Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356
| Fed. Cir. | 2012Background
- CSI opposes Triumph’s COACH marks for educational materials; Board dismissed on confusion and dilution but found descriptive marks acquire distinctiveness; Board remanded on acquired distinctiveness due to evidentiary errors; Triumph argues no likelihood of confusion or dilution and that marks have secondary meaning; CSI’s annual reports were excluded as unadmitted evidence; likelihood of confusion analysis centered on DuPont factors; dilution analysis required proof of dilution fame under TDRA.
- Triumph’s registrations cover COACH in word, stylized, and with design for Class 9 and 16 goods; Triumph uses COACH as a brand for test-prep materials and related products; CSI owns many incontestable COACH registrations for luxury goods; there is no actual confusion evidence between fashion goods and educational materials; Board concluded Triumph’s marks are not confusingly similar due to different commercial impressions.
- Board noted that CSI failed to authenticate annual reports offered via notice of reliance and that Safer does not compel admission of paper reports; the Safer decision allowed some internet documents, but here paper annual reports were excluded.
- On the merits, the Board found no likelihood of confusion due to dissimilar goods, channels of trade, and consumer sophistication; the Board found no dilution for lack of fame under TDRA; Triumph’s marks were held merely descriptive but had acquired distinctiveness; the acquired distinctiveness issue was remanded for further proceedings.
- Court affirms the Board on confusion and dilution; vacates the acquired distinctiveness ruling and remands for further proceedings on that issue.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion under DuPont factors | CSI argues marks are visually identical and similar in sound; goods overlap; channels and consumers overlap. | Triumph argues dissimilar commercial impressions and unrelated goods, mitigating confusion. | No likelihood of confusion; factors weigh in Triumph’s favor. |
| Dilution by blurring under TDRA | CSI asserts Triumph’s COACH marks blur CSI’s mark due to fame. | Triumph contends CSI lacks requisite fame for dilution. | No dilution; CSI did not prove fame required for dilution. |
| Descriptiveness and standing | CSI challenges Triumph’s descriptiveness and argues standing supports descriptiveness opposition. | Triumph maintains CSI had standing but its descriptiveness claim lacks support. | CSI has standing; descriptiveness claim fails; holding focuses on notable evidentiary issues. |
| Evidentiary ruling on notice of reliance (annual reports) | CSI contends annual reports are admissible under Safer via notice of reliance. | Board properly excluded unauthenticated paper reports; Safer not controlling here. | Board did not abuse discretion; annual reports excluded. |
| Acquired distinctiveness for Triumph's marks | Triumph failed to show substantial exclusive use and consumer recognition pre-filing; some pre-2003 materials unverified. | Triumph proved substantially exclusive use and long-standing marketing for COACH marks. | Remand on acquired distinctiveness due to evidentiary gaps; not decided on the merits. |
Key Cases Cited
- In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (DuPont factors govern likelihood of confusion)
- Recot, Inc. v. M.C. Becton, 214 F.3d 1322 (Fed. Cir. 2000) (fame plays dominant role but not sole factor in confusion analysis)
- Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir. 2005) (fame varies in degree and weight in DuPont factors)
- Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367 (Fed. Cir. 2002) (fame considerations and scope of protection)
- Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164 (TTAB 2001) (fame standards in dilution context are stringent)
- Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) (household name concept for dilution relevance)
- 7-Eleven Inc. v. Wechsler, 83 U.S.P.Q.2d 1715 (TTAB 2007) (DuPont-like analysis and related factors in non-traditional goods)