Coach Services, Inc.v.Triumph Learning LLC

Trademark Trial and Appeal Board

Sep 17, 2010

No. 91170112 (T.T.A.B. Sep. 17, 2010)

Hearing: Mailed:
February 17, 2010 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),

THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91170112
2

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
Opposition No. 91170112
3
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).
Opposition No. 91170112
4
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).
Opposition No. 91170112
5
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).
Opposition No. 91170112
6
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
magazines (Exhibits 43-205);
c. Books published by opposer (Exhibits
213-215);
d. A chapter in a marketing textbook featuring a
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
Opposition No. 91170112
7
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.
Opposition No. 91170112
8
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)).
Opposition No. 91170112
9
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.
Opposition No. 91170112
10
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
Opposition No. 91170112
11
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).
Opposition No. 91170112
12
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.,
Opposition No. 91170112
13
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
Opposition No. 91170112
14
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.
Opposition No. 91170112
15
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.
Opposition No. 91170112
16
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.
Opposition No. 91170112
17
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.
Opposition No. 91170112
18
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.
Opposition No. 91170112
19
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.

Opposition No. 91170112
20
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.

Opposition No. 91170112
21
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.
Opposition No. 91170112
22
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
Opposition No. 91170112
23
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, a fact
which we find critical in this case. In considering
connotation and overall commercial impression, we are
compelled to consider the nature of the respective goods and
services. See, e.g., TBC Corp. v. Holsa, supra, 44 USPQ2d
at 1316 (court discounted “distinct connotation” of GRAND
SLAM in relation to bridge, baseball, golf and tennis as
irrelevant and noted that “with respect to automobile tires
GRAND SLAM is wholly arbitrary”); Viacom International Inc.
v. Komm, 46 USPQ2d 1233, 1238 (TTAB 1998) (the word “mouse”
has different meanings when applied to a computer peripheral
and a cartoon superhero); Bost Bakery, supra, 216 USPQ at
801-802 (“Hearth” highly suggestive as applied to bread but
“Heritage” largely arbitrary as applied to such goods);
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
Opposition No. 91170112
24
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.
In an analogous situation, the Board found that the
mark BOTTOMS UP when used in connection with men’s suits,
coats and trousers engenders a different commercial
impression from BOTTOMS UP for women’s underwear and,
therefore, was not likely to cause confusion. In re Sydel
Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977).
But more important, and especially in
this case is the nature of the marks and
the commercial impression that they
project in connection with the
respective goods. Thus, if “BOTTOMS UP”
can be deemed to have any suggestive
connotation as applied to men’s suits,
coats and trousers, it will be in
association with the drinking phrase,
“drink up!” … This is hardly the
connotation that “BOTTOMS UP” would
generate as applied to applicant’s
ladies’ and children’s underwear.

In re Sydel Lingerie Co., Inc., 197 USPQ at 630; see also In
re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSS-
OVER for brassieres creates a different commercial
impression from CROSSOVER for ladies’ sportswear); and In re
British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for
Opposition No. 91170112
25
shoes engenders a different commercial impression from
PLAYERS for underwear).
D. Balancing the factors.
Notwithstanding the facts that opposer’s mark is famous
and that the classes of consumers may overlap, because the
goods of the parties are not similar or related in any way,
because the goods move in different channels of trade, and
because the marks, as used by the parties, have different
meanings and engender different commercial impressions, we
find that applicant’s use of its COACH marks for
“educational materials for preparing for standardized tests”
is not likely to cause confusion with opposer’s COACH marks
for handbags and opposer’s wide variety of consumer fashion
products and accessories.
Dilution
In addition to its Section 2(d) claim, opposer has
asserted a dilution claim. The Trademark Act provides for a
cause of action for the dilution of famous marks. Sections
13 and 43(c) of the Trademark Act of 1946, 15 U.S.C. §§1063
and 1125(c).
The Trademark Act provides as follows:31
Subject to the principles of equity, the
owner of a famous mark that is
distinctive, inherently or through
acquired distinctiveness, shall be
entitled to an injunction against

31 Section 43(c) as it pertains to dilution has been amended
effective October 6, 2006.
Opposition No. 91170112
26
another person who, at any time after
the owner's mark has become famous,
commences use of a mark or trade name in
commerce that is likely to cause
dilution by blurring or dilution by
tarnishment of the famous mark,
regardless of the presence or absence of
actual or likely confusion, of
competition, or of actual economic
injury.

