filiniteh étates Qtnurt of Qppealz
`
`for the jfeheral Qtirtutt
`
`(Opposition No. 91 1701 12)
`
`COACH SERVICES, INC.,
`Appellant,
`
`V.
`
`TRIUMPH LEARNING LLC,
`Appellee.
`
`2011-1129
`
`Appeal from the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board.
`
`Decided: February 21, 2012
`
`NORMAN H. ZIVIN, Cooper & Dunham, LLP, of New
`York, New York, argued for appellant. With him on the
`brief was TONIA A. SAYOUR.
`
`R. DAVID HOSP, Goodwin Procter, LLP, of Boston,
`Massachusetts, argued for appellee. With him on the
`brief was ANTHONY H. CATALDO. Of counsel was JOHN T.
`BENNETT.
`
`Before NEWMAN, O’MALLEY, and REYNA, Circuit Judges.
`
`
`
`for the jfeheral Qtirtutt
`
`(Opposition No. 91 1701 12)
`
`COACH SERVICES, INC.,
`Appellant,
`
`V.
`
`TRIUMPH LEARNING LLC,
`Appellee.
`
`2011-1129
`
`Appeal from the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board.
`
`Decided: February 21, 2012
`
`NORMAN H. ZIVIN, Cooper & Dunham, LLP, of New
`York, New York, argued for appellant. With him on the
`brief was TONIA A. SAYOUR.
`
`R. DAVID HOSP, Goodwin Procter, LLP, of Boston,
`Massachusetts, argued for appellee. With him on the
`brief was ANTHONY H. CATALDO. Of counsel was JOHN T.
`BENNETT.
`
`Before NEWMAN, O’MALLEY, and REYNA, Circuit Judges.
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`2
`
`O’MALLEY, Circuit Judge.
`
`Coach Services, Inc. (“CSI”) appeals from the final de-
`cision of the Trademark Trial and Appeal Board (“the
`Board”) dismissing its opposition to Triumph Learning,
`LLC’s (“Triumph”) use-based applications to register the
`mark COACH for educational materials used to prepare
`students for standardized tests. The Board found that:
`
`(1) there was no likelihood of confusion between the
`parties’ COACH marks; (2) CSI failed to prove likelihood
`of dilution; and (3) although Triumph’s marks are merely
`descriptive, they have acquired secondary meaning, and
`thus are entitled to registration. Coach Services, Inc. v.
`Triumph Learning LLC, 96 U.S.P.Q.2d 1600 (T.T.A.B.
`Sept. 17, 2010) (“Board Decision”). For the reasons dis-
`cussed below, we find no error in the Board’s decisions
`
`regarding likelihood of confusion and dilution, and thus
`affirm as to those grounds. With respect to the Board’s
`acquired distinctiveness analysis, however, we find that
`certain evidentiary errors require us to vacate and re-
`mand solely with respect to the Board’s determination of
`Triurnph’s “substantially exclusive and continuous use” of
`its marks. Accordingly, we affirm-in-part, vacate—in-part,
`and remand this matter for further proceedings.
`
`BACKGROUND
`
`A. Triumph’s Use of the COACH Mark
`
`Triumph publishes books and software used to assist
`teachers and students in preparing for standardized tests.
`Triumph claims that it has used the COACH mark in
`connection with its products since at least 1986. Accord-
`ing to Triumph:
`(1) the “market
`for
`test preparation
`materials for state-sponsored standardized tests is highly
`specific and targeted”; and (2) much of the marketing
`takes place through face to face contact with sales repre-
`sentatives or in the form of direct mailings to previously
`
`
`
`3
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`identified educational department heads. Appellee’s Br.
`6.
`
`Triumph explains that, when Congress passed the No
`Child Left Behind Act in 2001, which mandated that all
`states administer standardized tests to monitor academic
`
`advancement, Triumph made additional investments in
`its marketing. It began focusing on the style of its brand
`and developed a mascot — a cartoon coach — and a slogan:
`“America’s best for student success.” Triumph invested
`significantly in its marketing efforts, and, according to
`Triumph,
`it has had substantial commercial success
`selling products under its COACH mark.
`
`In December 2004, Triumph filed use-based applica-
`tions for three marks: (1) the COACH word mark (Serial
`No. 78/535,642); (2) a stylized COACH mark (Serial No.
