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Protection of Well-Known Trademark in The United States Viewed The Case Coach Services, Inc. v. Triumph Learning LLC Decided by The United States Court of Appeals for The Federal Circuit[1]

15

JUL

2020

Senior mark recognized

as well-known mark in the US

Junior mark[2]

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A brand name taken from the website of Coach: https://www.tapestry.com/coach/

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Serial number 78536143

filed on Dec. 21, 2004

Reg. 4219848 granted on October 9, 2012

Class 09: computer software for use in child and adult education, among other things

Class 16: Printed materials in the field of child and adult education, namely textbook, workbook, etc.

Applicant/registrant: Triumph Learning LLC Limited Liability Company

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Coach’s logo on their products

Source: https://en.wikipedia.org/wiki/Coach_New_York

Although recognized as a famous trademark, TTAB concluded that no likelihood of confusion between the senior marks and junior marks based on the du Pont 13-factors[3]

According to the record[4], Coach Service, Inc. (“CSI”) advertises and sells a wide variety of “accessible luxury” products, including handbags, luggage, clothing, watches, eye glasses, and wallets. It has been using the COACH mark in connection with its products since at least December 28, 19611. CSI owns sixteen incontestable trademark registrations for the COACH mark, all but one of which issued before the applications of Triumph Learning LLC Limited Liability Company (“Triumph”) were filed in December 2004.

In December 2004, Triumph filed use-based applications for three marks: a COACH word mark, a stylized COACH mark, and a COACH mark and design, covering computer software and printed materials for the purpose of child and adult education in classes 09 and 16 respectively, all of which were published for opposition on September 20, 2005 (“COACH marks”). CSI lodged an opposition no. 91170112 with the USPTO’s Trademark Trial and Appeal Board (“TTAB”) against the COACH marks based on multiple legal grounds, namely, likelihood of confusion under Section 2(d), dilution under Section 43(c), and applicant’s marks are merely descriptive under Section 2(e)(1) of the Trademark Dilution Revision Act of 2006 (“TDRA")[5]

Referring to the du Pont factors, the TTAB confirmed that it is required to consider the fame of the opposer’s mark. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Among a lot of evidences submitted by the opposer, it is recognized, amongst other things, that the senior mark began using the Coach mark at least as early as December 28, 1961, 400 Coach retail stores throughout all 50 states, in 2008 alone, the opposer annual sales reached approximately $3.5 billion, the opposer spent about 30 to $60 million in the year of 2008 on advertising, such as, in the fashion magazines and regional magazines such as Elle, Vogue, Mademoiselle, New Yorker, New York Magazine, Cosmopolitan, and Vanity Fair, as well as the opposer’s marks Coach have received unsolicited publicity in numerous newspapers and magazines discussing fashion trends.

Based on the record, the TTAB concluded that the opposer’s Coach mark is famous for the purposes of likelihood of confusion. However, invoking two precedents[6], the TTAB assumed that even well-known, this factor is not sufficient to establish likelihood of confusion

However, the TTAB dismissed the opposition[7], finding that: (1) there was no likelihood of confusion between the parties' COACH marks; (2) CSI failed to prove likelihood of dilution; and (3) although Triumph's marks are merely descriptive, they have acquired secondary meaning, and thus are entitled to registration.

In comparing the similarity, dissimilarity and the nature of the goods bearing the senior mark and junior mark, the TTAB found that the goods are not related and that the channels of trade are distinct and came to the conclusion that the applicant’s use of its COACH marks for “educational materials for preparing for standardized tests” is not likely to cause confusion with opposer’s COACH marks for handbags and opposer’s wide variety of consumer fashion products and accessoriesnotwithstanding the facts that opposer’s mark is famous and that the classes of consumers may overlap, because the goods of the parties are not similar or related in any way, because the goods move in different channels of trade, and because the marks, as used by the parties, have different meanings and engender different commercial impressions

Neither dilution by blurring nor dilution by tarnishment in favor of the Opposer due to no substantial evidences in support of the claim for dilution of famous mark

In addition to its likehood-of-confusion claim above, the opposer contends that applicant’s marks will either “blur” the distinctiveness of opposer’s COACH mark or tarnish the reputation of opposer’s COACH mark. According to the Trademark Act, "dilution by blurring" is association rising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark while “dilution by tarnishment” is an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

To win a dilution claim, the opposer’s evidences as submitted must be considered three factors: (1) whether opposer’s COACH mark is famous, (2) whether opposer’s COACH mark became famous prior to applicant’s use of its COACH marks, and (3) whether applicant’s COACH mark is likely to cause dilution by blurring the distinctiveness of opposer’s COACH mark or by tarnishing the reputation of opposer’s COACH mark.

The TTAB asserted that fame for likelihood of confusion and dilution is not the same, thus it is required to determine whether COACH is famous in the context of a dilution claim or not. Particularly, likelihood of confusion fame “varies along a spectrum from very strong to very weak” while dilution fame is an either/or proposition – it either exists or it does not exist[8].

