Federal Circuit tells COACH, You’re Not Famous Enough!

Earlier this year, the Federal Circuit found the COACH mark for famous American handbags to be not famous enough to oppose a similar mark that an educational testing preparation company sought to register. In trademark law, a trademark owner generally has to prove the likelihood of consumer confusion in order to successfully oppose another’s use or registration of a similar mark. This usually means that the two companies will be competing in the same line of business or in related markets. However, those whose marks are famous enough can stop another from registering a similar mark, even if they are not likely to confuse consumers or even run into each other in the marketplace. This is what Coach, the luxury handbag and accessories designer, attempted to do. It brought a dilution claim saying that those who saw the advertising of the Coach testing prep company might not confuse it with the company’s trademark COACH for handbags, but that the use by the testing company was likely to blur or tarnish (to “dilute”) the famous mark of Coach handbags.

To sustain a dilution claim, the mark holder must prove that its mark is widely recognized by the general public. However, when the mark is also a common word – as in this case, COACH – the mark holder must also demonstrate that the ordinary uses of the word “are now eclipsed by the owner’s use of the mark . . .  in almost any context” and that the mark has become “a household name.” Coach was unable to convince the Federal Circuit judges that it met this high standard of recognition.

What does it take to be deemed a “household name”? Coach presented the court with: (1) sales and advertising figures for the years 2000-2008; (2) its sixteen federal trademark registrations on the mark; (3) extensive unsolicited media attention referring to the mark; (4) joint marketing efforts for the mark; (5) two Second Circuit decisions finding the Coach hang-tag, which features the COACH mark, to be famous; and (6) a Coach internal brand awareness survey showing extensive awareness among 18-24 year old consumers. However, this was not sufficient enough to “overwhelm” the “ordinary” meaning of the word.

Some other famous fashion marks have made news this spring. Christian Louboutin’s famous red sole was not considered distinctive enough to permit the company to use trademark law to prevent others from marketing a red sole. Then Gucci claimed that Guess was becoming a threat with its use of the letter “G.” Imagine if a company became famous enough for its use of “G” that it could prevent all others from using that letter in their branding.

See Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012)