Under the TDRA, a mark is famous if it “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”
Coach Services, Inc. v. Triumph Learning LLC
Plaintiff filed an opposition to defendant's trademark registration for dilution of its "COACH" brand.
TTAB dismissed the opposition because it could not show that its COACH mark was famous and thus that it was eligible for dilution.
Was CSI's brand famous for dilution purposes?
The TDRA lists four non-exclusive factors for courts to consider when determining whether a mark is famous:
- The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
- The amount, volume, and geographic extent of sales of goods or services offered under the mark.
- The extent of actual recognition of the mark.
- Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
CSI argues that the Board disregarded:
- sales and advertising figures for years 2000–2008;
- its sixteen federal trademark registrations;
- unsolicited media attention;
- joint marketing efforts;
- two Second Circuit decisions finding the Coach hangtag, which features the COACH mark, to be famous; and
- CSI’s internal brand awareness survey showing awareness among 18–24 year old consumers.
- Plaintiff's annual reports were unauthenticated and thus inadmissible to show fame.
- Ownership of federally registered trademarks on the principal registry is not proof of fame. There are millions of trademarks on the principal registry.
- There admittedly is more media attention than the Board acknowledged, but much of it came after Triumph filed its registration. Also, much is merely comparing its products against other fashion products.
- While other popular brands have used the COACH mark in connection with their products, there is no evidence of how successful this advertising was for them, so they have little value here.
- The two previous decisions are irrelevant because only one involves a dilution claim and because both focus on the hangtag on CSI's bags, not the COACH mark generally.
- CSI's 2008 study did not offer first-hand knowledge of how the study was conducted and only applied to women ages 13–24, not the general public. It was reasonable to give it limited weight.
No, CSI's mark is not famous. Affirmed as to dilution.