Tuesday, February 21, 2012

Major CAFC trademark case: Coach v. Triumph

In the trademark case of Coach v. Triumph, the CAFC concluded:

For the foregoing reasons, and because we find that CSI’s remaining arguments are without merit, we affirm the Board’s decision dismissing CSI’s opposition on likeli- hood of confusion and dilution grounds. With respect to acquired distinctiveness, however, we vacate and remand for further proceedings consistent with this opinion.

The CAFC noted of an evidentiary issue about "printed publications":

The Trademark Rules of Practice, which govern inter partes trademark proceedings before the Board, provide, in part, that “printed publications” which are “available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding . . . may be introduced in evidence by filing a notice of reli- ance on the material being offered.” 37 C.F.R. § 2.122(e). Historically, corporate annual reports were not considered printed publications available to the general public and thus were not admissible via a notice of reliance without any authentication. See Jeanne-Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 U.S.P.Q. 58, 59, n.4 (T.T.A.B. 1984) (“It is well settled that annual reports do not fall within the category of printed publications as contemplated” under the Trademark Rules.); see also Midwest Plastic Fabricators Inc. v. Underwriters Labs. Inc., 12 U.S.P.Q.2d 1267, 1270 n.5 (T.T.A.B. 1989) (“[P]rinted material in the nature of annual reports is not considered printed publications available to the general public such that it may be relied on pursuant to Rule 2.122(e). Rather, such material must be introduced in connection with the deposition testimony of a competent witness.”); VTech Holdings Ltd. v. Varian Semiconductor Equip. Assocs., Inc., Opp. No. 91156936, 2007 TTAB LEXIS 245, at *11 (T.T.A.B. Sept. 21, 2007) (“Opposer’s corporate annual reports, newsletters and other house publications are not self-authenticating printed publications or official records and may not be made of record by notice of reli- ance. We sustain applicant’s objection to all such docu- ments and shall give them no consideration.”) (internal citations omitted).


In a 2010 decision, however, the Board expanded the types of documents that can be introduced by way of a notice of reliance. Safer Inc. v. OMS Investments Inc., 94 U.S.P.Q.2d 1031, 1039 (T.T.A.B. 2010). In Safer, the Board held that:
if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to a notice of reliance in the same manner as a printed publica- tion in general circulation in accordance with Trademark Rule 2.122(e). . . The Board will hence- forth deem a document obtained from the Internet displaying a date and its source as presumptively true and genuine. Of course, the document must be publicly available. The date and source infor- mation on the face of Internet documents allow the nonoffering party the opportunity to verify the documents. Id. (emphasis in original). In a footnote, the Board recog- nized that documents could be treated differently depend- ing on their format. For example, “a corporate annual report available only in paper form may not be admissible through a notice of reliance because it is not a document in general circulation,” while a report “in digital form publically available over the Internet would be admissible through a notice of reliance because its publication on the Internet places it in general circulation.” Id. at 1039 n.18.


On appeal, CSI argues that the Board should have considered the annual reports in light of the Safer deci- sion. According to CSI, because its annual reports from 2001 to 2008 were available online, the Board should have accepted the printed versions of the reports. In the alter- native, CSI argues that, if the court agrees with the Board that the paper versions of the annual reports are not admissible via a notice of reliance, but that “identical copies printed off the Internet are admissible, Coach submitted the testimony of its Vice President and General Counsel that Coach’s sales and advertising information is reported publicly because it is a public company.” Appellant’s Br. 29-30.


Despite CSI’s contentions to the contrary, we find that the Board’s decision to exclude the annual reports is consistent with both the Trademark Rules and the Board’s related case law.

As to the trademark issue:

The Board found that two of the DuPont factors weighed in favor of CSI, in whole or in part: (1) CSI’s COACH mark is famous for likelihood of confusion; and (2) the classes of consumers may overlap. In contrast, the Board found that the following factors weighed in favor of Triumph: (1) the goods of the parties are not similar or related; (2) the goods move in different trade channels; (3) the marks used by the parties have different meanings and engender different commercial impressions; and (4) Triumph markets to sophisticated purchasers.5 After balancing these factors, the Board determined that no likelihood of confusion would arise between the parties’ marks.

On appeal, CSI argues that the Board should have given more weight to its determination that its COACH mark was famous. As the Board correctly found, however, fame, while important, is insufficient standing alone to establish likelihood of confusion. On the record before us, and after weighing the relevant DuPont factors de novo, we agree with the Board that customer confusion is not likely between the parties’ respective COACH marks. Although CSI’s COACH mark is famous for likelihood of confusion purposes, the unrelated nature of the parties’ goods and their different channels of trade weigh heavily against CSI.


The TDRA, which was signed into law on October 6, 2006, amended Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). It provides that:

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 di- lution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competi- tion, or of actual economic injury.
15 U.S.C. § 1125(c)(1). Therefore, to prevail on a dilution claim under the TDRA, a plaintiff must show that: (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 dilu- tion by blurring or by tarnishment.


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