Opposer contends that applicant’s marks will “blur” the
distinctiveness of opposer’s COACH mark.32 The Trademark
Act defines dilution by blurring as follows:
"dilution by blurring" is association
arising from the similarity between a
mark or trade name and a famous mark
that impairs the distinctiveness of the
famous mark.33

Opposer also contends that applicant’s marks will
“tarnish” the reputation of opposer’s COACH mark.34 The
Trademark Act defines dilution by tarnishment as follows:

“dilution by tarnishment” is an
association arising from the similarity
between a mark or trade name and a
famous mark that harms the reputation of
the famous mark.35

Our dilution analysis, therefore, requires
consideration of the following issues:
1. Whether opposer’s COACH mark is famous;

2. Whether opposer’s COACH mark became famous prior

32 Opposer’s Brief, p. 32-33.
33 Section 43(c)(2)(B) of the Trademark Act of 1946,
15 U.S.C. §1125(c)(2)(B).
34 Opposer’s Brief, pp. 32-33.
35 Section 43(c)(2)(C) of the Trademark Act of 1946,
15 U.S.C. §1125(c)(2)(C).
Opposition No. 91170112
27
to applicant’s use of its COACH marks; and

3. Whether applicant’s COACH mark is likely to cause
dilution by blurring the distinctiveness of
opposer’s COACH mark or by tarnishing the
reputation of opposer’s COACH mark.

A. The fame of opposer’s mark.

Although we have found that COACH is famous for
purposes of opposer’s likelihood of confusion claim, we must
now determine whether COACH is famous in the context of a
dilution claim. Fame for likelihood of confusion and
dilution is not the same. Fame for dilution requires a more
stringent showing. Palm Bay Imports Inc. v. Veuve Clicquot,
supra, 73 USPQ2d at 1694; Toro Co. v. ToroHead Inc., 61
USPQ2d 1164, 1170 (TTAB 2001). Likelihood of confusion fame
“varies along a spectrum from very strong to very weak”
while dilution fame is an either/or proposition – it either
exists or it does not exist. Id.; see also Carefirst of
Maryland Inc. v. FirstHealth of the Carolinas Inc., 77
USPQ2d 1492, 1507 (TTAB 2005) (likelihood of confusion
“[f]ame is relative . . . not absolute”). A mark,
therefore, may have acquired sufficient public recognition
and renown to be famous for purposes of likelihood of
confusion without meeting the more stringent requirement for
dilution fame. Toro Co. v. ToroHead Inc., 61 USPQ2d at
1170, citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d
27, 47 USPQ2d 1225, 1239 (1st Cir. 1998) (“[T]he standard
for fame and distinctiveness required to obtain anti-
Opposition No. 91170112
28
dilution protection is more rigorous than that required to
seek infringement protection”).
In Toro, we described the requirements for proving that
a mark is famous:
While the eight statutory factors are a
guide to determine whether a mark is
famous, ultimately we must consider all
the evidence to determine whether
opposer has met its burden in
demonstrating that the relevant public
recognizes the [COACH] mark as
“signifying something unique, singular,
or particular.” H.R. REP. No. 104-374,
at 3 (1995). Because famous marks can
be diluted by the use of similar marks
on non-competitive goods and services,
the owner of a famous mark must show
that there is a powerful consumer
association between the term and the
owner.
* * * *

Fame for dilution purposes is difficult
to prove.

* * * *
Therefore, an opposer . . . must provide
evidence that when the public encounters
opposer’s mark in almost any context, it
associates the term, at least initially
with the mark’s owner. . . . Examples of
evidence that show the transformation of
a term into a truly famous mark include:

1. Recognition by the other
party.

2. Intense media attention.

3. Surveys.

* * * *

But in order to prevail on the ground of
dilution the owner of a mark alleged to
be famous must show a change has
Opposition No. 91170112
29
occurred in the public’s perception of
the term such that it is now primarily
associated with the owner of the mark
even when it is considered outside of
the context of the owner’s goods or
services.

