Friday, August 16, 2013

Coach Loses Section 2(d) Design Mark Battle

Coach Services, Inc. opposed an application to register the mark shown to the left below, for eyewear and related goods, claiming a likelihood of confusion with the two marks shown to the right, for admittedly identical goods. Coach fumbled the ball on several evidentiary issues, but the case boiled down to the similarity or dissimilarity of the marks. Coach lost. Coach Services, Inc. v. E&D Trading, Inc., Opposition No. 91203818 (August 7, 2013) [not precedential].

Coach submitted copies of seven certificates of registration, but the copies did not state current status or title. The parties stipulated to Coach's "priority of use" of its marks, but not to its ownership of the registrations. Registrations may be made of record in any of several ways (see Rule 2.122(d)(2) and TBMP Section 704.03(b)(1)(A), but Coach followed none of them,  and so its registrations were not in evidence.

Opting for the Board's ACR procedure, the parties proceeded on a stipulated record, with each party relying on affidavits or declarations in lieu of testimony. Opposer Coach's affidavit related to use of the pleaded marks by an entity called "Coach, Inc.," not Opposer Coach Services, Inc. Fortunately for Opposer, applicant stipulated to priority and to the nature of opposer's goods. The Board found the relevance of Coach's affidavit to be "uncertain," but it proceeded as if the assertions in the affidavit "related to opposer in all ways," noting that this assumption did not alter its ultimate decision.

Because the goods of the parties are identical (so stipulated) the Board stated that it must presume that the goods of the parties move through the same, normal channels of trade to the same classes of consumers. [TTABlog query: that would be true if Coach's registrations were in evidence, but since it was relying on common law rights, why should the Board make such an assumption? Why didn't it look to Coach's actual channels of trade to see if the actual channels overlapped with the normal channels for applicant's goods?]

Coach claimed that its two design marks are famous for purposes of Section 2(d), but its proofs fell short. It relied on strong sales, extensive advertising expenses, and tens of millions of website hits. However, Coach provided no context for its data - for example, comparison with others in the field - and no direct evidence of consumer recognition of its marks. While its indirect evidence weighed in favor of a finding of likely confusion, it was not sufficient "to demonstrate actual fame or an objectively high level of consumer recognition."

Turning to the marks, the board observed that applicant's mark would likely be pronounced "DP" [i.e, "dee-pee" - ed.]. Opposer's marks, if pronounced (which is doubtful) would sound substantially differently: they would sound like "C" or "CC" or "CCCC." ["see," or "see see," or "see see see see" - ed.].

Coach argued that the marks are "substantially identical" and "strikingly similar" because they both create a "circular aesthetic" with the sides of the letters being much fuller than the tops and bottoms. Coach urged the Board to consider applicant's mark next to a cropped image of its marks, thusly:

The Board, however, pointed out that the "cropped" version of Coach's mark was not pleaded, and there was no evidence of use of that cropped form. Instead, the evidence showed use by Opposer only in the four or eight "C" patterns, or as a repetitive pattern with innumerable iterations of the marks.

The Board saw "some similarity" in the oval shapes in the marks, but there are many differences. "[W]hile applicant's mark has the character of a combination of letters, opposer's marks have the character of abstract designs, albeit composed of iterations of the letter C in various orientations and reversals."

Although Coach might "in another context, have occasion to object to any use by applicant of its mark in a repeating pattern," there was no evidence that applicant had ever done so.

In sum, the Board found the marks to be dissimilar in appearance, meaning, sound, and overall commercial impression. It therefore dismissed the opposition.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 1:40 PM, Anonymous Anonymous said...

It appears Applicant filed no papers on this case and still won only on the stipulated record because the Board determined the marks were just not similar.

At 3:01 PM, Anonymous Orrin A. Falby said...

I saw that to. I makes me question the decision makers who okayed this filing in in the first place. There was also that recent Fed. Cir. appeal on the mark COACH that was very questionable.


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