`78/536,065); and (3) a COACH mark and design (Serial
`No. 78/536,143)
`(referred to collectively as “Triumph’s
`COACH marks”). The COACH mark with a design ap-
`pears as follows:
`
`
`
`Each of the applications is for the following goods in
`International Classes 9 and 16:
`
`Computer software for use in child and adult edu-
`cation, namely, software to assist teachers and
`students at all
`levels in mastering standards-
`based curricula and in preparing for standardized
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`4
`
`exams; prerecorded audio and video tapes in the
`field of child and adult education, featuring mate-
`rials 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 stu-
`dents at all levels in mastering standards-based
`curricula and in preparing for standardized ex-
`ams, in Class 16.
`
`Triumph’s COACH marks were published for opposition
`on September 20, 2005.
`
`B. CSI’s COACH Marks
`
`CSI advertises and sells a wide variety of “accessible
`luxury” products, including handbags, luggage, clothing,
`watches, eye glasses, and wallets.
`It has been using the
`COACH mark in connection with its products since at
`least December 28, 1961.1 CSI owns sixteen incontestable
`trademark registrations for the COACH mark, all but one
`of which issued before Triumph’s applications were filed
`in December 2004.
`
`CSI sells its COACH products in its own 400 retail
`stores,
`in department stores, and over
`the Internet
`through its website.
`It also promotes its goods by cata-
`logs. CSI advertises and markets its COACH line of
`products throughout the United States using “magazine
`and newspaper ads, billboards and bus and phone kiosks.”
`Appellant’s Br. 5.
`For example, CSI’s COACH brand
`products have been advertised in national fashion publi-
`
`CSI claims that its predecessor first began using
`1
`the COACH mark in 1957.
`
`
`
`5
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`cations, including Elle, Vogue, Mademoiselle, and Vanity
`Fair.
`
`Although CSI’s briefing to this court includes adver-
`tising and sales figures from 2000-2008,
`including a
`representation that its sales exceeded $10 billion over
`that time frame, as discussed below, this evidence was not
`
`properly submitted to the Board and thus was not consid-
`ered.
`In fact, the Board found that CSI introduced evi-
`dence of
`its advertising and sales only for 2008.
`Specifically, CSI introduced the testimony deposition of
`Carole P. Sadler,
`the former Vice President, General
`Counsel, and Secretary of CSI, who testified that, in 2008:
`(1) CSI’s annual sales were roughly $3.5 billion; and
`(2) CSI spent about “30—60 million a year” on advertising.
`Joint Appendix (“J.A.”) 3659-60.
`
`the popularity and commercial
`To further support
`success of its COACH mark, CSI points to:
`(1) its joint
`marketing efforts with other popular brands,
`including
`LEXUS and CANON; (2) unsolicited media attention from
`the fashion press; (3) an internal market study conducted
`in June and July 2007 of persons between the ages of 18-
`24, which showed that the COACH brand had 96% aided
`
`awareness; and (4) the fact that CSI has taken steps to
`enforce its trademark rights against past infringers.
`
`It is undisputed that CSI is not in the education or
`test-preparation industry, does not consider Triumph a
`competitor, and did not present any evidence of any
`actual confusion stemming from Triumph’s use of the
`Coach mark in conjunction with its educational materials.
`
`C. TTAB Opposition Proceedings
`
`On March 17, 2006, CSI filed a Notice of Opposition
`opposing registration of all three of Triumph’s COACH
`marks on grounds of likelihood of confusion under 15
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`6
`
`U.S.C. § 1052(d) and dilution under 15 U.S.C. § 1125(c).
`On October 5, 2006, CSI amended its Notice to add a
`claim that COACH is merely descriptive when used on
`goods in the educational and test preparation industries,
`such that the mark is not registrable to Triumph pursu-
`ant to 15 U.S.C. § 1052(e).
`
`On September 17, 2010, the Board issued a judgment
`dismissing CSI’s opposition. Specifically, the Board found
`that there was: (1) no likelihood of confusion between the
`parties’ marks; and (2) no likelihood of dilution of CSI’s
`COACH mark for lifestyle goods by Triumph’s COACH
`marks for educational materials. While the Board found
`
`that CSI’s COACH mark was famous for likelihood of
`confusion purposes, it concluded that CSI failed to provide
`sufficient evidence of fame to support its dilution claim
`under the Trademark Dilution Revision Act of 2006
`(“TDRA”), 15 U.S.C. § 1125(c). Finally, the Board held
`that, although Triumph’s COACH marks were merely
`descriptive,
`they had acquired secondary meaning and
`thus were entitled to registration.
