighed the similarities in sound and appearance, particularly since (as discussed below) the parties’ goods were unrelated.
With respect to the similarity-of-goods factor, the appeals court agreed with the TTAB that the parties’ goods were unrelated. On appeal, Opposer conceded that the parties’ products were not the same, but argued that there was some overlap between their goods because Opposer “has used the mark in connection with books and audio and videotapes and in connection with tote bags, caps and shirts.” The court found, however, that this alleged overlap did not help Opposer’s position because there was no evidence in the record as to the sale of these products by Opposer. Further, at least with respect to shirts, caps, and tote bags, these items were not included in Applicant’s trademark applications and were thus not relevant to the likelihood-of-confusion analysis, which looks only to the goods specified in those applications.
Regarding channels of trade and classes of consumers, the Federal Circuit agreed with the TTAB that those factors favored Applicant. Among other things, the Court found that although there could be some overlap in the classes of purchasers for the parties’ products (females between the ages of 25-65, on the one hand, and educational professionals, on the other), it was unlikely that, in the circumstances in which the products were sold, consumers would associate Opposer’s COACH products with educational materials used to prepare students for standardized tests. Further, there was nothing in the record to suggest that a purchaser of test-preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source.
As for balancing the DuPont factors, the Federal Circuit found that the TTAB had given proper weight to its determination that Opposer’s COACH mark was famous. The appeals court noted that fame, while important, is insufficient standing alone to establish a likelihood of confusion. Accordingly, although Opposer’s COACH mark was famous for likelihood-of-confusion purposes, the unrelated nature of the parties’ goods and their different channels of trade weighed heavily against Opposer. And because the DuPont factors favoring Applicant outweighed those favoring Opposer, the TTAB was correct in finding no likelihood of confusion.
On Opposer’s dilution claim, the Federal Circuit also sided with the TTAB, finding that Opposer had not made sufficient evidence of record to establish fame for dilution purposes (which required a higher showing than fame for purposes of likelihood of confusion). Opposer argued that the TTAB had improperly disregarded (1) sales and advertising figures for the years 2000-2008; (2) Opposer’s sixteen federal trademark registrations; (3) unsolicited media attention; (4) joint marketing efforts; (5) two Second Circuit decisions finding Opposer’s hangtag, which features the COACH mark, to be famous; and (6) Opposer’s internal brand-awareness survey showing brand awareness among eighteen-to twenty-four-year-old consumers. Regarding the sales and advertising figures, the Federal Circuit reiterated that the annual reports containing these figures were not admissible. Further, Opposer’s witness testimony as to its sales and advertising in one isolated year (2008) was insufficient to establish fame for dilution purposes. The court also found that the mere existence of federally registered trademarks was insufficient to show fame for dilution. While evidence of the registrations was relevant to the fame analysis, it was not determinative. Regarding media attention, the Federal Circuit found that there was evidence of record that Opposer’s mark had achieved a substantial degree of recognition. However, many of the articles postdated Applicant’s filing date and thus did not show fame before that date (as is required for dilution). Accordingly, while there was some evidence of media attention, it did not show the widespread recognition required for dilution. With respect to joint marketing efforts, the Federal Circuit agreed with the TTAB that the fact that other popular brands like LEXUS and CANON had used the COACH mark in connection with their products did not show that these marketing efforts were successful and thus were of little value to the fame analysis. The Federal Circuit similarly discounted the weight of an internal brand-awareness study because Opposer did not offer a witness with firsthand knowledge of the study to explain how it was conducted, the study provided no evidence of brand awareness among women generally or among men (it related only to women ages 13-24), and it had been conducted in 2007, several years after Applicant filed its applications. Finally, the court found the Second Circuit’s decisions irrelevant because they focused on the hangtag on Opposer’s handbags (not the alleged fame of the COACH mark generally), and one of the decisions did not even involve a dilution claim. Thus, the Federal Circuit affirmed the TTAB’s finding that Opposer had not provided sufficient evidence of fame for dilution purposes.
Finally, the Federal Circuit reviewed the TTAB’s finding that Applicant’s mark had acquired distinctiveness. Both Opposer and Applicant took issue on appeal with portions of the TTAB’s decision on this finding. Applicant argued that the TTAB incorrectly found that Opposer had standing to oppose registration on descriptiveness grounds. Opposer argued, on the other hand, that it had standing and that Applicant’s COACH mark had not, in fact, acquired distinctiveness. On the issue of standing, the Federal Circuit noted its precedent that, once standing is established, an opposer is entitled to rely on any of the grounds set forth in Section 2 of the Lanham Act that negate Applicant’s right to registration. Thus, here, because Applicant had not challenged Opposer’s standing to assert claims for likelihood of confusion and dilution, and Opposer had established standing for bringing those claims, it also had standing to assert a claim on descriptiveness grounds.
On the merits of Opposer’s descriptiveness claim, the Federal Circuit affirmed the TTAB’s decision that Applicant’s COACH mark was merely descriptive. However, it found that the TTAB had committed certain evidentiary errors in concluding that Applicant’s COACH mark had acquired distinctiveness, particularly with respect to its finding that Applicant’s use of the COACH mark had been “substantially exclusive.” Opposer had submitted evidence of forty-three book and software titles not affiliated with Applicant that included the word “coach.” The TTAB found no evidence in the record as to the sale of these books, and that most of the titles did not relate to educational materials for preparing standardized tests. And although the TTAB acknowledged that five titles of record arguably related to Applicant’s subject matter, it dismissed those titles at least in part on the ground that they were published after Applicant’s filing date. But the TTAB erred in doing so. Specifically, acquired distinctiveness is determined at the time of trial, and, thus, the five titles should have been considered in the analysis of whether Applicant’s use of the COACH mark had been substantially exclusive.
On appeal, Opposer also argued that (1) there was no testimony authenticating certain documents introduced by Applicant (e.g., advertising materials dating back to the early 1990s); and (2) the witness that Applicant used to introduce these documents had no personal knowledge of when, where, to whom, and how many of these materials were distributed (she had only worked at the company since 2003). The Federal Circuit agreed with Opposer, instructing the TTAB, on remand, to address the weight, if any, to be given to pre-July 2003 documents in the absence of any testimony authenticating them or addressing their use. Further, the court advised that TTAB must also assess whether the apparent gaps in Applicant’s proofs impact its determination that the mark was in continuous use during the relevant time period.
Thus, the Federal Circuit affirmed the TTAB’s findings of no likelihood of confusion and no dilution, and remanded the case for further proceedings solely on the issue of acquired distinctiveness.
This decision reaffirms earlier Federal Circuit precedent finding that fame, while important, may be insufficient standing alone to establish a likelihood of confusion where the other DuPont factors weigh heavily against a likelihood of confusion.