In determining the opposer’s evidence regarding fame, the TTAB assumed that these evidences are not sufficient to show that opposer’s mark is famous for purposes of dilution because they have not met the stringent requirements of proving fame for purposes of dilution, ie. the opposer’s evidence of fame falls far short of the quantum and quality of evidence[9]. For example, the opposer’s brand awareness study is doubted in terms of probative value since the TTAB found that the opposer did not proffer a witness with first-hand knowledge of the study to explain how the study was conducted and the significance of the study. Or the study showed a high level of brand awareness in women ages 13-24 but provided no evidence of about the brand awareness among women in general or men. The TTAB added that the vast majority of unsolicited media recognition for opposer’s COACH mark comprises a reference to one of opposer’s products as one of many different fashion buys or trends, and the news articles noting opposer’s renown are too few to support a finding that opposer’s mark has been transformed into a household name

Another important legal issue that the opposer has the burden of proof is that he must prove that his Coach mark became famous prior to any proven first use of Coach by the applicant, or if none is proven, then at least prior to the filing date of the applications or by December 20 and 21, 2004. In conclusion, the TTAB found that the opposer failed to meet its burden of proving that its COACH mark became famous prior to applicant’s first use of its COACH marks

Only when being widely recognized by the general consuming public, a mark can be determined as a well-known mark in the US

Due to the appeal by CSI, the Federal Circuit heard the case and found that the TTAB was correct in saying that 2 of the 13 du Pont factors favoring the opposer, in particular, the COACH mark is the famous trademark for the purposes of confusingly similar test and the targeted clients may be overlapped. But, in contrast, the TTAB also found that the factors in support of the applicant such as the goods bearing the marks at dispute are unrelated or dissimilar; they are moved in different channels, the marks used by different parties have different meang and also commercial impressions are conveyed differently, and the applicant's target market towards knowledgeable customers.

As far as the dilution claim is concerned, the Trademark Dilution Revision Act of 2006 (TDRA) amended Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c) stipulates “the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury”.

To prevail a dilution claim, plaintiff must satisfy all 4 factors: (1) it owns a famous mark that is distinctive; (2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff's famous mark; (3) the defendant's use of its mark began after the plaintiff's mark became famous; and (4) the defendant's use of its mark is likely to cause dilution by blurring or by tarnishment.

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[10]. By using the “general consuming public” as the benchmark, the TDRA eliminated the possibility of “niche fame,” which some courts had recognized under the previous version of the statute.

According to the TDRA, four non-exclusive factors for courts to consider when determining whether a mark is famous:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

Kindy note that in order to be able to apply TDRA, the requirements for evidence are very stringent. The Federal Circuit found that COACH obtained the public recognition at high level through the media but most of the evidence submitted by it came after the applicant's COACH trademarks were filed, so the TTAB was right when deciding to reject the opposition on both of likelihood of confusion and dilution made by CSI. The COACH case is a clear demonstration that TDRA is interpreted and applied by the court in a way that is too narrow, meaning that the protection of a well-known trademark in the US against any dilution by blurring or dilution by tarnishment would only apply to very famous trademarks in the United States, whose knowledge or recognition must be reached the so-called threshold the “general consuming public” or “public at large” or "household name"[11].

Does the US violate the TRIPs Agreement while it grants no protection of famous trademark with mere niche fame?

According to both of the Paris Convention and TRIPs Agreement, to which the US is a member, in determing whether a mark is well-known or not members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark. Such provisions allow us to infer that each member is obliged to recognize and protect a potential mark as a well-known trademark, of which scope of protection may extend to dissimilar goods or services, even though such mark has been merely widely recognized by the relevant sector of public but not by the public at large. The benchmark of the “general consuming public” mentioned above by the Federal Circuit, which is similar to the TTAB’s finding that “the transformation of a term into a truly famous mark means that the mark must be a household name”, resembles in nature the public at large. Therefore, it seems that the United States is violating its obligations imposed by the TRIPs Agreement and recommended by the WIPO Joint Recommendation concerning provisions of the protection of well-known marks[12].

An interesting point that we can view from this case is that the findings by both the TTAB and the Federal Circuit seemingly made consistently, ie. both assumed that fame for likelihood of confusion and fame for dilution are distinctive concepts wherein the Federal Circuit added that dilution fame requires a more stringent showing.


