The key issues before the US Court of Appeals for the Federal Circuit in Coach Services Inc. v. Triumph Learning LLC were whether:

In December 2004, Triumph Learning LLC (Triumph) filed use-based trademark applications for the mark COACH for educational software and publications.

In March 2006, Coach Services Inc. (CSI), commenced an opposition proceeding before the Trademark Trial and Appeal Board (TTAB) opposing registration of Triumph's COACH marks based on CSI's rights in its COACH mark for a variety of luxury goods, including handbags, luggage and clothing. CSI's principal grounds for opposition were likelihood of confusion under Section 2(d) of the Lanham Act and dilution under Section 43(c) of the Lanham Act. CSI later amended its notice of opposition to add a claim that COACH, as applied to Triumph's goods, was not entitled to registration because it was merely descriptive.

Following trial, the TTAB dismissed CSI's opposition, finding that CSI did not prove likelihood of confusion or dilution. CSI appealed the TTAB decision to the Federal Circuit.

In its decision, the Federal Circuit held that the TTAB's finding of no likelihood of confusion was supported by substantial evidence, even though CSI had established that its mark was famous for likelihood of confusion purposes. On CSI's dilution claim, the Federal Circuit agreed with the TTAB's finding that CSI failed to establish its COACH mark was famous for dilution purposes.

Applying the multi-factor likelihood of confusion test established in In re E.I. DuPont de Nemours & Co. (476 F.2d 1357 (C.C.P.A. 1973)), the Federal Circuit affirmed the TTAB's finding of no likelihood of confusion, noting in particular that the parties':

The Federal Circuit noted that a famous mark is entitled to a wide scope of protection and that CSI had shown its COACH mark to be famous for purposes of the likelihood of confusion analysis through the introduction of evidence of use and promotion of the mark but that the fame of the mark did not outweigh the other applicable DuPont factors which weighed against a likelihood of confusion. The court noted that a famous mark for likelihood of confusion is a mark that has extensive public recognition and renown. The court further noted that fame is a matter of degree, that fame alone is not sufficient to establish likelihood of confusion and that fame cannot overwhelm the other DuPont factors.

Turning to CSI's dilution claim, the court applied the non-exclusive factors set out in the Lanham Act and found that CSI failed to introduce sufficient evidence to show that it's COACH mark was famous for dilution. CSI argued that the evidence that established fame for likelihood of confusion also established fame for dilution. The Federal Circuit disagreed, considering in particular:

The court emphasized that the burden to show fame for dilution purposes is high and that showing that a mark is famous for likelihood of confusion purposes, as CSI had, does not automatically establish that a mark is famous for dilution purposes. The court noted that under the Lanham Act fame for dilution purposes requires a showing that a mark enjoys widespread recognition by the general public and that a famous mark is a mark that has become a "household name." Because CSI had not established that its COACH mark was famous for dilution purposes its dilution claim failed and the court did not need to address the likelihood of dilution by blurring factors.

The Federal Circuit found that the TTAB committed certain evidentiary errors in finding that Triumph's COACH mark, although descriptive, had acquired distinctiveness through secondary meaning entitling it to registration. The court vacated the TTAB's finding on that issue and remanded the case for further proceedings.

For more information on opposition and cancellation proceedings before the TTAB, see Practice Notes, TTAB Oppositions and Cancellations: Grounds and Defenses and TTAB Oppositions and Cancellations: Practice and Procedure.

This decision reminds trademark owners that the burden for proving that a mark is famous for purposes of dilution in a TTAB inter partes proceeding is high and more stringent than proving fame for likelihood of confusion. The decision also demonstrates that even where a mark is shown to be famous for likelihood of confusion purposes, its fame may not be sufficient to establish likelihood of confusion if other DuPont factors sufficiently weigh against a likelihood of confusion finding.