Monday, September 27, 2010

Precedential No. 38: "COACH" Loses Triple-Header: 2(d), 2(e)(1), and Dilution

In a 57-page opinion, the Board dismissed this three-pronged opposition brought by Coach Services, Inc., owner of the registered mark COACH for leather goods and various other consumer items. Opposer contended that Applicant Triumph Learning's mark COACH, in standard character form and in the logo form shown below, for educational test preparation materials would be likely to cause confusion with, or dilution of, Opposer's COACH mark. Thirdly, Opposer claimed that Triumph's mark COACH is merely descriptive of Triumph's goods. Coach Services, Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB 2010) [precedential].

Standing re 2(e)(1): Applicant Triumph argued that Opposer does not have standing to bring a mere descriptiveness claim because Opposer did not assert the "right or a potential need to use the word 'Coach' descriptively." The Board, however, ruled that Opposer nonetheless has a real interest in preventing the registration of Triumph's marks, and therefore has standing.

Section 2(d): The Board first found Opposer's mark COACH to be famous for purposes of likelihood of confusion, based in part on annual sales of $3.5B and advertising expenditures of $10-60M per year. However, fame proved to be not enough for victory.

The Board found the involved goods not to be similar or related in any way, and the channels of trade to be distinct. However, it recognized that there may be some overlap in classes of consumers: namely, students and parents of students.

Most importantly, the Board deemed the marks to be "different in their connotations and commercial impressions," a fact that the Board found "critical in this case."

Opposer’s COACH mark, when applied to fashion accessories is clearly either arbitrary or suggestive of carriage or travel accommodations (e.g., stagecoach, train, motor coach, etc.) thereby engendering the commercial impression of a traveling bag (e.g., a coach or carriage bag). On the other hand, applicant’s COACH marks call to mind a tutor who prepares a student for an examination.

And so the Board concluded that Triumph’s COACH marks "are not similar to opposer’s COACH mark."

Balancing the relevant du Pont factors, the Board found confusion unlikely, and it dismissed the 2(d) claim.

Dilution: The Board again began with the issue of fame, noting that "[f]ame for dilution requires a more stringent showing" than fame for Section 2(d) purposes. Quoting the TTAB's seminal Toro decision:

the owner of a mark alleged to be famous must show a change has occurred in the public’s perception of the term such that it is now primarily associated with the owner of the mark even when it is considered outside of the context of the owner’s goods or services. Toro Co. v. ToroHead Inc., 61 USPQ2d at 1180-1181.

Reviewing Opposer's evidence, the Board found that it was insufficient to prove fame for dilution purposes. Opposer's brand awareness study was of "dubious probative value," its media evidence failed to show widespread recognition in the general populace, and its evidence of sales and advertising expenditures was limited to a single year.

While lack of fame was enough to deep-six the dilution claim, the Board proceeded to plow through the other dilution factors. It first found that Opposer failed to prove that its mark became famous before Triumph's first use date. It next found that the marks are not "essentially the same," as required for dilution. And there was no evidence that Triumph intended to create an association with Opposer's mark. Balancing all the relevant factors, the Board found no likelihood of dilution by blurring.

Opposer's claim of dilution by tarnishment also proved to be a dud because there was no evidence "suggesting that opposer's mark will suffer any negative association by applicant's use of its marks."

2(e)(1) Mere Descriptiveness: The Board found that "Coach" is merely descriptive of "educational materials used for preparing for standardized tests." The dictionary definition of the word and its use in the titles of educational books and CDs led the Board to conclude that "Coach" directly informs consumers that the products are for instruction.

Triumph, as an affirmative defense, pleaded that its marks have acquired distinctiveness, based mostly on "substantial" revenues ("seven figures") and distribution of four million promotional pieces in 2008. The Board deemed COACH to be "not so highly descriptive that Applicant has the burden to show a concomitantly high level of acquired distinctiveness." Opposer argued that the only evidence of acquired distinctiveness was the testimony of Triumph's own witness, which was "self-serving and uncorroborated." The Board, however, noted that the witness was rigorously cross-examined and that her testimony was credible.

The Board found that Triumph's use of the COACH marks has been substantially exclusive for its goods, and that its marks have "made an impact on the purchasing public." Therefore, it ruled that Triumph's registrations will issue "with the appropriate notation."

TTABlog comment: Another instructive Judge Bergsman opinion. I did think that Triumph's evidence of acquired distinctiveness was a little weak, but then it deserved a break after all that heavy lifting in fending off Opposer's claims.

As to the standing issue, I just don't get it. Just because one competitor doesn't want another to get a registration, should that be enough for standing? I've railed about this before: e.g., see the Intel v. Emeny case [TTABlogged here], where Opposer Intel was found to have standing to challenge Emeny's bona fide intent when he applied to register the mark IDEAS INSIDE, even though Intel had dropped its Section 2(d) and dilution claims.

Text Copyright John L. Welch 2010.


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