Coach Services v. Triumph Learning (Fed. Cir. 2011)
Coach is a famous American handbag maker. Coach bags sell for $300 or more each and the company typically earns billions of dollars in revenue each year selling Coach branded products. Triumph Learning makes test prep materials it also sells under the trade name "Coach." Triumph's success has been driven by the no-child-left-behind testing requirements and the company sells most of its Coach-branded products to schools hoping to prepare their students for state mandated exams.
The dispute here arose when Coach Services opposed Triumph's trademark registration for use of the COACH mark. Triumph won at the Trademark Trial and Appeal Board (TTAB) and has now won on appeal.
Here, Coach Services had little success showing a likelihood of confusion because the two companies operate in such distinct market areas and offer products that are distinct from one another. The most interesting aspect of the appeal for trademark law is the court's rejection of Coach Services' dilution claim under the Trademark Dilution Revision Act of 2006 ("TDRA"), 15 U.S.C. § 1125(c). For patent attorneys considering practicing before the future Patent Trial and Appeal Board (PTAB) the most important aspects of the opinion focus on the odd but forceful rules of evidence applied by the Board and supported here by the Federal Circuit.
Trademark Dilution: The holder of a famous mark has trademark rights that go beyond the normal likelihood of confusion test found in the Lanham Act. In a dilution claim a famous mark holder can also stop uses that are likely to blur or tarnish the mark even in the absence of potential customer confusion. Here, Coach Services argued that Triumph's use of COACH for its services blurred the power of the mark by using it for non-related, non-luxury goods.
Not Famous: In a dilution claim, the law requires that the mark holder prove that its mark is widely recognized by the general public. When the mark is also a common word - such as COACH – the mark holder must also demonstrate that those ordinary "uses of the mark are now eclipsed by the owner's use of the mark . . . in almost any context" and that the mark has become "a household name." Coach services failed to convince the judges that its mark was sufficiently famous to qualify.
For its case, Coach presented a set of facts to prove that its mark was sufficiently famous. These included: (1) sales and advertising figures for years 2000-2008; (2) its sixteen federal trademark registrations on the mark; (3) extensive unsolicited media attention referring to the mark; (4) joint marketing efforts for the mark; (5) two Second Circuit decisions finding the Coach hang-tag, which features the COACH mark, to be famous; and (6) Coach Services' internal brand awareness survey showing extensive awareness among 18-24 year old consumers.
None of these factual arguments persuaded the judges that the COACH mark was famous. In particular, the court rejected the company's sales and advertising figures because they had not been properly authenticated and admitted as evidence before the TTAB. Further, none of the facts presented by Coach Services actually lead to the conclusion that the word mark COACH is a household name that overwhelms the ordinary use of the word coach.
Notes:
In some of my courses, I have historically used an image of a Coach brand bag to think through some trademark and trade dress principles. This year, I had to go through three students before someone recognized the brand.
