Wednesday, June 20, 2012

On CAFC Remand, TTAB Again Finds COACH Has Acquired Distinctiveness for Test-Prep Software

In February 2012, the CAFC affirmed the TTAB's dismissal [TTABlogged here] of Opposer Coach's Section 2(d) and dilution-by-blurring claims, finding that Opposer had failed to prove likelihood of confusion or dilution vis-a-vis Applicant Triumph's mark COACH (in standard character, stylized, and design forms) for educational software and publications, and Opposer's registered mark COACH for handbags, luggage, and the like. As to Opposer's Section 2(e)(1) mere descriptiveness claim, however, the court vacated the Board decision and remanded the claim for further consideration. Coach Services, Inc. v. Triumph Learning LLC, 101 USPQ2d 1713 (Fed. Cir. 2012) [precedential]. [CAFC decision TTABlogged here]. The Board has again dismissed Opposer's Section 2(e)(1) claim, finding that Triumph's marks have acquired distinctiveness. Coach Services, Inc. v. Triumph Learning LLC, Opposition No. 91170112 (June 18, 2012) [not precedential].

The CAFC ruled that the Board had made two errors in its analysis of acquired distinctiveness: first, it failed to consider the impact of five book titles that appeared after Triumph had filed its applications. The court noted that the application filing date is not the cut-off date for evidence bearing on the issue of acquired distinctiveness. Second, the court found that Triumph had failed to lay a proper foundation for testimony regarding certain catalogs dated prior to July 2003, when its witness, Jane Fisher, joined the company.

On remand, the TTAB decided not to consider any pre-2003 documents nor any testimony by Ms. Fisher regarding activities prior to 2003.

The Board then reviewed Triumph's evidence of acquired distinctiveness: use of the trademark COACH since 1986, annual advertising expenditures in the six figures, millions of promotional pieces distributed annually, revenues in the seven figures per annum. It also noted that Triumph is the largest publisher of educational materials for standardized tests.

The Board ruled that Triumph's COACH mark is "merely descriptive," but "not so highly descriptive that applicant has the burden to show a concomitantly high level of acquired distinctiveness." [How one draws the line between "merely descriptive" and "highly descriptive" was not explained - ed.]. It observed that survey evidence or direct evidence of consumer recognition is not required to prove acquired distinctiveness.

The Board found that Applicant's use of its COACH marks for preparing standardized tests has been substantially exclusive. "The requirement for substantially exclusive use makes allowance for use by others that may be inconsequential."

The evidence of purported third-party use was of little probative value because there was no proof that the public is aware of the books or software. As to the book titles, the Board pointed out that the title of a single creative work is not a source indicator. [So what? Wouldn't the book titles still undercut Triumph's claim to exclusivity? Aren't they also relevant to the issue of the degree of descriptiveness of the COACH marks? - ed.]. In any case, this evidence does not show that Triumph's use of its COACH marks for test-prep materials was not substantially exclusive.

The Board therefore found that Triumph's use of its marks "has made an impact on the purchasing public in the field of educational materials for preparing standardized tests as an indication of origin and has acquired distinctiveness. It ruled that Triumph had established its affirmative defense of acquired distinctiveness, and it dismissed Opposer's Section 2(e)(1) claim.

TTABlog comment: I suspect this case will return to the CAFC.

Text Copyright John L. Welch 2012.


Post a Comment

<< Home