throbber
THIS OPINION IS A
`PRECEDENT OF THE T.T.A.B.
`
`
`Hearing:
`February 17, 2010
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`Mailed:
`September 17, 2010
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`
`
`
`
`Coach Services, Inc.
`v.
`Triumph Learning LLC
`_____
`
` Opposition No. 91170112
`to Application Serial No. 78535642
`filed on December 20, 2004
`
`and to Application Serial No. 78536065
`and Application Serial No. 78536143
`filed on December 21, 2004
`_____
`
`Norman H. Zivin of Cooper & Dunham LLP for Coach Services,
`Inc.
`
`R. David Hosp and Robert M. O’Connell, Jr. of Goodwin
`Procter LLP for Triumph Learning LLC.
`______
`
`Before Holtzman, Walsh and Bergsman,
`Administrative Trademark Judges.
`
`Opinion by Bergsman, Administrative Trademark Judge:
`
`Triumph Learning LLC (“applicant”) filed use-based
`
`
`
`applications for the mark COACH, in standard character form
`
`(Serial No. 78535642), Coach, shown below (Serial No.
`
`78536065),
`
`
`
`

`
`Opposition No. 91170112
`
`
`
`and COACH and design, shown below (Serial No. 78536143),
`
`(applicant’s marks are hereinafter referred to as “COACH”)
`
`
`
`all for the following goods:
`
`Computer software for use in child and
`adult education, namely, software to
`assist teachers and students at all
`levels in mastering standards-based
`curricula and in preparing for
`standardized exams; prerecorded audio
`and video tapes in the field of child
`and adult education, featuring materials
`to assist teachers and students at all
`levels in mastering standards-based
`curricula and in preparing for
`standardized exams, in Class 9; and,
`
`Printed materials in the field of child
`and adult education, namely, textbooks,
`workbooks, teacher guides and manuals,
`posters and flashcards, all featuring
`materials to assist teachers and
`students at all levels in mastering
`standards-based curricula and in
`preparing for standardized exams, in
`Class 16.
`
`(hereinafter “educational materials for preparing for
`
`standardized tests”).
`
`Coach Services, Inc. (“opposer”) opposed the
`
`registration of applicant’s marks on the ground of priority
`
`of use and likelihood of confusion under Section 2(d) of the
`
`2
`
`

`
`Opposition No. 91170112
`
`Trademark Act of 1946, 15 U.S.C. §1052(d), dilution under
`
`Section 43(c) of the Trademark Act of 1946, 15 U.S.C.
`
`§ 1125(c), and that applicant’s marks are merely descriptive
`
`under Section 2(e)(1) of the Trademark Act of 1946, 15
`
`U.S.C. §1052(e)(1).
`
`Applicant denied the salient allegations in the notice
`
`of opposition.
`
`Evidentiary Issues
`
`A. Opposer’s objection to the testimony of Jane Fisher.
`
`Applicant proffered the testimony of Jane Fisher,
`
`applicant’s Vice President of Marketing, to authenticate
`
`catalogs, brochures and other advertising materials
`
`distributed by applicant since at least as early as 1990.
`
`However, because Ms. Fisher only has worked for applicant
`
`since July 2003, opposer objected to Ms. Fisher’s testimony
`
`regarding any matters other than the identification of
`
`business records prior to July 2003 on the ground that she
`
`lacks personal knowledge about applicant’s business prior to
`
`that date. Opposer’s objection is sustained to the extent
`
`that we will consider Ms. Fisher’s testimony regarding
`
`matters prior to July 2003 only for purposes of
`
`authenticating documents kept by applicant in the ordinary
`
`course of business. See Fed. R. Evid. 803(6).
`
`3
`
`