Toro Co. v. ToroHead Inc., 61 USPQ2d at 1180-1181. In other
words, “the transformation of a term into a truly famous
mark” means that “the mark must be a household name.” Thane
International, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 64
USPQ2d 1564, 1575 (9th Cir. 2002).
Opposer’s evidence regarding fame is recounted supra at
pages 14-18. This evidence is not sufficient to show that
opposer’s mark is famous for purposes of dilution. In
concluding that opposer has not met the stringent
requirements of proving fame for purposes of dilution, we
note that opposer’s evidence of fame falls far short of the
quantum and quality of evidence introduced in NASDAQ Stock
Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 2003),
that was found sufficient to prove that opposer’s mark was
famous for dilution purposes. In NASDAQ Stock Market Inc.,
opposer introduced market studies demonstrating that the
awareness of opposer’s stock market among investors reached
more than 80% in 1999. In this case, opposer’s brand
awareness study is of dubious probative value because
opposer did not proffer a witness with first-hand knowledge
of the study to explain how the study was conducted and the
significance of the study. Moreover, to the extent that we
Opposition No. 91170112
30
were able to extrapolate any significance from the findings
in the study, the study showed a high level of brand
awareness in women ages 13-24 but provided no evidence of
about the brand awareness among women in general or men. In
addition, the opposer in NASDAQ Stock Market Inc. introduced
dictionary references, newspaper and magazine articles, and
stock market reports that evidenced a widespread recognition
of opposer’s mark, beyond just investors. The media
evidence introduced by opposer herein fails to show a
widespread recognition of opposer’s mark to the general
population. For example, the vast majority of unsolicited
media recognition for opposer’s COACH mark comprises a
reference to one of opposer’s products as one of many
different fashion buys or trends,36 and the news articles
noting opposer’s renown are too few to support a finding
that opposer’s mark has been transformed into a household
name. Contrary to opposer’s contention, we are not
persuaded that opposer is the subject of “intense” media
recognition.37 Finally, opposer has submitted evidence of

36 See, e.g., opposer’s first notice of reliance Exhibit 276-284.
37 Opposer’s rebuttal brief, p. 20. We are not persuaded by
opposer’s assertion that it has engaged in joint marketing
efforts with other companies such as LEXUS automobiles and CANON
cameras. (Sadler Testimony Dep., p. 32). Opposer failed to
provide any testimony regarding the success of the joint
marketing efforts and the effect of those efforts in promoting
opposer’s mark. Furthermore, opposer’s reference to its eighteen
incontestable trademark registrations is equally unavailing in
opposer’s effort to prove the fame of its mark. (Opposer’s
rebuttal brief, p. 20). The fact that opposer’s federally-
registered trademarks have achieved incontestable status means
Opposition No. 91170112
31
its sales and advertising expenditures only for one year, in
2008, and these figures represent its activities worldwide,
without breaking down the figures to sales and advertising
in the United States.
In view of the foregoing, we find that opposer has not
established that COACH is famous for dilution purposes.
B. When opposer’s mark became famous?

Even assuming that opposer’s mark is famous for
purposes of dilution, we cannot determine when opposer’s
mark became famous. “In a use-based application under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), the
party alleging fame must show that the mark had become
famous prior to the applicant’s use of the mark.” Toro Co.
v. ToroHead Inc., 56 USPQ2d at 1174 n.9; see also Section
43(c)(1) of the Trademark Act of 1946 which provides that
“the owner of a famous mark … shall be entitled to an
injunction against another who, at any time after the
owner’s mark has become famous, commences use of a mark or
trade name in commerce that is likely to cause dilution.”
(Emphasis added). Since the applications at issue are use-
based applications, opposer must prove that its COACH mark

that they are conclusively considered to be valid; it does not
dictate that the mark is “strong” for purposes of determining
likelihood of confusion. Safer Inc. v. OMS Investments Inc., 94
USPQ2d 1031, 1036 (TTAB 2010). Likewise, incontestable
registrations do not prove that a mark is famous for purposes of
dilution.

Opposition No. 91170112
32
became famous prior to any proven first use of COACH by
applicant or, if none is proven, then at least prior to the
filing date of the applications (December 20 and 21, 2004).
Because a date of first use alleged in an application
is subject to proof, a plaintiff claiming dilution need not
necessarily allege and prove the acquisition of fame prior
to the particular use date asserted in a use-based
application, but must allege and prove the acquisition of
fame prior to “the applicant’s use of the mark,” whenever
that use may be shown, at trial, to have occurred. The
earliest evidence of technical trademark use for the mark
COACH in connection with educational materials for preparing
for standardized tests is in applicant’s Fall 2003 Catalog
for Georgia.38 In the 2003 catalog, COACH is used as a
stand alone mark on CD-ROMs. See examples below.

