Is your famous mark adequately protected? Do you police enough?

In a recent decision by the Federal Circuit, Coach Services Inc. learned the hard way that it’s famous “Coach” mark and its policing efforts were insufficient to prevent Triumph Learning LLC from registering the Coach Word mark with educational services, software and tests. CSI waited, until Triumph filed trademark applications to register the “Coach” word mark, a Coach design and a Coach Logo mark with the USPTO.

CSI filed oppositions on the grounds that Triumph’s “Coach” mark is: a) descriptive when used with educational services, software and tests; b) infringes its famous Coach mark and is likely to cause confusion; c) dilutes its famous Coach mark under the Anti-Dilution Act. By this time, Triumph had already been using the “Coach” mark since about 1986. Thus, it had built up significant common law rights and more importantly demonstrated a secondary meaning for its use of “Coach” with educational related materials.

The Federal Circuit affirmed the TTAB’s findings that: 1) the CSI’s “Coach” mark was not likely to be confused with Triumph’s use of Coach in the educational services and products industry; 2) that there was insufficient evidence of fame to find dilution of CSI’s “Coach” mark from Triumph’s use of the “Coach” mark; 3) that there was sufficient evidence of a secondary meaning for Triumph to register Coach to provide its educational services and products.

However, a different outcome could have been achieved, if CSI: a) had policed Triumph’s use of “Coach” and sent an early cease and desist letter; b) provided stronger evidence of Coach’s fame during the TTAB proceeding; and c) had been able to demonstrate similarity in market channels to engender a likelihood of confusion.

For more details see: CSI v. Triumph_030412.  If you have any concerns or questions about your trademark or branding strategy, then please do not hesitate to contact us.


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