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Failure to Present Sufficient Evidence Results in Unsuccessful Attempts to Oppose Trademark Registration for the COACH Mark

February 21, 2012

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Last Month at the Federal Circuit - March 2012

Judges: Newman, O'Malley (author), Reyna

[Appealed from: TTAB]

In Coach Services, Inc. v. Triumph Learning LLC, No. 11-1129 (Fed. Cir. Feb. 21, 2012), the Federal Circuit affirmed the TTAB’s finding of no likelihood of confusion between Opposer Coach Services, Inc.’s (“Opposer”) COACH mark for handbags, apparel, and other related products and Applicant Triumph Learning LLC’s (“Applicant”) COACH mark for test preparation products. The Court also affirmed the TTAB’s finding that Applicant’s COACH mark was not likely to dilute Opposer’s COACH mark. The Federal Circuit vacated and remanded the case, however, for further proceedings on the issue of whether Applicant’s COACH mark had acquired distinctiveness.

Applicant filed use-based trademark applications for the COACH mark 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). Opposer opposed the applications on the grounds of likelihood of confusion, dilution, and descriptiveness. Opposer asserted numerous prior registrations for the COACH mark for various services and products, 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, 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 the TTAB (1) 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) correctly found no likelihood of dilution because Opposer did not meet the stringent standards for fame under the Trademark Dilution Revision Act of 2006 (“TDRA”) and because “its mark has not become the principal meaning of the word ‘coach’”; and (3) that Applicant’s mark had acquired secondary meaning. Slip op. at 7 (citation omitted).

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 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 (T.T.A.B. 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 Court also pointed out that the annual reports were submitted in October 2008, prior to the Safer decision and at a time when 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 publically 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 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 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.” Slip op. at 22 (citation omitted). 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 gave proper weight to its determination that Opposer’s COACH mark was famous. The 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 agreed with the TTAB, finding that Opposer had not presented sufficient evidence 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 “[w]hile ownership of a trademark registration is relevant to the fame inquiry, . . . proof of registration is not conclusive evidence of fame.” Id. at 31.

Regarding media attention, the Court found that there was evidence of record that Opposer’s mark had achieved a substantial degree of recognition. Many of the articles submitted, however, postdated Applicant’s filing date and thus did not show fame before that date (as 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 first-hand 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 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 involve a dilution claim. Thus, the Court 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. As an initial matter, the Federal Circuit held that Opposer had standing to contest registration on descriptiveness because 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 an applicant’s right to registration. Thus, 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. The Court, however, 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.” The TTAB erred by ignoring evidence that was published after Applicant’s filing date because acquired distinctiveness is determined at the time of trial. Thus, the Board’s failure to assess all of the evidence required remand.

Additionally, the Federal Circuit agreed with Opposer that on remand, the TTAB should address the weight to be given pre-July 2003 documents in light of the absence of any testimony authenticating them or addressing their use, and whether the apparent gaps in Applicant’s proofs impact the TTAB’s determination that the mark was in continuous use during the relevant time period.

Accordingly, 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.

Summary authored by Stephanie H. Bald, Esq.