Federal Circuit: COACH not a sufficiently famous brand and therefore cannot oppose a similar mark on a trademark dilution principle.

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.

15 thoughts on “Federal Circuit: COACH not a sufficiently famous brand and therefore cannot oppose a similar mark on a trademark dilution principle.

  1. “None of these factual arguments persuaded the judges that the COACH mark was famous. ”

    Thanks to the TTAB and CAFC for getting this one right. Famous my aunt Hattie’s patootie.

  2. No matter how you change the trademark but the people still knowing the brand because of its famous, Im sure the people still looking into it. Coach is one of the famous and reputable brand in the market. Many people using it because the price is not really that expensive but the quality can compare to all those LV bags.

  3. 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.

    “McDonald’s Precision Gold Watches”

  4. “In some of my courses, I have historically used an image of a coach bag to think through some trademark and trade dress principles. This year, I had to go through three students before someone recognized the brand.”

    Female students? (The Progresso ad suddenly comes to mind.)

    Even as a fan of Coach bags, I have to agree that there’s no way the brand comes to mind in every context of the word “coach”. I imagine they could get a lot further with their connecting “C”s design, though, even though it is arguably fairly simple and not so different from a grid of circles.

  5. Stepped off the motor coach this morning on my way from coaching my little league team to meet my professional skills coach for a coaching session and read this item with interest. Don’t think any amount of trial-skills coaching or witness coaching would have helped the COACH brand luxury purse company in this case. Perhaps next a complaint against the NCAA, NBA, NFL, etc. for all that dilution the COACH brand luxury purse company is suffering from all of those head coaches and assistant coaches, so we can all start calling those people mentor/teacher/leader/decision-maker/head-of-sports-team people.

  6. 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.

    So what was Coach’s argument?

    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.

    LOL. The “power of the mark.” Let’s translate: a company spends money trying to control what people think when they see a word or symbol. And this ridiculous statute gives that company a chance to ruin the livelihoods of those who interfere (even unwillingly) with their mind-control scheme. And don’t get me started on “tarnishment.”

  7. “[T]he court rejected the company’s sales and advertising figures because they had not been properly authenticated and admitted as evidence before the TTAB.”

    Sounds like the attorneys of the company earning billions of dollars in revenue could have done a better job presenting the evidence.

    I still believe that COACH is a highly recognizable and popular trade name. When one Googles the word “coach”, the first two hits provide links to the company’s web site.

Comments are closed.