38 Fisher Testimony Dep., Exhibit 45; see also Exhibits 90-92.
Opposition No. 91170112
33
Cover page-

Page 12-

Based on Ms. Sadler’s testimony regarding opposer’s
sales and advertising expenditures, the number of opposer’s
stores and the number of third-party retailers that sell
opposer’s products, and opposer’s 2008 brand awareness
study, we can conclude that opposer’s mark was famous in
Opposition No. 91170112
34
2008 as we did when we determined that opposer’s mark is
famous for purposes of likelihood of confusion. However,
the remaining evidence (i.e., the unsolicited media notices,
long use of the mark, and counterfeiting problems), is not
sufficient to allow us to find that opposer’s mark became
famous prior to the fall of 2003. In view thereof, we find
that opposer failed to meet its burden of proving that its
COACH mark became famous prior to applicant’s first use of
its COACH marks.
On this record, opposer cannot prevail on its dilution
claim because we have found that opposer has not met its
burden of proving that its COACH mark is famous for purposes
of dilution or that its COACH mark became famous prior to
applicant’s first use of its COACH marks. Nevertheless, for
purposes of completeness, we discuss dilution by blurring
and tarnishment.
C. Dilution by blurring.
“Dilution diminishes the ‘selling power that a
distinctive mark or name with favorable associations has
engendered for a product in the mind of the consuming
public.’” Toro Co. v. ToroHead Inc., 61 USPQ2d at 1182,
quoting Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621,
624-25, 217 USPQ 658, 661 (2nd Cir. 1983). Dilution by
blurring occurs when a substantial percentage of consumers,
upon seeing the junior party’s use of a mark on its goods
Opposition No. 91170112
35
[in this case COACH used in connection with educational
materials for preparing for standardized tests], are
immediately reminded of the famous mark [in this case COACH
for 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] and associate the junior party’s use with the
owner of the famous mark, even if they do not believe that
the goods come from the famous mark’s owner. Toro Co. v.
ToroHead Inc., 61 USPQ2d at 1183.
The Board may look to all relevant facts in determining
whether applicant’s COACH marks will blur the
distinctiveness of opposer’s COACH mark. The Trademark Act
provides the following guidance:
In determining whether a mark or trade
name is likely to cause dilution by
blurring, the court may consider all
relevant factors, including the
following:

(i) The degree of similarity between the
mark or trade name and the famous mark.

(ii) The degree of inherent or acquired
distinctiveness of the famous mark.

(iii) The extent to which the owner of
the famous mark is engaging in
substantially exclusive use of the mark.

(iv) The degree of recognition of the
famous mark.

(v) Whether the user of the mark or
Opposition No. 91170112
36
trade name intended to create an
association with the famous mark.

(vi) Any actual association between the
mark or trade name and the famous mark.

1. The degree of similarity between the mark or trade
name and the famous mark.

For purposes of dilution, a party must prove more than
confusing similarity; it must show that the marks are
“identical or very substantially similar.” Carefirst of
Maryland Inc. v. FirstHealth of the Carolinas Inc., 77
USPQ2d at 1514, quoting Toro Co. v. ToroHead, Inc., 61
USPQ2d at 1183; see also Citigroup, Inc. v. Capital City
Bank Group, Inc., 94 USPQ2d 1645, 1666 (TTAB 2010). As the
Board explained in Toro Co. v. ToroHead, Inc.:
The test for blurring is not the same as
for determining whether two marks are
confusingly similar for likelihood of
confusion purposes. “To support an
action for dilution by blurring, ‘the
marks must be similar enough that a
significant segment of the target group
sees the two marks as essentially the
same.’” Luigino’s, Inc., 170 F.3d at
832, 50 USPQ2d at 105139 (quoting 2
McCarthy on Trademarks and Unfair
Competition, §24:90.1 (4th ed. 1998).
Therefore, differences between the marks
are often significant. Mead Data (LEXUS
for cars did not dilute LEXIS for
database services).40

Toro Co. v. ToroHead, Inc., 61 USPQ2d at 1183 (TORO and

39 Luigino’s , Inc. v. Stouffer Corp., 170 F.3d 827, 50 USPQ2d
1047 (8th Cir. 1999).
40 Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc.,
875 F.2d 1065, 10 USPQ2d 1961 (2nd Cir. 1989).