`
`Opposition No. 91170112
`
`B. Applicant’s objection to opposer’s notice of reliance.
`
`
`
`Opposer proffered seven of its annual reports (Exhibits
`
`206-212) in its first notice of reliance pursuant to
`
`Trademark Rule 2.122(e) pertaining to printed publications
`
`and official records. Applicant objected to the
`
`introduction of opposer’s annual reports on the ground that
`
`annual reports may not be introduced through a notice of
`
`reliance, but must be introduced and authenticated by
`
`competent testimony.1
`
`
`
`Trademark Rule 2.122(e) provides, so far as pertinent,
`
`that “[p]rinted publications, such as books and periodicals,
`
`available to the general public in libraries or of general
`
`circulation among member 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
`
`reliance on the material being offered.” In this regard,
`
`corporate annual reports are not considered to be printed
`
`publications available to the general public.2 Midwest
`
`Plastic Fabricators v. Underwriters Laboratories, 12 USPQ2d
`
`1267, 1270 n.5 (TTAB 1989), aff’d, 906 F.2d 1568, 15 USPQ2d
`
`1359 (Fed. Cir. 1990); Jeanne-Marc, Inc. v. Cluett, Peabody
`
`& Co., Inc., 221 USPQ 58, 59 n.4 (TTAB 1984); Andrea Radio
`
`
`1 Applicant’s brief, p. 27.
`2 Because the annual reports were not printed from the Internet,
`they may not be admitted into evidence pursuant to a notice of
`reliance. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031,
`1039 n.18 (TTAB 2010).
`
`4
`
`

`
`Opposition No. 91170112
`
`Corp. v. Premium Import Co., Inc., 191 USPQ 232, 234 (TTAB
`
`1976).
`
`
`
`To the extent opposer responded to applicant’s
`
`objection, opposer noted that Carole Sadler, opposer’s
`
`former Vice President, General Counsel, and Secretary,
`
`testified that opposer’s revenues were published in its
`
`annual reports. However, Ms. Sadler did not authenticate
`
`the annual reports attached to opposer’s notice of reliance.
`
`In view of the foregoing, applicant’s objection is
`
`sustained and we give opposer’s annual reports no
`
`consideration.
`
`
`
`We also note that as part of its first notice of
`
`reliance, opposer introduced numerous catalogs (Exhibits 1-
`
`42). Catalogs are not considered to be printed materials in
`
`general circulation within the meaning of Rule 2.122(e).
`
`Hiraga v. Arena, 90 USPQ2d 1102, 1104-1105 (TTAB 2009);
`
`Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017,
`
`2020 (TTAB 2003). While our general practice is not to
`
`consider evidence that has not been properly made of record,
`
`because we want to decide this case on the merits and
`
`because applicant did not object to the catalogs, we
`
`exercise our discretion in this case to treat the catalogs
`
`as having been stipulated into the record for whatever
`
`probative value they may have. See Autac Inc. v. Viking
`
`Industries, Inc., 199 USPQ 367, 369 n.2 (TTAB 1978).
`
`5
`
`

`
`Opposition No. 91170112
`
`The Record
`
`By rule, the record includes applicant’s application
`
`file and the pleadings. Trademark Rule 2.122(b), 37 CFR
`
`§2.122(b). In addition, the parties introduced the
`
`following testimony and evidence:
`
`A. Opposer’s evidence.
`
`1.
`
`Testimony deposition of Carole P. Sadler, the
`
`former Vice President, General Counsel, and Secretary of
`
`Coach, Inc., with attached exhibits.
`
`2.
`
`Opposer’s first notice of reliance comprising the
`
`following items:
`
`a.
`
`Opposer’s catalogs (Exhibits 1-42);
`
`b.
`
`Advertisements appearing in newspapers and
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`magazines (Exhibits 43-205);
`
`c.
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`Books published by opposer (Exhibits
`
`213-215);
`
`d.
`
`A chapter in a marketing textbook featuring a
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`case study on opposer (Exhibit 216);
`
`e.
`
`Opposer’s COACH registrations (Exhibits
`
`217-234) printed from the electronic database
`
`of the U.S. Patent and Trademark Office
`
`showing the current status of and title to
`
`the registrations, including but not limited
`
`6
`
`

