Thursday, June 03, 2010

Fame of Coach's "Signature C" Design Mark Leads TTAB to Sustain 2(d) Opposition

Applicant Master Leather Corp. failed to pull a rabbit out of its hat while attempting to register the logo mark shown on the right, for "evening handbags, handbags, leather handbags" [Why not just "handbags"? - ed.]. Opposer Coach proved the fame of its "C Signature" mark, shown below, for handbags, and from there it was all downhill, since fame plays a "dominant role" in the Section 2(d) likelihood of confusion analysis. Coach Services, Inc. v. Master Leather Corp., Opposition No. 91185554 (May 21, 2010) [not precedential].

Coach first used its "Signature C" mark in 2001, and has generated more than $1 billion in sales over the last five years. It extensively advertises its goods under the mark in various well-known periodicals, and the goods have received "widespread" unsolicited media coverage.

The Board therefore found the mark to be famous for purposes of the fifth du Pont factor.

The goods of the parties are in part identical, and therefore the Board must presume that they travel in the same trade channels to the same classes of purchasers.

Turning to the marks, the Board found them to be "highly similar:"

both utilize interlocking pairs of stylized letters arranged in novel directions. Applicant’s mark includes two pairs of the letter “G” with one pair facing one another and the other rotated ninety degrees to the right. These letters are arranged in exactly the same manner as two of the four pairs of the letter “C” that comprise opposer’s famous mark. We note in addition that the stylization of the two pairs of the letter “G” in applicant’s mark is strikingly similar to the stylization of the four pairs of the letter “C” comprising opposer’s famous mark. In fact, the stylization in the letters is so highly similar that it is difficult to distinguish between them, notwithstanding that they contain the letter “G” on the one hand and “C” on the other.

The inclusion of the phrase "G Rabbit" in small, lettering in Applicant's mark is "not sufficient to create a commercial impression that is separate from opposer's famous mark." In short, the similarities "overcome" the dissimilarities between the marks.

And so the Board sustained the opposition.

TTABlog comment: Applicant didn't put up much of a fight. It did not file a brief, take testimony, or submit any evidence. Its officer failed to appear for a testimony deposition noticed by Opposer. Apparently Applicant saw the handwriting on the wall.

Should Opposer have filed for summary judgment? What do you think?

Text Copyright John L. Welch 2010.


At 6:16 PM, Anonymous Rob said...

It is Board practice to dismiss cases for a party's "loss of interest," and opposer could have moved for judgment on that ground, since it does seem that applicant lost all interest in the case soon after it filed an answer. If an applicant does not oppose such motion, it may be treated as conceded.


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