Opposition No. 91170112
37
ToroMR and Design are not substantially similar for dilution
purposes).
For purposes of determining the degree of similarity
between applicant’s mark and the famous mark in the dilution
analysis, we will use the same test as for determining the
similarity or dissimilarity of the marks in the likelihood
of confusion analysis, that is, the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
In our discussion of likelihood of confusion, we found the
marks dissimilar because applicant’s COACH marks and
opposer’s COACH mark engender different meanings and evoke
different commercial impressions. In particular, we found
the different meanings of the respective marks attributable
to the nature of the respective goods and services. The
fact that dilution is a claim that may lie even when goods
or services are disparate does not provide a basis for
disregarding the nature of the involved goods and services,
when considering whether marks are similar for dilution
purposes. The nature of the involved goods and services are
routinely considered when marks are assessed for similarity
in the likelihood of confusion analysis, for
descriptiveness, to determine whether they may be scandalous
or immoral, and in other contexts. We see no compelling
reason why the analysis of the similarity of marks in a
Opposition No. 91170112
38
dilution analysis should depart from this accepted
practice.41
We see the involved marks as dissimilar, because of
their distinct meanings and commercial impressions. Opposer
has not shown that its COACH mark and the connotation it
presents in regard to opposer’s products, has become the
“principal meaning” of the mark so that, when applicant’s
COACH marks are considered in regard to its products and
services, consumers of those products and services will no
longer think of the common, descriptive meaning of an
academic coach or tutor and instead will primarily think of
opposer. See Toro Co. v. ToroHead Inc., supra, 61 USPQ2d at
1180 (owner of the famous mark “must demonstrate that the
common or proper noun uses of the term and third-party uses
of the mark are now eclipsed by the owner’s use of the
mark”).
Because we find that the marks are not similar, we
certainly cannot find the marks as being essentially the

41 The case at hand, and its necessary focus on the meanings of
the respective marks in the context of a dilution claim, presents
a rather unique situation, not previously addressed by the Board
in a precedential decision. In Viacom, supra, the very different
meanings ascribed to MIGHTY MOUSE and MY-T-MOUSE, because of the
involved disparate goods and services contributed to dismissal of
the opposition, but the case did not involve a dilution claim.
In Hormel Foods Corporation and Hormel Foods, LLC v. Spam Arrest,
LLC, (Cancellation No. 92042134; November 21, 2007), the Board
considered a dilution claim involving plaintiffs’ famous SPAM
mark for canned meat products and defendant’s mark SPAM ARREST
(SPAM disclaimed) for a software product designed to eliminate
unsolicited commercial email. However, the Board denied the
petition for cancellation in a nonprecedential decision.
Opposition No. 91170112
39
same, the higher standard required in dilution cases.
Therefore, the similarity, or in this case, dissimilarity of
the marks favors applicant.
2. The degree of inherent or acquired distinctiveness
of the famous mark.

As indicated previously, COACH is an arbitrary or
suggestive (though not highly suggestive) term when used in
connection with hand bags and fashion accessories.
Accordingly, because COACH is arbitrary or suggestive, this
dilution factor favors opposer.
3. The extent to which the owner of the famous mark
is engaging in substantially exclusive use of the
mark.

Although opposer introduced excerpts from websites
featuring 43 book and software titles including the word
“Coach,”42 and applicant introduced 25 third-party
registrations for marks that include the word “Coach,”
applicant did not introduce any evidence as to the extent of
the third-parties’ use and promotion of their marks (or the
books). Third-party registrations alone are not evidence of
use. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not
aware of registrations reposing in the U.S. Patent and
Trademark Office); In re Hub Distributing, Inc., 218 USPQ

42 Opposer introduced the third-party evidence to support its
claim that applicant’s COACH marks are descriptive. See the
discussion below.