[1] The article uses and/or extracts some contents from a 190-page research report under the “Project on protection of well-known trademark under Vietnamese law - Situation and Solution" co-authored by attorney Le Quang Vinh (a registered IP practitioner of Bross & Partners) and Dr. Phan Ngoc Tam (Ho Chi Minh City’s University of Law) sponsored by the INTA and Ministry of Science and Technology that was officially announced on November 17, 2017 in Hanoi and then published into a book by the Technical and Scientific Publishing House in 2017. For more information, please see our news update titledYou are cordially invited to refer to a published study report on the protection of well-known trademark in Vietnam funded by the INTA and MoST” at the link: http://bross.vn/newsletter/ip-news-update/You-are-cordially-invited-to-refer-to-a-published-study-report--on-the-protection-of-wellknown-trademark-in-Vietnam-funded-by-the-INTA-and-MoST-1678

[2] This junior mark is only one of the three junior marks subject to the dispute. The other two marks are the word marks Coach (standard character) under serial numbers 78536065 and 78535642 filed on December 21, 2004 and December 20, 2004 registered on October 9, 2012 under Reg. 4219847 and 4219846 respectively. At present, only one registered junior mark Coach (standard character) under Reg. 4219846 is valid according to the Trademark Electric Search System (TESS) whose link may be found at: http://tess2.uspto.gov/bin/gate.exe?f=doc&state=4804:6o73re.3.3

[3] See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). According to this the precedent, 13 factors must be determined when assessing a likelihood of confusion consist of:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark).

(10) The market interface between applicant and the owner of a prior mark. . . .

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.

[4] See the Federal Circuit’s decision in the Coach Services, Inc. v. Triumph Learning LLC, No. 11-1129 (Fed. Cir. Feb. 21, 2012) at the link:

https://caselaw.findlaw.com/us-federal-circuit/1595017.html.

[5] The Trademark Dilution Revision Act of 2006 (the “TDRA") was signed by President Bush and immediately became effective. The TDRA amended and replaced the Federal Trademark Dilution Act (“FTDA”), which was enacted in 1996. See: https://www.thefashionlaw.com/learn/trademark-dilution-revision-act

[6] In re “University of Notre Dame du Lac v. J. C. Gourmet Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983), the court said that “the fame of the [plaintiff’s] name is insufficient in and of itself to establish likelihood of confusion under §2(d). “Likely***to cause confusion” means more than the likelihood that the public will recall a famous mark on seeing the same mark used by another. It must also be established that there is a reasonable basis for the public to attribute the particular product or service of another to the source of the goods or services associated with the famous mark. To hold otherwise would result in recognizing a right in gross, which is contrary to the principles of trademark law and to concepts embodied in 15 USC § 1052(d)”. Or in Re Recot Inc. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000), the court confirmed that “fame alone cannot overwhelm the other du Pont factors as a matter of law

[7] See the TTAB, Opposition No. 91170112 at the link: http://ttabvue.uspto.gov/ttabvue/ttabvue-91170112-OPP-229.pdf

[8] See more In Re Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77

USPQ2d 1492, 1507 (TTAB 2005)

[9] See in re NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 2003)

[10] 15 U.S.C. § 1125(c)(2)(A) or see: https://www.bitlaw.com/source/15usc/1125.html

[11] See: Marcus H. H. Luepke, Taking Unfair Advantage or Diluting a Famous Mark —

A 20/20 Perspective on the Blurred Differences Between U.S. and E.U. Dilution Law, The Trademark Reporter, Vol. 98, May-June 2008, trang 797, 810, 822

[12] The WIPO Joint Recommendation concerning provisions of the protection of well-known marks inpractice was no longer a “joint recommendation” because it was included in Clause 3 Article 18.22 of the CPTPP. See: https://www.international.gc.ca/trade-commerce/trade-agreements-accords-commerciaux/agr-acc/tpp-ptp/text-texte/18.aspx?lang=eng

With the Trump administration’s sudden withdrawal from the Trans-pacific Parnership Agreement (TPP), the massive trade deal amongst 12 nations including the United States, TPP was renamed as the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP or TPP-11). See more “Trump’s TPP withdrawal: 5 things to know” posted by CNN: https://edition.cnn.com/2017/01/23/politics/trump-tpp-things-to-know/index.html

CPTPP that was effective is a free trade agreement among Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore and Vietnam. The precursor of the CPTPP was the Trans-Pacific Partnership Agreement (TPP) consisting of 12 member states (the US out of the deal). The CPTPP took effect from December 30, 2018 after the ratification of the sixth country – Australia followed New Zealand, Canada, Japan, Mexico and Singapore. The CPTPP consists of 11 countries with a total GDP value of about $ 10,000 billion, occupying about 13% of global GDP. On November 12, 2018, the Vietnamese National Assembly ratified the CPTPP, making Vietnam the seventh country to ratify CPTPP. Based on Notice No. LGL/CPTPPD/2018-15 by New Zealand, the CPTPP officially took effect for Vietnam from January 14, 2019. See more: http://bross.vn/newsletter/ip-news-update/THE-COMPREHENSIVE-AND-PROGRESSIVE-AGREEMENT-FOR-TRANSPACIFIC-PARTNERSHIP-CPTPP-COME-INTO-EFFECT-LEADING-TO-SIGNIFICANT-LEGAL-CHANGES-REGARDING-INTELLECTUAL-PROPERTY-LANDSCAPE-IN-VIETNAM

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Address 21st Floor, Charm Vit Tower, 117 Tran Duy Hung Str., Cau Giay, Hanoi, Vietnam.
Tel 84-24-3555 3466
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