Triumph Learning, LLC (“Triumph”) applied for the trademark COACH in standard character form and design, 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.
An examining attorney approved the trademarks for publication, and they proceeded to be published in the official Trademark Gazette. The end, right? I mean, it’s not like some luggage company would have a valid claim against a company that uses its trademarks in connection with educational software.
Cue evil empire theme song.
Coach Services, Inc. filed an opposition, claiming priority of use and likelihood of confusion, dilution, and that Triumph’s COACH marks were merely descriptive.
The TTAB found that Coach Services Inc.’s (“CSI’s”) COACH trademark was “famous for purposes of likelihood of confusion,” but that, “this factor alone is not sufficient to establish likelihood of confusion.” The TTAB continued: ”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.” (Quotation omitted)
The TTAB found that “the differences in the goods, as well as the different commercial impressions engendered by the marks, are significant countervailing factors dispelling any likelihood of confusion.” In other words, consumers are smart enough not to be confused into thinking that CSI, known for making handbags, fashion accessories, business cases, luggage, and travel accessories, had entered into the field of preparing educational materials for standardized tests.
The TTAB also found that, although the trademarks were similar in sight and sound, they differed as to commercial impression, a fact which the tribunal found “critical:”
Opposer’s COACH mark, when applied to fashion accessories is clearly either arbitrary or suggestive of carriage or travel accommodations (e.g., stagecoach, train, motor coach, etc.) thereby engendering the commercial impression of a traveling 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 examination. In view of the completely different meanings and commercial impressions engendered by the marks, we find that applicant’s COACH marks are not similar to opposer’s COACH mark.
The TTAB then rejected CSI’s dilution claim finding that CSI had failed to establish that its COACH marks, while famous for purposes of a likelihood of confusion analysis, were famous for purposes of trademark dilution — a more stringent standard. The TTAB concluded that, although Triumph’s COACH marks were descriptive of test tutoring materials, the marks had acquired secondary meaning through use in commerce. A victory for Triumph.
CSI could not realistically have believed that consumers would be confused by Triumph’s educational COACH products. Triumph simply does not sell the same types of goods in the same markets to the same types of consumers as CSI. The commercial impressions of their marks are nothing alike. What this opposition was really about, then, was CSI wanting to own the word COACH. Even descriptive uses of COACH — a dictionary word widely used to describe tutors, teachers, and, well, people who coach — would be off limits if it were up to CSI.
In the world of trademarks, might often makes right.
Justice triumphed, because Triumph didn’t back down.