`
`CSI timely appealed to this court. We have jurisdic-
`tion pursuant to 28 U.S.C. § 1295(a)(4)(B).
`
`STANDARD OF REVIEW
`
`We review the Board’s legal conclusions de nouo and
`its factual findings for substantial evidence.
`In re Pacer
`Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Substantial
`evidence is “more than a mere scintilla’ and ‘such rele-
`vant evidence as a reasonable mind would accept as
`adequate’ to support a conclusion.” Id. (quoting Consol.
`Edison U. Nat’l Labor Relations Bd., 305 U.S. 197, 229
`(1938)).
`
`
`
`DISCUSSION
`
`into three
`CSI’s primary arguments on appeal fall
`categories.
`It argues that
`the Board erred when it:
`(1) improperly balanced the factors set forth in In re E.I.
`DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.
`1973), to find no likelihood of confusion; (2) ignored sub-
`stantial evidence showing that CSI’s COACH mark was
`famous for dilution purposes, including corporate annual
`reports that CS1 had attempted to introduce via a notice
`of reliance; and (3) found that Triumph’s descriptive
`COACH marks have acquired distinctiveness.
`
`In response, Triumph argues that the Board correctly
`found: (1) no likelihood of confusion “in light of the vast
`differences in the parties’ respective goods, the channels
`of trade through which those goods are sold, and the
`vastly different commercial
`impressions made by the
`marks on consumers”; (2) no likelihood of dilution because
`CSI did not meet the stringent standards for fame under
`the TDRA and because “its mark has not become the
`
`principal meaning of the word ‘coach”’; and (3) that Tri-
`umph’s marks have attained secondary meaning. Appel-
`lee’s Br. 12-13.
`
`For the reasons set forth below, we find Triumph’s ar-
`guments regarding likelihood of confusion and likelihood
`of dilution well-taken. Because we find that the Board
`
`to its acquired
`made evidentiary errors with respect
`distinctiveness analysis, we vacate that portion of the
`Board’s decision and remand for further proceedings on
`that issue alone.
`
`A. Evidentiary Ruling Regarding CSI’s
`Notice of Reliance
`
`On appeal, CSI takes issue with the Board’s decision
`to exclude the corporate annual reports it attempted to
`admit through a notice of reliance. According to CSI, the
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`8
`
`Board should have considered its 2000-2008 annual
`
`reports as evidence of CSI’s annual sales figures and the
`amount it expended in advertising, design, and promotion
`of its COACH products.
`In response, Triumph argues
`that the Board properly struck the documents from the
`record because they were not submitted in accordance
`with the Board’s rules and were not otherwise authenti-
`
`cated. We agree with Triumph.
`
`This court reviews evidentiary rulings for abuse of
`discretion. Crash Dummy Movie, LLC U. Mattel, Inc., 601
`F.3d 1387, 1390 (Fed. Cir. 2010) (citing Chen U. Bouchard,
`347 F.3d 1299, 1307 (Fed. Cir. 2003)). We will reverse
`only if the Board’s evidentiary ruling was:
`(1) “clearly
`unreasonable, arbitrary, or fanciful”;
`(2) “based on an
`erroneous conclusion[] of law”;
`(3) premised on “clearly
`erroneous findings of fact”; or (4) the record “contains no
`evidence on which the Board could rationally base its
`decision.” Id. at 1390-91.
`
`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
`
`Inc. U. Cluett,
`See Jeanne-Marc,
`any authentication.
`Peabody & C0,, 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 contem-
`plated” under the Trademark Rules.); see also Midwest
`Plastic Fabricators Inc. U. Underwriters Labs. Inc., 12
`
`
`
`9
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`(“[P]rinted
`U.S.P.Q.2d 1267, 1270 n.5 (T.T.A.B. 1989)
`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. U. OMS Investments Inc., 94
`U.S.P.Q.2d 1031, 1039 (T.T.A.B. 2010).
`In Safer,
`the
`Board held that:
`
`ifa document obtained from the Internet identifies
`its date ofpublication 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.
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`10
`
`In a footnote, the Board recog-
`Id. (emphasis in original).
`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.