`
`Opposition No. 91170112
`
`to the following registrations for the mark
`
`COACH in typed drawing form:3
`
`1.
`
`Registration No. 0751493 for “leather
`
`goods, namely, utility kits, portfolios,
`
`key cases, comb cases, pass cases, money
`
`clips, billfolds, wallets, pocket
`
`secretaries, stud cases, jewel cases,
`
`and leather book covers,” in
`
`International Class 14;
`
`2.
`
`Registration No. 1071000 for “women’s
`
`handbags and carry-on luggage,” in
`
`International Class 18, and “men’s and
`
`women’s belts,” in International Class
`
`25; and
`
`3.
`
`Registration No. 2088706 for, inter
`
`alia, “eyeglass cases, cellular phone
`
`cases, computer cases and computer
`
`accessory cases,” in International Class
`
`
`3 Opposer’s registrations have not been properly made of record.
`Copies of registrations printed from the electronic records of
`the U.S. Patent and Trademark Office may be made of record
`pursuant to Trademark Rule 2.122(d) in proceedings commenced on
`or after August 31, 2007. See Research In Motion Limited v. NBOR
`Corporation, 92 USPQ2d 1926, 1928 (TTAB 2009); Miscellaneous
`Changes to Trademark Trial and Appeal Board Rules, 72 Fed.Reg.
`42,242 (Aug. 1, 2007). The notice of opposition in this
`proceeding was filed on March 20, 2006. However, applicant has
`not lodged an objection to the introduction of opposer’s
`registrations and, in fact, noted the registrations as part of
`opposer’s record in its brief. (Applicant’s Brief, p. 1). In
`view thereof, we consider opposer’s registrations to have been
`stipulated into the record.
`
`7
`
`

`
`Opposition No. 91170112
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`9, and “desk pads, desk file trays, memo
`
`boxes, pencil cups, business card
`
`holders, paperweights, planning diaries,
`
`daily business planners, checkbook
`
`covers,” in International Class 16;
`
`f.
`
`Discovery deposition of Jane Fisher (Exhibit
`
`235), applicant’s Vice President of
`
`Marketing, with attached exhibits; and
`
`g.
`
`Applicant’s responses to opposer’s
`
`interrogatories; and
`
`3.
`
`Opposer’s second notice of reliance on newspaper
`
`and magazine articles referencing opposer (Exhibits 237-446)
`
`pursuant to Trademark Rule 2.122(e).
`
`
`
`4.
`
`Opposer’s third notice of reliance on excerpts
`
`from websites promoting the sale of books and software
`
`incorporating the word “coach” in the title (Exhibits 447-
`
`490) pursuant to Trademark Rule 2.122(e).4
`
`B. Applicant’s evidence.
`
`1.
`
`Testimony deposition of Jane Fisher, with attached
`
`exhibits.
`
`2.
`
`Notice of reliance on the following items:
`
`
`4 Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
`2010) (documents obtained from internet may be admitted into
`evidence in inter partes proceeding pursuant to notice of
`reliance in same manner as printed publications in general
`circulation, in accordance with Rule 2.122(e), provided the
`documents identify date of publication or date accessed and
`printed, as well as its source (e.g., the URL)).
`
`8
`
`

`
`Opposition No. 91170112
`
`a.
`
`Excerpts from the discovery deposition of
`
`Carole P. Sadler, with attached exhibits;
`
`b.
`
`Opposer’s responses to designated requests
`
`for admission;
`
`c.
`
`Opposer’s responses to designated
`
`interrogatories; and,
`
`d.
`
`Twenty-five third-party registrations for
`
`marks that include the word “Coach.”
`
`Standing
`
`Because opposer’s registrations are of record, opposer
`
`has established its standing. Cunningham v. Laser Golf
`
`Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000);
`
`Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
`
`1024, 213 USPQ 185, 189 (CCPA 1982).
`
`Applicant argues that opposer does not have standing to
`
`prosecute the opposition on the ground of descriptiveness
`
`because opposer does not assert the right or a potential
`
`need to use the word “Coach” descriptively. Specifically,
`
`applicant contends that “standing is specific to each
`
`individual claim asserted, and must be demonstrated for
`
`each.”5 Applicant relies on statements by the U.S. Supreme
`
`Court in the Int’l Primate Protection League case:
`
`Standing does not refer simply to a
`party’s capacity to appear in court.
`Rather, standing is gauged by the
`specific common-law, statutory or
`
`5 Applicant’s Brief, p. 12.
`
`9
`
`

