Wednesday, February 22, 2012

CAFC Affirms TTAB Dismissal of COACH Section 2(d) and Dilution Claims, But Remands Mere Descriptiveness Claim

In a 44-page precedential decision, the CAFC affirmed the Board'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 between Applicant Triumph's mark COACH 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].

Evidentiary Ruling: The court first reviewed the Board's refusal to accept into evidence copies of Opposer Coach's 2000-2008 annual reports, submitted via notice of reliance. Triumph had objected on the ground that the reports had not been submitted in accordance with the Rules and were not otherwise authenticated. The court agreed with Triumph. Annual reports may not be submitted merely via notice of reliance (i.e., without authenticating testimony) because they are not considered to be printed publications available to the general public.

Coach argued that the reports are available on the Internet and therefore that the printed reports should have been admissible pursuant to the Board's ruling in Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010). However, the court noted that in Safer the Board made a distinction between an annual report available only in paper form as opposed to a report in digital form on the Internet because the latter would be in general circulation. Coach's printed annual reports did not contain the "identifying information" that would be found on copies obtained from the Internet. They therefore did not fall with the Safer exemption.

Likelihood of Confusion: Coach argued that the Board should have given more weight to its determination that Opposer's mark was famous. The court, however, concluded that "the unrelated nature of the parties' goods and their different channels of trade" weighed heavily against Coach. "Because the duPont factors favoring Triumph outweigh the factors favoring, the Board was correct in finding no likelihood of confusion."

Dilution: The court agreed with the Board that Coach had failed to provide sufficient evidence to meet the higher fame standard for dilution. The only sales and advertising figures of record covered a single year (2008, four years after Triumph's filing date), but the court observed that even had Opposer's 2000-2008 annual reports been admitted into evidence, such evidence by itself would still be insufficient. Coach's 16 incontestable registrations were relevant to the fame inquiry, but of course not conclusive. Coach's evidence of media attention failed, as the Board found, "to show widespread recognition of opposer's mark [by] the general population." Likewise, other evidence offered by Coach missed the mark.

The court emphasized that the burden to show fame in the dilution context is not "insurmountable." [just almost - ed.]. But Coach's evidence was "just too weak" to prove fame on this record.

Mere Descriptiveness: The Board had found that Applicant's mark had achieved acquired distinctiveness. Applicant challenged Coach's standing to raise the issue of mere distinctiveness, while Coach challenged the sufficiency of the 2(f) evidence.

Even though Coach does not use, nor want to use, the word "coach" in a descriptive fashion, it still had standing to raise the issue. Under CAFC precedent, once standing is raised as to any one issue, the party may rely on any other Section 2 ground to negate the applicant's right to registration.

As to acquired distinctiveness, the Board relied on certain documents despite Coach's objection that the documents had not been properly authenticated. The court agreed with Coach that the Board had committed error, and it remanded the case to the Board:

[O]n remand, the Board must address the weight, if any, to be given to pre-July 2003 documents [the date when Triumph's witness began working for Triumph -- ed.] in the absence of any testimony authenticating them or addressing their use. The Board must then assess whether these apparent gaps in Triumph's proofs impact the Board's determination that the mark was in continuous use during any relevant period.

TTABlog comment: IMHO, this is one of the best trademark opinions to come out of the CAFC in a long time. There are no ground-breaking legal rulings, but the application of the law to the particular facts is interesting. Here's a mark that is famous, but not famous enough; entitled to a broad scope of protection, but not that broad. Typically, if a mark is famous for 2(d) purposes, the owner will win against almost any goods and services. Here, however, the marks had totally different meanings in their respective contexts.

On the dilution side, is COACH a unique enough word to ever achieve dilution-level fame? It's not a coined word. In fact it clearly has more than one common meaning. Could Opposer ever convince the Board that COACH is a "household name" that qualifies as famous for dilution purposes?

Suppose Coach's 2(e)(1) claim is sustained on remand. If you were Triumph, wouldn't you file a new application for registration, with an eye toward providing more evidence of secondary meaning next time around?

Text Copyright John L. Welch 2012.


At 9:54 AM, Anonymous Alex B. said...

I could see how the COACH mark of Triumph is not that distinctive but I do not think it is overly descriptive either. I would think that the 5-year presumption of "acquired distinctiveness" under 2(f) should be sufficient for purposes of registration.

At 11:16 PM, Anonymous Ryan Alley said...

Great post, John. My gut feeling (and those are entitled to weight in trademark law, right?) is that Coach is a famous mark for purposes of dilution. I guess Coach should have had their evidence in better order to show it. Coach can get another bite at the dilution apple in a cancellation proceeding, right?

At 5:37 AM, Blogger John L. Welch said...

I think Coach is barred by res judicata from bringing the dilution claim again. It failed to prove that, at the time Triumph filed its applications to register, the COACH mark had become famous. Coach doesn't get a second chance in a cancellation proceeding.

At 1:33 PM, Anonymous Tal Benscahr said...

The part about the annual reports is puzzling to me. Coach is a public company. It is required by law to file Annual Reports with the SEC, and the SEC makes them publicly available, including on its EDGAR website. IOW another branch of the govt. makes the document publicly available on the internet. Why is that not admissible under the TTAB rules?

At 9:03 AM, Anonymous Anonymous said...

Agree with prior poster. Judge O'Malley shows why CAFC is just not a good forum for trademarks. A printed copy of a publicly traded company's annual report, which must be filed with the SEC and is subject to all the Sarbanes Oxley penalties if false, is NOT admissible. But a copy of the same document printed off the internet is admissible, "because we said so." A foolish consistency is the hobgoblin of little minds. Sorry, that's absurd and a federal appeals court ought to know better. Playing "gotcha" with evidentiary quirks does produce merit based results.


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