`
`Here, CSI’s First Notice of Reliance, which was dated
`October 20, 2008, listed its annual reports from 2002 to
`2008.2 Triumph objected on grounds that “annual reports
`may not be introduced through a notice of reliance, but
`must be introduced and authenticated by competent
`testimony.” Board Decision, 96 U.S.P.Q.2d at 1603. The
`Board, relying on Trademark Rule 2.122(e) and the re-
`lated cases cited above, indicated that “corporate annual
`reports are not considered to be printed publications
`available to the general public.”
`Id.
`In a footnote, the
`Board acknowledged the recent Safer decision and found
`that, “[b]ecause the annual reports were not printed from
`the Internet,
`they may not be admitted into evidence
`pursuant to a notice of reliance.” Id. at 1603 n.2 (citing
`Safer, 94 U.S.P.Q.2d at 1039 n.18). The Board further
`noted that CSI did not have any witness testify to the
`authenticity of the reports. Accordingly, the Board sus-
`tained Triumph’s objection and gave CSI’s annual reports
`no consideration.
`
`2 Although its Notice of Reliance listed its annual
`reports for 2002-2008, in its briefing, CSI argues that the
`Board should have considered its annual reports from
`2001 to 2008. This discrepancy is irrelevant, however,
`given the Board’s decision to exclude all of the reports on
`grounds that they were improperly introduced.
`
`
`
`1 1
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`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.” Appel-
`lant’s Br. 29-30.
`
`The record reveals that CSl’s former Vice President
`
`and General Counsel — Carole Sadler — testified as fol-
`lows:
`
`Q. About how much does Coach spend on adver-
`tising every year?
`
`A. Currently we spend about 30 to $60 million a
`year.
`If you include design and promotional
`expenditures with advertising, it is closer to
`125 million.
`
`<.®?><.®?><f9?><S9?><i0
`
`Annually?
`
`Annually, yes.
`
`And is that information available publicly?
`
`Yes, it is in our annual report.
`
`What are Coach’s sales approximately today?
`
`About three-and-a-half billion dollars.
`
`Is that information available publicly?
`
`Yes.
`
`Is Coach a public company?
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`12
`
`A. Yes.
`
`Q. So it reports that information publicly?
`
`A. Yes.
`
`J.A. 3659-60. According to CSI, this testimony corrobo-
`rates that the advertising spending and sales figures from
`2000 to 2008 are publicly available through the annual
`reports CSI proffered. It is undisputed, however, that Ms.
`Sadler was not shown the annual reports during her
`deposition and did not authenticate the documents at
`issue.
`
`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. It is significant, moreover, that
`CSI submitted its Notice of Reliance in October 2008, and
`the Board did not decide Safer until 2010. At the time the
`Notice of Reliance was submitted, therefore, the Board’s
`
`rules and existing case law were clear that corporate
`annual reports were not admissible via a notice of reli-
`ance. Even under the Board’s Safer decision, moreover,
`CSI’s printed versions of its annual reports could not be
`admitted into evidence pursuant to a notice of reliance
`because they lacked identifying information such as the
`online source and date accessed.
`Indeed, Safer specifi-
`cally contemplated this situation where a corporate
`annual report is “inadmissible in paper form by way of a
`notice of reliance because it is not a document in general
`circulation whereas the same annual report
`in digital
`form, publicly available over the internet, would be ad-
`missible through a notice of reliance because its publica-
`tion on the internet places it in general circulation.” Gary
`D. Krugman, Trademark Trial & App. Board Prac. &
`Proc. § 3.138 (2011).
`
`
`
`13
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`the Board
`to Ms. Sadler’s testimony,
`With respect
`found that her statements were limited to 2008 because
`
`she specified that her sales and advertising estimates
`were “current” estimates, and her deposition was taken in
`2008. And, as Triumph notes and CSI concedes, the sales
`figure Ms. Sadler quoted during her testimony was for
`worldwide sales, not sales within the United States, and
`
`there was no indication as to whether the advertising
`figures quoted were limited to the United States. Simply
`put,
`there was no testimony authenticating the annual
`reports or
`independently establishing the information
`contained therein.
`
`Although the Board’s requirements for admission of
`evidence via a notice of reliance are specific, and do not
`mirror the Federal Rules of Evidence, they can be readily
`learned and easily satisfied. Because CSI offered only
`paper versions of its annual reports, which are not self-
`authenticating, we find that the Board did not abuse its
`discretion when it excluded those reports. Accordingly,
`we affirm the Board’s evidentiary ruling.