`
`Opposition No. 91170112
`
`constitutional claims the party presents
`… ‘[t]ypically … the standing inquiry
`requires careful judicial examination of
`a complaint’s allegations to ascertain
`whether the particular plaintiff is
`entitled to an adjudication of the
`particular claims asserted.”
`
`Int’l Primate Protection League v. Tulane Ed. Fund, 500 U.S.
`
`72, 77 (1990) (emphasis in the original). Thus, applicant
`
`concludes that just because opposer has standing to
`
`prosecute the opposition on the ground of priority of use
`
`and likelihood of confusion and dilution, it does not
`
`necessarily have standing to prosecute the opposition on the
`
`ground that applicant’s mark is merely descriptive.
`
`
`
`The statutory basis for an opposition is Section 13(a)
`
`of the Trademark Act of 1946, 15 U.S.C. §1063(a), which
`
`provides that “[a]ny person who believes that he would be
`
`damaged by the registration of a mark upon the principal
`
`register … may … file an opposition in the Patent and
`
`Trademark Office, stating the grounds therefor.” In
`
`applying International Primate Protection League to an
`
`opposition, the claim is applicant’s right to register its
`
`mark.
`
`A party has standing to oppose the registration of a
`
`mark if it has a real interest in the proceeding: in other
`
`words, whether the plaintiff has a direct and personal stake
`
`in the outcome of the proceeding (i.e., preventing the
`
`registration of applicant’s mark). This prevents litigation
`
`10
`
`

`
`Opposition No. 91170112
`
`where there is no real controversy between the parties.
`
`Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
`
`1024, 213 USPQ 185, 189 (CCPA 1982); see also Ritchie v.
`
`Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
`
`1999). “The requirement of standing ‘focuses on the party
`
`seeking to get his complaint before a federal court and not
`
`in the issues he wishes to have adjudicated.’” Morrow v.
`
`Microsoft Corp., 499 F.3d 1332, 84 USPQ2d 1377, 1382 (Fed.
`
`Cir. 2007), quoting Valley Forge Christian College v.
`
`Americans United for Separation of Church and State, 454
`
`U.S. 464, 484 (1982). Thus, “[o]nce standing is
`
`established, the opposer is entitled to rely on any of the
`
`grounds set forth in Section 2 of the Lanham Act which
`
`negate applicant’s right to its subject registration.”
`
`Jewelers Vigilance v. Ullenberg Corp., 823 F.2d 490, 2
`
`USPQ2d 2021, 2023 (Fed. Cir. 1987); see also Young v. AGB
`
`Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998);
`
`Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ at
`
`190.6
`
`With respect to applicant’s argument that opposer may
`
`have standing to raise the issue of likelihood of confusion
`
`
`6 Cases have also permitted oppositions based on statutory
`grounds other than those enumerated in Section 2. See, e.g.,
`Community of Roquefort v. Santo, 443 F.2d 1196, 170 USPQ 205
`(CCPA 1971) (applicant failed to use its mark in commerce in
`violation of Section 1 of the Trademark Act); Universal Overall
`Co. v. Stonecutter Mills Corp., 379 F.2d 983, 154 USPQ 104 (CCPA
`1967) (fraud).
`
`11
`
`

`
`Opposition No. 91170112
`
`and dilution, but not descriptiveness, we note that standing
`
`and grounds may be related, but they are distinct inquiries.
`
`Jewelers Vigilance v. Ullenberg Corp., 2 USPQ2d at 2024.
`
`This case is unusual because opposer is not only asserting
`
`likelihood of confusion and dilution, but also that
`
`applicant’s mark is merely descriptive without asserting
`
`that opposer has the right to use the mark descriptively.
`
`Nevertheless, there is no question that opposer has
`
`established a real interest in preventing the registration
`
`of applicant’s mark and, therefore, pursuant to Jewelers
`
`Vigilance, Young v. AGB, and Lipton, opposer may object to
`
`the registration of applicant’s mark as being merely
`
`descriptive even if opposer does not claim the right to use
`
`the mark descriptively.
`
`Priority
`
`Because opposer’s pleaded registrations are of record,
`
`Section 2(d) priority is not an issue in this case as to the
`
`mark and the products covered by the registrations. King
`
`Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
`
`USPQ 108, 110 (CCPA 1974).
`
`Likelihood of Confusion
`
`Our determination under Section 2(d) is based on an
`
`analysis of all of the probative facts in evidence that are
`
`relevant to the factors bearing on the issue of likelihood
`
`of confusion. In re E I. du Pont de Nemours & Co.,
`
`12
`
`

