Coach thought it had Fame in the Bag, but Failed to Establish Dilution

Coach Services, Inc., v. Triumph Learning LLC, [2011-1129] (February 21, 2012) [O'MALLEY, Newman. Reyna] The Federal Circuit affirmed the TTAB 's dismissal of Coach Services' opposition to Triumph Learning's application to register COACH. The Federal Circuit remanded for further consideration of TRIUMPH's substantially exclusive and continuous use of its marks.
DISCUSSION: Triumph was seeking to register COACH for services relating to the preparation for standardized tests, while COACH, the make of designer goods sought to block the registration. The TTAB found that it weighed the DuPont factors and found there was no likelihood of confusion because the parties marks had different meaning and engender different commercial impressions and the goods involved. The Federal Circuit agreed. The Federal Circuit noted that the same marks can create different commercial impressions in connection with the goods on which they are used. The Federal Circuit agreed that applicant's use of COACH brought to mind different impression than Opposer's list. The Federal Circuit also agreed with the TTAB that the goods were unrelated. Finally the Federal Circuit agreed that the channels of trade and customers were different. The Federal Circuit also agreed with the TTAB that there was no dilution. finding that Opposer had not show sufficient fame of its COACH mark. However, the Federal Circuit found question of whether applicant's mark was merely descriptive, and remanded for further consideration of whether applicant had adequately shown secondary meaning.