Opposition No. 91170112
40
284, 285 (TTAB 1983). Without such evidence, we cannot
assess whether third-party use has been so widespread as to
have had any impact on consumer perceptions. Cf. National
Motor Bearing Co. v. James-Pond Clark, 266 F.2d 709, 121
USPQ 515, 517 (CCPA 1959)(“evidence of present third party
usage . . . indicates a conditioning of the public mind to
the common feature, thereby decreasing any likelihood of
confusion”); Freedom Federal Savings & Loan Ass’n v.
Heritage Federal Savings & Loan Ass’n, 210 USPQ 227, 231
(TTAB 1981)(third-party use of marks without more is not
probative of the impact that such marks have on consumer
perceptions). Accordingly, on this record, we conclude that
opposer has made substantially exclusive use of the COACH
trademark, and therefore, this dilution factor favors
opposer.
4. The degree of recognition of the famous mark.

This Congressionally mandated factor seems redundant in
view of the fact that opposer must establish that its mark
is famous as a prerequisite for establishing a dilution
claim. Nevertheless, it is a factor that we must consider
under the statute. We conclude, therefore, that the degree
of recognition of the famous mark requires us to determine
the level of fame acquired by the famous mark. In other
words, once the mark is determined to be famous as a
prerequisite for dilution protection, we must apply a
Opposition No. 91170112
41
sliding scale to determine the extent of that protection
(i.e., the more famous the mark, the more likely there will
be an association between the famous mark and the
defendant’s mark).43
As indicated above, we have found that COACH is famous
for purposes of likelihood of confusion but not for
dilution. Thus, COACH has not acquired an extraordinary
degree of recognition such that it “is now primarily
associated with the owner of the mark even when it is
considered outside of the context of the owner’s goods and
services” such that the mark has become part of the
vernacular. Toro Co. v. ToroHead, Inc., 61 USPQ2d at 1180-
1181. Accordingly, we find that this dilution factor favors
applicant.
5. Whether the user of the mark or trade name
intended to create an association with the famous
mark.

Opposer failed to present any evidence demonstrating
that applicant intended to create an association with
opposer’s COACH trademark. In this regard, Ms. Fisher
testified that as part of applicant’s effort to standardize
and emphasize the COACH trademark, applicant began using the

43 We have not found any other federal cases noting this apparent
redundancy. With respect to “the degree of the recognition of
the famous mark” factor, district courts and courts of appeal
simply rehash their discussion regarding the fame of the
plaintiff’s mark.
Opposition No. 91170112
42
logo of the coach figure, as well as the tagline “America’s
Best for Student Success.”44
We wanted a mascot with our logo because
it was a little more student friendly, a
little more approachable.

It was more of a cartoon figure so that
it was not absolutely a kind of in-your-
face male or female, which was a
sensitive point to discuss as well, and
so this [the coach figure] was
created.45

* * *

But we tried to make it a friendly kind
of athletic coach so that it would be
kind of fun for kids because test
preparation is kind of distasteful.46

There is simply no evidence to show that applicant tried to
create an association with opposer’s mark. In fact, the
testimony shows that applicant tried to evoke the image of
an athletic coach. In view thereof, this dilution factor
favors applicant.
6. Any actual association between the mark or trade
name and the famous mark.

Opposer failed to present any evidence demonstrating
that there is any actual association between applicant’s
COACH marks and opposer’s COACH trademark. Since we have no
evidence on which to conclude that potential customers of

44 Fisher Testimony Dep., pp. 126-127, 173-176.
45 Fisher Testimony Dep., p. 127.
46 Fisher Testimony Dep., p. 179

Opposition No. 91170112
43
applicant’s products would make any association between the
parties’ marks when used on their respective products, this
dilution factor favors applicant.
7. Balancing the factors.
The facts that the marks are not so substantially
similar as to support a dilution claim, that opposer’s mark
is not famous for purposes of dilution, that there is no
evidence demonstrating any association between the parties’
marks, and that there is no evidence that applicant intended
to create an association with opposer’s mark outweigh the
distinctiveness and substantially exclusive use of opposer’s
COACH trademark. Based on the record before us, opposer has
not demonstrated that the registration of applicant’s COACH
marks will dilute its COACH trademark by blurring.
D. Dilution by tarnishment.
Opposer argued that “[a]pplicant’s promotional items
such as tote bags and clothing bearing the COACH mark may
cause a negative association with Coach’s famous COACH mark
and high-quality goods thereby tarnishing Coach’s
reputation.”47 However, as we indicated above, applicant is
not seeking to register its COACH marks for tote bags and
clothing and, therefore, applicant’s use of its marks on
those products is not before us. We are constrained to
determine the issue of dilution (blurring and tarnishment)