`
`Opposition No. 91170112
`
`476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In
`
`re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
`
`USPQ2d 1201, 1203 (Fed. Cir. 2003).
`
`A. The fame of opposer’s marks.
`
`This du Pont factor requires us to consider the fame of
`
`
`
`opposer’s mark. Fame, if it exists, plays a dominant role
`
`in the likelihood of confusion analysis because famous marks
`
`enjoy a broad scope of protection or exclusivity of use. A
`
`famous mark has extensive public recognition and renown.
`
`Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
`
`USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
`
`Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
`
`2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
`
`Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
`
`
`
`Fame may be measured indirectly by the volume of sales
`
`and advertising expenditures of the goods and services
`
`identified by the marks at issue, “by the length of time
`
`those indicia of commercial awareness have been evident,”
`
`widespread critical assessments and through notice by
`
`independent sources of the products identified by the marks,
`
`as well as the general reputation of the products and
`
`services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
`
`at 1305-1306 and 1309. Although raw numbers of product
`
`sales and advertising expenses may have sufficed in certain
`
`circumstances to prove fame of a mark, raw numbers alone may
`
`13
`
`

`
`Opposition No. 91170112
`
`be misleading. The context surrounding the raw statistics
`
`may be necessary (e.g., the substantiality of the sales or
`
`advertising figures as compared to those providing
`
`comparable products or services). Bose Corp. v. QSC Audio
`
`Products Inc., 63 USPQ2d at 1309.
`
`
`
`Finally, because of the extreme deference that we
`
`accord a famous mark in terms of the wide latitude of legal
`
`protection it receives, and the dominant role fame plays in
`
`the likelihood of confusion analysis, it is the duty of the
`
`party asserting that its mark is famous to clearly prove it.
`
`Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
`
`1901, 1904 (TTAB 2007).
`
`Opposer introduced evidence of the following to
`
`establish the fame of its mark:
`
`1.
`
`Opposer began using the COACH mark at least as
`
`early as December 28, 1961;7
`
`
`7 Registration No. 0751493 (Opposer’s first notice of reliance,
`Exhibit 217). The application maturing into Registration No.
`0751493 was filed on December 28, 1961. J.C. Hall Co. v.
`Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965)
`(“The presumption of use emanating from the fact of registration
`relates back to the filing date of the application on which the
`registration is predicated”); Brewski Beer Co. v. Brewski Bros.
`Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (plaintiff may rely on its
`pleaded registration to prove its mark was in use as of the
`filing date of the application); see also Trademark Rule
`2.122(b)(2) (the date of use in a registration is not evidence on
`behalf of the registrant; “a date of use must be established by
`competent evidence”). Opposer contends that it has been using
`the COACH mark since 1957 relying on its answer to interrogatory
`No. 10 (Sadler Testimony Dep., Exhibit 450) and an excerpt from
`Coach 60 Years of American Style (Sadler Testimony Dep., Exhibit
`457). Opposer may not rely on its own answer to an interrogatory
`except under specific circumstances not present in this case.
`
`14
`
`