`
`B. Likelihood of Confusion
`
`Next, CS1 argues that the Board erred in finding no
`likelihood of confusion under the factors articulated in
`
`DuPont. Likelihood of confusion is a legal determination
`based on underlying facts. Cunningham U. Laser Golf
`Corp., 222 F.3d 943, 945 (Fed. Cir. 2000); see also M2
`Software, Inc. U. M2 Commc’ns, Inc., 450 F.3d 1378, 1381
`(Fed. Cir. 2006) (“Likelihood of confusion is a question of
`law, based on findings of relevant underlying facts,
`namely findings under the DuPont factors”). Although
`we review the Board’s findings as to the DuPont factors
`for substantial evidence, we review its overall determina-
`tion of likelihood of confusion without deference.
`In re
`
`Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004)
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`14
`
`Under Section 2(d) of the Lanham Act, the Patent and
`Trademark Office (“PTO”) may refuse to register a trade-
`mark if it is so similar to a registered mark “as to be
`likely, when used on or in connection with the goods of the
`applicant, to cause confusion, or to cause mistake, or to
`deceive.”
`15 U.S.C. § 1052(d). Whether a likelihood of
`confusion exists between an applied-for mark and a prior
`mark is determined on a case-by-case basis applying the
`thirteen non-exclusive factors
`set
`forth in DuPont.3
`
`3
`
`The DuPont factors include:
`
`(1) The similarity or dissimilarity of the marks in
`their entireties as to appearance, sound, connota-
`tion and commercial impression. (2) The similar-
`ity or dissimilarity and nature of the goods or
`services as described in an application or registra-
`tion or in connection with which a prior mark is in
`use.
`(3) The similarity or dissimilarity of estab-
`lished,
`likely-to-continue trade channels.
`(4) The
`conditions under which and buyers to whom sales
`are made, i.e., “impulse” vs. careful, sophisticated
`purchasing. (5) The fame of the prior mark (sales,
`advertising,
`length of use).
`(6) The number and
`nature of similar marks in use on similar goods.
`(7) The nature and extent of any actual confusion.
`(8) The length of time during and conditions un-
`der which there has been concurrent use without
`evidence of actual confusion.
`(9) The variety of
`goods on which a mark is or is not used (house
`mark, “family” mark, product mark).
`(10) The
`market interface between applicant and the owner
`of a prior mark .
`.
`.
`. (11) The extent to which ap-
`plicant has a right to exclude others from use of
`its mark on its goods. (12) The extent of potential
`confusion, i.e., whether de minimis or substantial.
`(13) Any other established fact probative of the ef-
`fect of use.
`
`DuPont, 476 F.2d at 1361.
`
`
`
`15
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d
`1344, 1349 (Fed. Cir. 2011) (citation omitted). “Not all of
`the DuPont factors are relevant to every case, and only
`factors of significance to the particular mark need be
`considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 1346
`(Fed. Cir. 2010). For example, the Board can “focus .
`.
`. on
`dispositive factors, such as similarity of the marks and
`relatedness of the goods.” Herbko Int’l, Inc. U. Kappa
`Books, Inc., 308 F.3d 1156, 1164 (Fed. Cir. 2002) (citation
`omitted).
`
`Here, the Board focused on the following DuPont fac-
`tors:
`(1) the strength or fame of CSI’s COACH marks;
`(2) the similarity of the goods; (3) the channels of trade;
`(4) the classes of consumers; and (5) the similarity of the
`marks in their entireties. The Board weighed each of
`these factors and found that there was no likelihood of
`
`confusion because the parties’ marks “have different
`meanings and engender different commercial
`impres-
`sions,” and the goods involved “are not similar or related
`in any way.” Board Decision, 96 U.S.P.Q.2d at 1609.
`
`CSI argues that the Board failed to give proper weight
`(1) the fame of its COACH mark;
`(2) the identical
`to:
`nature of the parties’ marks; and (3) the ‘‘overlap between
`the parties’ goods and the overlap and lack of sophistica-
`tion of the parties’ customers.” Appellant’s Br. 19. We
`address each of the challenged determinations in turn and
`find that
`they are supported by substantial evidence.
`After careful review and balancing of the DuPont factors,
`we conclude that the Board correctly found no likelihood
`of confusion.
