Federal Circuit Clarifies the Fame Standard for Trade Dilution
By Sonal Mittal – Edited by Laura Fishwick
Coach Servs., Inc., v. Triumph Learning L.L.C., No. 2011-1129 (Fed. Cir. Feb. 21, 2012)
The Court of Appeals for the Federal Circuit affirmed-in-part the decision of the Trademark Trial and Appeal Board (“Board”), which had dismissed the notice of opposition filed by Coach Services, Inc. (“CSI”) opposing the registration of the COACH mark by Triumph Learning L.L.C. (“Triumph”). The Federal Circuit upheld the Board’s holding that CSI failed to prove that Triumph’s educational materials were likely to dilute CSI’s luxury travel brand. In so holding, the court provided an example of a level of fame that is insufficient to qualify for protection from brand dilution under the Lanham Act.
PatentlyO provides an overview of the case. TrademarkAttorneys praises the decision as a just response to major luxury label’s attempt to enforce a trademark without any legitimate economic need to do so. The TTABlog concurs that the case provides an interesting benchmark for the level of fame required to achieve trade dilution in the context of two disparate market sectors—luxury travel goods and educational services.
CSI is the maker of the popular “Coach”-branded handbags and wallets. CSI has used the mark COACH in connection with its luxury items since 1961 and held 15 trademark registrations of the mark before Triumph’s trademark applications were filed in December 2004. The company sells its products in its own retail stores and over the Internet. It conducts catalogue advertising and its products have been featured in numerous fashion magazines. Triumph publishes standardized test preparation materials including books and software. It has used the mark “COACH” in connection with its products since 1986. Triumph conducts nearly all of its business through formal channels. Following the passage of the No Child Left Behind Act in 2001, Triumph began using the mark with a cartoon and the slogan, “America’s best for student success. In March 2006, CSI filed a Notice of Opposition against all three of Triumph’s COACH mark registrations on grounds of dilution under 15 U.S.C. § 1125(c), among others.
Reviewing the Board’s factual conclusions of fame for substantial evidence, the Federal Circuit began by noting that for a claim of dilution to succeed, the mark must meet a stringent threshold requirement of fame. The court added that “this [was] particularly true where, as here, the mark is a common English word that has different meanings in different contexts.” Coach Servs., No. 2011-1129, at 29. To demonstrate the requisite level of fame, the mark must be “widely recognized by the general consuming public” such that when the public encounters the term in almost any context, it associates the term with the owner. 15 U.S.C. § 1125(c)(2)(A). The court determined that CSI failed to provide sufficient evidence that its mark was a “household name.” Id. at 29. In particular, it found that CSI’s substantial unsolicited media attention was a recognition of a substantial degree of success at best. Id. at 31–33. The court agreed with the Board that CSI’s brand awareness studies were too narrow to show widespread recognition, and CSI’s partnerships with other luxury brands were not demonstrated to have been successful in a manner that demonstrated the requisite level of fame. Id. at 33. Moreover, CSI’s existing trademarks were simply not proof of fame, id. at 31, and sales and advertising figures (included in inadmissible reports) were ultimately insufficient indicators of campaign success and any consequent fame, id. at 30.
Because CSI failed to meet the stringent fame standard, it could not qualify for protection on grounds of dilution. However, the court was careful “to emphasize the fact-specific nature of [their] holding,” and hold only that “on the record presented to it, the Board had substantial support” for finding that the evidence of CSI’s fame did not meet the high burden of proof. Id. at 34. This decision presents a fresh look at trade dilution cases for popular brand marks that are also common English words with multiple meanings. More importantly, it provides valuable precedent for assessing many different kinds of evidence used in arguments for fame as it pertains to trade dilution.
Sonal Mittal is a computer scientist by training. She is currently a 1L at the Harvard Law School.