`
`Opposition No. 91170112
`
`2.
`
`There are approximately 400 COACH retail stores
`
`throughout all 50 states;8
`
`3.
`
`Opposer’s COACH products are also sold by
`
`approximately 1,000 third-party retailers throughout the
`
`United States;9
`
`4.
`
`In 2008, opposer’s annual sales were approximately
`
`three-and-a-half billion dollars;10
`
`5.
`
`In 2008, opposer spent “about 30 to $60 million a
`
`year” on advertising;11
`
`6.
`
`Opposer has advertised in fashion magazines and
`
`regional magazines such as Elle, Vogue, Mademoiselle, New
`
`Yorker, New York Magazine, Cosmopolitan, and Vanity Fair;12
`
`
`
`7.
`
`Opposer has advertised in newspapers in major
`
`metropolitan areas, such as the New York Times, New York
`
`
`Trademark Rule 2.120(j). Exhibit 457 does not show a date of use
`earlier than December 1961. In any event, the difference between
`1957 and 1961 did not affect our decision.
`8 Sadler Testimony Dep., p. 27.
`9 Sadler Testimony Dep., pp. 20-21.
`10 Sadler Testimony Dep., p. 24. Ms. Sadler did not specify
`whether her testimony referred to sales limited to the United
`States or to worldwide sales.
`11 Sadler Testimony Dep., p. 23. Ms. Sadler did not specify
`whether her testimony referred to advertising expenditures
`limited to the United States or to worldwide advertising. Also,
`Ms. Sadler testified that, “[i]f you include design and
`promotional expenditures with advertising, it is closer to 125
`million.” (Sadler Testimony Dep., p. 23). However, Ms. Sadler
`did not explain what she meant by “design and promotional
`expenditures” vis-à-vis “advertising” expenditures.
`12 Sadler Discovery Dep., p. 67; Opposer’s first notice of
`reliance, Exhibits 119-204; Sadler Testimony Dep., Ex. 453.
`
`15
`
`

`
`Opposition No. 91170112
`
`Post, Chicago Tribune, and Boston Globe, as well as in
`
`smaller cities;13
`
`
`
`8.
`
`Opposer’s COACH products have received unsolicited
`
`publicity in numerous newspapers and magazines discussing
`
`fashion trends;14
`
`
`
`9.
`
`Opposer has been the subject of newspaper and
`
`magazine articles which refer to the renown of opposer and
`
`its products.15 The following excerpts are representative
`
`of the publicity opposer has received:
`
`New York Times (July 27, 1999)-
`
`Coach, one of the top makers of status
`handbags in the United States, is
`engaged in the balancing act that many
`classic brands are facing: how to
`attract a new breed of shopper while
`continuing to cater to old faithfuls.
`
`
`*
`
`*
`
`*
`
`He renamed the new company Coach, and
`the Coach bags, mostly made of saddle
`and bridal leathers in sport shapes
`modeled after feed bags and saddlebags,
`became the everyday bag of choice for
`thousands of working women in the 60’s,
`70’s and 80’s.16
`
`
`
`
`13 Sadler Discovery Dep., 69; Opposer’s first notice of reliance,
`Exhibits 43-118. Opposer does not advertise on television or
`radio. (Sadler Discovery Dep., p. 67).
`14 Opposer’s second notice of reliance, Exhibits 237-446.
`15 Opposer’s second notice of reliance, Exhibits 240, 241, 245,
`269, 272, 304, 320, 345, and 369. Exhibit 398 is from the
`Vogue.co.uk website, a website originating in the United Kingdom.
`Because opposer did not provide any support for why consumers in
`the United States would access a website from the U.K., we have
`not given it any consideration. In re Bayer Aktiengesellschaft,
`82 USPQ2d 1828, 1835 (Fed. Cir. 2007).
`16 Id. at Exhibit 240.
`
`16
`
`

`
`Opposition No. 91170112
`
`Seattle (April 2001)-
`
`Since 1941, the name Coach has been
`synonymous with quality leather bags and
`accessories for men and women.17
`New York Post (November 27, 2002)
`
`Coach famous for their fine quality
`handbags and leather goods, offers an
`array of well-made small items that
`would delight anyone on your gift
`list.18
`
`10. Opposer’s March 2008 internal brand awareness
`
`
`
`study.19 Because this document was designated as
`
`confidential, we refer to it only in general terms. The
`
`brand awareness study has limited probative value because
`
`there was no witness with first-hand knowledge to testify
`
`about the study. Ms. Sadler merely authenticated the report
`
`by testifying that the study was done in the regular course
`
`of opposer’s business and that it was a business record.20
`
`Furthermore, it appears that the study focused on the brand
`
`awareness of women between the ages of 13-24, rather than
`
`the entire population. Nevertheless, the results of
`
`opposer’s brand awareness study, conducted in 2007 and
`
`issued in March 2008, shows that there is a high-level of
`
`brand awareness in connection with opposer’s COACH mark; and
`
`
`17 Id. at Exhibit 269.
`18 Id. at Exhibit 304.
`19 Sadler Testimony Dep., Exhibit 456.
`20 Sadler Testimony Dep., pp. 28-29.
`
`17
`
`