47 Opposer’s Brief, pp. 32-33.
Opposition No. 91170112
44
based on the goods identified in the description of goods.
Finally, there is no evidence in this record suggesting that
opposer’s mark will suffer any negative association by
applicant’s use of its marks. In view of the foregoing,
opposer has failed to prove its claim of dilution by
tarnishment.
Descriptiveness
A term is merely descriptive of goods or services,
within the meaning of Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Whether a term
is merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
Opposition No. 91170112
45
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). In other words, the question is
not whether someone presented with only the mark could guess
what the goods are. Rather, the question is whether someone
who knows what the goods are will immediately understand the
mark as directly conveying information about them (i.e.,
whether someone familiar with applicant’s educational
materials for preparing for standardized tests will
understand COACH to convey information about the educational
materials). In re Tower Tech Inc., 64 USPQ2d 1314, 1317
(TTAB 2002); In re Patent & Trademark Services Inc., 49
USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990);
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363,
364-365 (TTAB 1983); In re Universal Water Systems, Inc.,
209 USPQ 165, 166 (TTAB 1980).
Opposition No. 91170112
46
A “coach” is “a private tutor who prepares a student
for an examination.”48 Other definitions include “a person
who trains an athlete,” “a person who instructs an actor or
singer,” and “to give instruction or advice in the capacity
of a coach; instruct.”49
Opposer introduced into evidence 43 titles of books and
software incorporating the word “coach” in the title.50
Representative samples include the following titles:
1. The Business Coach;51
2. The Storytelling Coach: How to Listen, Praise,
and Bring out People’s Best.52 The synopsis on the website
describes the book as the author’s “basic coaching
principles, guidelines for emotional safety, the four
obstacles for success, and suggestions for overcoming them;”
3. Your Writing Coach: From Concept to Character,
from Pitch to Publication.53 The synopsis on the website
describes this book as showing “aspiring writers how to
overcome fear, get past excuses, and start writing;” and

48 The Random House Dictionary of the English Language
(Unabridged), p. 393 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
49 Id.
50 Opposer’s third notice of reliance.
51 Id. at Exhibit 448.
52 Id. at Exhibit 451
53 Id. at Exhibit 475.
Opposition No. 91170112
47
4. My SAT Coach.54 The game overview describing the
software states that “My SAT Coach helps students prepare
for the SAT exams by presenting timed drills and other
activities in mini-games.”
Applicant introduced 19 third-party registrations
comprised, in whole, or in part, of the word “Coach” in
connection with educational materials and/or services.55 Of
the nine registrations for educational materials, the
exclusive right to use the word “Coach” was disclaimed four
times. Of the ten registrations for educational services,
one registration was issued under the provisions of Section
2(f) and the exclusive right to use the word “Coach” was
disclaimed four times.
We find that applicant’s COACH mark is merely
descriptive when used in connection with educational
materials for preparing for standardized tests because it
immediately conveys to purchasers the purpose of the
materials (i.e., preparing students for an examination). In
the context in which the marks are used, purchasers and
potential purchasers do not have to use any imagination,
thought or perception to reach a conclusion as to the nature
of the goods. The dictionary definition of the word “Coach”

54 Id. at Exhibit 483.
55 Applicant introduced 25 third-party registrations, but six of
the registrations are irrelevant because they are not related to
applicant’s goods in any conceivable way.

Opposition No. 91170112
48
makes clear that a “coach” is “a private tutor who prepares
a student for an examination” or a person who gives
instruction and this is precisely the purpose of applicant’s
educational materials. Moreover, because the word “Coach”
is frequently used in the titles of educational books and
CD-ROMs, we can infer that consumers will directly associate
the use of the word “Coach” as directly informing consumers
that the products are for instruction. While the word
“Coach” is a personification of the act of instructing or
tutoring for an examination, it is not sufficiently
metaphorical to be suggestive. Accordingly, we find that
applicant’s use of the word “Coach” in connection with
educational materials for preparing for standardized tests
is merely descriptive.
Secondary Meaning
As its sixth affirmative defense in its answer to
opposer’s amended notice of opposition, applicant pleaded
that its COACH marks have acquired distinctiveness or
secondary meaning. Based on the record, we find the
following facts:
1. Applicant is the largest publisher of educational
materials for preparing for standardized tests and COACH is
applicant’s primary trademark;56