`
`1. Strength or Fame of CSI’s Coach Mark
`
`The fame of the registered mark plays a “dominant”
`role in the DuPont analysis, as famous marks “enjoy a
`wide latitude of legal protection.” Recot, Inc. v. M.C.
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`16
`
`Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000); see also
`Palm Bay Imports Inc. U. Veuve Clicquot Ponsardin Mai-
`son Fondee En 1772, 396 F.3d 1369, 1374 (Fed. Cir. 2005)
`(“[A] strong mark .
`.
`. casts a long shadow which competi-
`tors must avoid”) (citation omitted)). A famous mark is
`one that has “extensive public recognition and renown.”
`Bose Corp. U. QSC Audio Prods. Inc., 293 F.3d 1367, 1371
`(Fed. Cir. 2002) (citation omitted).
`
`Fame for purposes of likelihood of confusion is a mat-
`ter of degree that “varies along a spectrum from very
`strong to very weak.” Palm Bay, 396 F.3d at 1375 (quot-
`ing In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed.
`Cir. 2003)). Relevant factors include sales, advertising,
`length of use of the mark, market share, brand aware-
`ness, licensing activities, and variety of goods bearing the
`mark. Recot, 214 F.3d at 1326; see also Bose, 293 F.3d at
`1371 (“[O]ur cases teach that the fame of a mark may be
`measured indirectly, among other things, by the volume
`of sales and advertising expenditures of the goods travel-
`ing under the mark, and by the length of time those
`indicia of commercial awareness have been evident”).
`The party asserting that its mark is famous has the
`burden to prove it. Leading Jewelers Guild, Inc. U. LJOW
`Holdings, LLC, 82 U.S.P.Q.2d 1901, 1904 (T.T.A.B. 2007)
`(‘‘It is the duty of a party asserting that its mark is fa-
`mous to clearly prove it.”).
`
`It is well-established that fame is insufficient, stand-
`ing alone,
`to establish likelihood of confusion. Univ. of
`Notre Dame Du Lac .1) J.C. Gourmet Food Imports Co.,
`Inc., 703 F.2d 1372, 1374 (Fed. Cir. 1983) (“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.”)
`(internal quotations omitted). Al-
`though fame cannot overwhelm the other DuPont factors,
`we are mindful that it “deserves its full measure of weight
`
`
`
`17
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`in assessing likelihood of confusion.” Recot, 214 F.3d at
`1328 (noting that “fame alone cannot overwhelm the other
`DuPont factors as a matter of law”).
`
`To show the strength and fame of its mark, CSI intro-
`duced the following evidence before the Board:
`
`CSI began using the COACH mark at least as
`early as December 28, 1961.
`
`There are approximately 400 COACH retail stores
`throughout all 50 states.
`
`CSI’s COACH products are sold by approximately
`1,000 third-party retailers throughout the US.
`
`In 2008, CSI’s annual sales were roughly $3.5 bil-
`lion.
`
`In 2008, CSI spent “about $30-60 million a year”
`on advertising.
`
`CSI has advertised in magazines such as Elle,
`Vogue, Vanity Fair, and The New Yorker.
`
`CSI has advertised in newspapers in major metro-
`politan areas.
`
`CSI’s COACH products have received unsolicited
`publicity from newspapers and magazines discuss-
`ing fashion trends.
`
`CSI has been the subject of articles that refer to
`the renown of its products.
`
`CSI’s internal brand awareness study, which is-
`sued in March 2008,
`showed a high level of
`awareness of the COACH brand for women be-
`
`tween the ages of 13-24.
`
`CSI’s COACH products are the subject of counter-
`feiting.
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`18
`
`Based on this evidence, the Board found that CSl’s
`COACH mark is famous for purposes of likelihood of
`confusion. Substantial evidence supports this finding. As
`discussed below, however, the Board found that the other
`factors, on balance, dispel any likelihood of confusion
`between the parties’ marks.
`
`2. Similarity of the Marks
`
`Under the next DuPont factor, the Board must con-
`sider the “similarity or dissimilarity of the marks in their
`entireties as
`to appearance,
`sound, connotation and
`commercial impression.” 476 F.2d at 1361. CSI argues
`that the substantial similarity of the marks should have
`weighed heavily in favor of likelihood of confusion. Tri-
`umph responds that, although the marks for both compa-
`nies contain the word “Coach,” “when viewed in their
`commercial contexts, together with the relevant designs
`and in connection with their respective goods, they convey
`entirely different commercial impressions.” Appellee’s Br.