`
`Opposition No. 91170112
`
`
`
`11. Opposer’s products are the subject of
`
`counterfeiting.21
`
`
`
`Based on this record, we find that opposer’s COACH mark
`
`is famous for purposes of likelihood of confusion. However,
`
`this factor alone is not sufficient to establish likelihood
`
`of confusion. If that were the case, having a famous mark
`
`would entitle the owner to a right in gross, and that is
`
`against the principles of trademark law. See University of
`
`Notre Dame du Lac v. J. C. Gourmet Imports Co., Inc., 703
`
`F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983):
`
`The fame of the [plaintiff’s] name is
`insufficient in and of itself to
`establish likelihood of confusion under
`§2(d). “Likely***to cause confusion”
`means more than the likelihood that the
`public will recall a famous mark on
`seeing the same mark used by another.
`It must also be established that there
`is a reasonable basis for the public to
`attribute the particular product or
`service of another to the source of the
`goods or services associated with the
`famous mark. To hold otherwise would
`result in recognizing a right in gross,
`which is contrary to the principles of
`trademark law and to concepts embodied
`in 15 USC § 1052(d).
`
`See also Recot Inc. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
`
`1894, 1898 (Fed. Cir. 2000) (“fame alone cannot overwhelm
`
`the other du Pont factors as a matter of law”). In this
`
`case, we find that the differences in the goods, as well as
`
`the different commercial impressions engendered by the
`
`
`21 Sadler Testimony Dep., pp. 22, 24-25, 30-31 and Exhibit 459.
`
`18
`
`

`
`Opposition No. 91170112
`
`marks, are significant countervailing factors dispelling
`
`any likelihood of confusion. See Blue Man Productions Inc.
`
`v. Tarmann, 75 USPQ2d 1811, 1819-1820 (TTAB 2005), rev'd on
`
`other grounds, Civil Action No. 05-2037 (D.D.C. April 3,
`
`2008).
`
`B. The similarity or dissimilarity and nature of the goods
`described in the applications and registrations, the
`channels of trade and classes of consumers.
`
`There are clear and significant differences between
`
`
`
`
`applicant’s goods, educational materials for preparing for
`
`standardized tests, and the various products identified in
`
`opposer’s registrations including, inter alia, handbags,
`
`men’s and women’s fashion accessories, business cases,
`
`luggage, travel accessories, personal planning products,
`
`leather outerwear, and clothing. While opposer uses its
`
`mark on a myriad of consumer products, it does not use COACH
`
`to identify educational products,22 notwithstanding its
`
`production of an instructional video to help U.S. Customs
`
`identify counterfeit products.23
`
`
`
`Opposer contends that because applicant uses its marks
`
`on shirts,24 caps,25 and tote bags,26 the products are
`
`related. However, applicant is not seeking to register its
`
`
`22 Sadler Testimony Dep., pp. 11, 57-58, 60 and Exhibits 213-215
`and 451-452; Sadler Discovery Dep., pp. 30-32, 35, 37, 39-40.
`23 Sadler Testimony Dep., p. 22.
`24 Fisher Testimony Dep., Exhibits 148 and 149.
`25 Id. at Exhibit 150.
`26 Id. at Exhibits 151 and 152.
`
`
`19
`
`

