TTABulator

Coach Services, Inc. v. Triumph Learning, Inc., decided by Court of Appeals for the Federal Circuit on February 21, 2012.

For the full opinion of the Court of Appeals for the Federal Circuit, see here.

For the TTAB’s earlier ruling, see here.

Brief Summary:

In September of 20102, the TTAB dismissed an opposition by Coach, the maker of handbags and accessories, against the mark COACH for educational software, holding that opposer’s likelihood of confusion and dilution claims failed. Opposer’s alternative argument that the applicant’s mark was merely descriptive was also dismissed by the Board after a finding that applicant sufficiently demonstrated acquired distinctiveness.

On appeal, the CAFC affirmed the finding dismissing the likelihood of confusion and dilution claims, but remanded regarding the acquired distinctiveness claim based on an evidenciary decision.

As a preliminary matter, the Court found that the Board properly struck opposer’s annual reports submitted as testimony because they were not submitted in accordance with the Board’s rules and were not otherwise authenticated. Opposer argued that because its annual reports from 2001 to 2008 were available online, the Board should have accepted the printed versions of the reports. Regarding the likelihood of confusion claim, the Court agreed that while the marks are identical in sound and appearance they have different meanings and commercial impressions when applied to the respective goods. After weighing the DuPont factors, the Court agreed with the Board “that customer confusion is not likely between the parties’ respective COACH marks.”

Regarding the claim of dilution, the Court agreed that the dilution claim fails because oppose did not introduce sufficient evidence to demonstrate that its mark was famous for purposes of dilution prior to the filing of applicant’s application.

Regarding the Board’s finding that applicant’s use of COACH is descriptive but has acquired distinctiveness, the Court agreed that it is descriptive. But the Court found that the Board erred regarding the handling of evidence of Applicant’s documents showing use of its mark before July 2003, and remanded to the Board to “the weight, if any, to be given to pre-July 2003 documents 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.”