`36-87.
`
`It is well-established that it is improper to dissect a
`mark, and that marks must be viewed in their entireties.
`In re Shell Oil Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993)
`(“The marks are considered in their entireties, words and
`design.”); see also Sports Auth. Mich., Inc. U. PC Auth.,
`Inc., 63 U.S.P.Q.2d 1782, 1792 (T.T.A.B. 2002) (same).
`In
`some circumstances, however, “one feature of a mark may
`be more significant than another, and it is not improper to
`give more weight to this dominant feature in determining
`the commercial impression created by the mark.” Lead-
`ing Jewelers Guild, 82 U.S.P.Q.2d at 1905; see also In re
`Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)
`(“[T]here is nothing improper in stating that, for rational
`reasons, more or less weight has been given to a particu-
`
`
`
`19
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`lar feature of a mark, provided the ultimate conclusion
`rests on consideration of the marks in their entireties.”).
`
`The proper test is not a side-by-side comparison of the
`marks, but instead “whether the marks are sufficiently
`similar in terms of their commercial
`impression” such
`that persons who encounter the marks would be likely to
`assume a connection between the parties. Leading Jewel-
`ers Guild, 82 U.S.P.Q.2d at 1905.
`In this fact-specific
`inquiry, if the parties’ goods are closely related, a lesser
`degree of similarity between the marks may be sufficient
`to give rise to a likelihood of confusion.
`In re Inca Tex-
`tiles, LLC, 344 Fed. Appx. 603, 606 (Fed. Cir. 2009) (citing
`Century 21 Real Estate Corp. v. Century Life of Am., 970
`F.2d 874, 877 (Fed. Cir. 1992)). Even where the marks at
`issue are identical, or nearly identical,
`the Board has
`found that differences in connotation can outweigh visual
`and phonetic similarity.
`See Blue Man Prods. Inc. U.
`Tarmann, 75 U.S.P.Q.2d 1811, 1820-21 (T.T.A.B. 2005)
`(finding that BLUE MAN GROUP “has the connotation of
`the appearance of the performers” and that applicant’s
`BLUEMAN mark “has no such connotation for cigarettes
`or tobacco. Thus, the marks differ in their connotations
`
`and commercial impressions”); see also In re Sears, Roe-
`buck & Co., 2 U.S.P.Q.2d 1312, 1314 (T.T.A.B. 1987)
`(considering
`CROSSOVER
`for
`brassieres
`and
`CROSSOVER for
`ladies’ sportswear and finding that,
`“[a]s a result of their different meanings when applied to
`the goods of applicant and registrant,
`the two marks
`create different commercial impressions, notwithstanding
`the fact
`that
`they are legally identical
`in sound and
`appearance”).
`
`Here, the Board found that, although the marks are
`identical in terms of sight and sound,
`they differ as to
`connotation and commercial
`impression.
`The Board
`stated that,
`in assessing connotation and commercial
`
`
`
`COACH SERVICES V. TRIUMPH LEARNING
`
`20
`
`impression, “we are compelled to consider the nature of
`the respective goods and services.” Board Decision, 96
`U.S.P.Q.2d at 1609 (citing TBC Corp. U. Holsa, Inc., 126
`F.3d 1470 (Fed. Cir. 1997)). Applying this analysis, the
`Board found that:
`
`Opposer’s COACH mark, when applied to fashion
`accessories is clearly either arbitrary or sugges-
`tive of carriage or travel accommodations (e.g.,
`stagecoach, train, motor coach, etc.) thereby en-
`gendering the commercial impression of a travel-
`ing bag (e.g., a coach or carriage bag). On the
`other hand, applicant’s COACH marks call
`to
`mind a tutor who prepares a student for an ex-
`amination.
`
`Id. Given the “completely different meanings and com-
`mercial impressions engendered by the marks,” the Board
`concluded that Triumph’s COACH marks are not similar
`to CSI’s COACH mark. Id.
`
`As noted, Triumph’s applications seek to register
`COACH in standard character form, COACH in a stylized
`font, and COACH with a mascot and the tagline “Amer-
`ica’s Best for Student Success.” It is undisputed that the
`word marks for both p
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