`
`Opposition No. 91170112
`
`COACH marks for shirts, caps, and tote bags, and we are
`
`constrained to determine the issue of likelihood of
`
`confusion based on the goods identified in the description
`
`of goods. Cunningham v. Laser Golf Corp., 55 USPQ2d at
`
`1846; Canadian Imperial Bank of Commerce v. Wells Fargo
`
`Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987);
`
`CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
`
`Cir. 1983).
`
`
`
`Opposer sells its products through its 400 retail
`
`stores and through numerous third-party retailers.27 It
`
`advertises in newspapers, fashion magazines and catalogs
`
`targeting female consumers between the ages of 25-65 in all
`
`income brackets.28 Applicant markets its products through
`
`catalogs, direct mail, and personal sales representatives.29
`
`Applicant targets educational professionals with
`
`administrative responsibility for purchasing educational
`
`materials.30 Although educational professionals may include
`
`females between the ages of 25-65, educational materials for
`
`preparing for standardized tests and handbags and fashion
`
`accessories are not sold under circumstances likely to give
`
`rise to the mistaken belief that the products emanate from
`
`
`27 Sadler Testimony Dep., pp. 20-21, 27.
`28 Sadler Testimony Dep., p. 19 and Exhibit 453 and 456; Sadler
`Discovery Dep., pp. 67-69; Opposer’s first notice of reliance,
`Exhibits 43-118-204.
`29 Fisher Testimony Dep., pp. 113-114, 155.
`30 Fisher Testimony Dep., p. 156.
`
`
`20
`
`

`
`Opposition No. 91170112
`
`the same source. In fact, we presume that educational
`
`professionals responsible for purchasing educational
`
`materials for school systems are likely to exercise a very
`
`high degree of care in making their purchasing decision,
`
`thus, minimizing any likelihood of confusion.
`
`
`
`Because applicant’s description of goods is not limited
`
`to sales to educational professionals, it is presumed that
`
`the scope of the goods encompasses all of the goods of the
`
`nature and type described, that they would travel in all
`
`channels of trade normal for those goods and to all classes
`
`of prospective purchasers for those goods. In re Linkvest
`
`S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211
`
`USPQ 639, 640 (TTAB 1981). Even if applicant’s educational
`
`materials for preparing standardized examinations were sold
`
`to students in general, or to the parents of such students,
`
`we find that the products at issue would not be sold under
`
`circumstances likely to give rise to the mistaken belief
`
`that educational materials for preparing for standardized
`
`tests and leather bags and fashion accessories emanate from
`
`the same source.
`
`
`
`In view of the foregoing, we find that the goods are
`
`not related and that the channels of trade are distinct.
`
`However, because the classes of consumers presumptively
`
`include students and parents of students, the classes of
`
`consumers may overlap.
`
`21
`
`

`
`Opposition No. 91170112
`
`C. The similarity or dissimilarity of the marks in their
`entireties as to appearance, sound, connotation and
`commercial impression.
`
`
`
`We now turn to the du Pont likelihood of confusion
`
`factor focusing on the similarity or dissimilarity of the
`
`marks in their entireties as to appearance, sound,
`
`connotation and commercial impression. In re E.I. du Pont
`
`De Nemours & Co., 177 USPQ at 567. Each of these
`
`characteristics of a mark must be considered. Palm Bay
`
`Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
`
`1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
`
`(appearance, sound, meaning and commercial impression are
`
`separate factors bearing on the ultimate conclusion of
`
`whether marks are, overall, similar). The similarity of the
`
`marks in regard to one of these factors can be critical to a
`
`finding of similarity. See TBC Corp. v. Holsa Inc., 126
`
`F.3d 1470, 44 USPQ2d 1315, 1318 (Fed. Cir. 1997) (phonetic
`
`similarity may be critical when goods are advertised via
`
`radio or when business is done by telephone); see also In re
`
`Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir.
`
`1983) (“the PTO may reject an application ex parte solely
`
`because of similarity in meaning of the mark sought to be
`
`registered with a previously registered mark”); but see Bost
`
`Bakery, Inc. v. Roland Industries, Inc., 216 USPQ 799, 801
`
`(TTAB 1991) ("the principle that similarity between marks in
`
`meaning or commercial significance alone may be sufficient
`
`22
`
`

`
`Opposition No. 91170112
`
`to create a likelihood of confusion is applicable primarily
`
`to situations where marks are coined or arbitrary rather
`
`than highly suggestive.") However, the law does not counsel
`
`that similarity in one factor alone automatically results in
`
`a finding that the marks are similar.
`
`
`
`The involved marks are clearly identical in terms of
`
`appearance and sound. In contrast, the marks are different
`
`in their connotations and commercial impressions,

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