CAFC Hears Oral Argument in Appeal from TTAB Dismissal of COACH Opposition
On August 5, 2011, the U.S. Court of Appeals for the Federal Circuit heard oral argument [mp3 here] in the appeal from the TTAB's decision [TTABlogged here] dismissing Coach's opposition to registration of the mark COACH for educational test preparation materials. Coach had claimed likely confusion with, and likely dilution of, Opposer's COACH mark for leather goods and various other consumer items, and had further claimed that Applicant Triumph Learning's mark is merely descriptive of its services. Coach Services, Inc. v. Triumph Learning LLC, Appeal No. 2011-1129.
The oral arguments focused to a large extent on the dilution issue, and included a discussion of the standard of fame under Section 2(d) versus the fame standard for dilution under Section 43(c). Coach argued that once the Board found fame for Section 2(d) purposes, that finding of fame should carry over to the dilution analysis. Triumph Learning contended that "fame" in the 2(d) context is merely a colloquial way of saying that the mark is very strong along a sliding scale, but that the standard of fame for dilution purposes requires a higher, yes-or-no, test.
Text Copyright John L. Welch 2011.
posted by John L. Welch @ 8/10/2011
3 comments
3 Comments:
I don't see how Coach wins this on either grounds of the opposition. The fact is that the marks are "substantially" different in that they have different meanings and create different commercial impressions. This is an easy case to decide.
I agree that Coach won't win this one. The Federal Circuit has consistently differentiated between fame for likelihood of confusion purposes and fame for dilution purposes.
Critically, the word "coach" as used by Applicant is suggestive if not descriptive. Dilution cannot protect marks that would prevent words being used in this capacity.
Forget fame. The distinctiveness necessary for dilution goes out the window when D/Applicant is using a term in this way.
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