56 Fisher Testimony Dep., p. 133.
Opposition No. 91170112
49
2. Between 2003 and 2008, applicant’s advertising
expenditures quadrupled.57 Because applicant’s advertising
expenditures and revenues have been designated confidential,
we may refer to them only in general terms. Applicant’s
annual advertising expenditures exceed six figures;58
3. Between 2003 and 2008, applicant has increased its
distribution of promotional pieces from one million in 2003
to four million in 2008. Of the four million promotional
pieces that applicant distributed in 2008, three million
were catalogs and the balance were flyers or brochures;59
4. Between 2003 and 2007, applicant’s revenues have
been substantial.60 They reach seven figures.
5. While applicant’s early use of COACH was as part
of a composite mark featuring a state test name (e.g., TEAMS
COACH in Texas, IGAP COACH in Illinois, the CLAS COACH in
California, etc.), applicant also has been promoting “Coach”
as the name of its series of books since as early as 1989.
In its 1989 catalog for Texas, applicant began referring to
its products as “the TEAMS Coach series.”61 After Texas
changed the name of its test to TAAS from TEAMS in 1990,

57 Fisher Testimony Dep., pp 137-138.
58 Id.
59 Id. at pp. 115-116.
60 Id. at pp. 144-148 and Exhibits 142-144.
61 Id., Exhibit 18.
Opposition No. 91170112
50
applicant promoted itself as the “New Coach in Town.”62 In
1992, applicant used the advertising tagline, “The Team With
The Coach Is The Team That Succeeds!”63 See also
applicant’s 1995 “the California Coach” catalog promoting
“The California CCTP/CLAS Coach Series,”64 1996 Michigan
MEAP Coach Catalog promoting its “Four New Coach Books” and
“EAP 7 HSPT COACH SERIES,”65 1997 Illinois IGAP Coach
Catalog for the Illinois IGAP COACH SERIES offering
“Illinois educators a separate Coach Text for each IGAP
test, and all of our Coach Texts are based 100% on Illinois
IGAP specifications.”66 (Emphasis in the original).
Applicant’s 1997/98 catalog for its complete line of
educational materials included numerous COACH products in
multiple states.67 The table of contents includes the
following new COACH products:

62 Id., Exhibit 19; see also Exhibit 37 (the 2000 Virginia SOL
Coach Series), Exhibit 38 (the 2000 TAAS Coach Series) and
Exhibit 39 (the 2000 Ohio Proficiency Test Coach Series).
63 Id., Exhibit 21.
64 Id., Exhibit 32.
65 Id., Exhibit 34.
66 Id., Exhibit 35.
67 Id., Exhibit 36.
Opposition No. 91170112
51

Applicant’s 2001 catalog cover referenced “Coach Texts
for Test Preparation Basic Skills & Other Supplemental
Materials.”68 By 2002, applicant was regularly touting
“Coach Books and Software” on the cover of its catalogs.69
In 2003, applicant began using COACH as a technical stand
alone mark for its educational materials,70 and has been
continuously using COACH as a stand alone mark since then.71
Opposer contends applicant’s evidence does not prove
that applicant’s COACH marks have acquired distinctiveness
because (1) there is no direct evidence of consumer
recognition of applicant’s marks, (2) Ms. Fisher’s testimony
is self-serving, (3) applicant’s sales success is not
necessarily indicative of acquired distinctiveness, (4)
applicant’s use has not been substantially exclusive and (5)
applicant has not presented any evidence of media

68 Id., Exhibit 40.
69 Id., Exhibits 42-45.
70 Id., Exhibit 45 (software) and Exhibit 46 (books).
71 Id., Exhibits 47-145.
Opposition No. 91170112
52
recognition or copying.72 We disagree with opposer’s
conclusion and find that applicant has shown that its COACH
marks have acquired distinctiveness.
To prove that its mark has acquired distinctiveness
under Section 2(f) of the Trademark Act, an applicant may
submit any “appropriate evidence tending to show the mark
distinguishes [applicant’s] goods.” Yamaha International v.
Hoshino Gakki, 840 F.2d 1572, 6 USPQ2d 1001, 1010 (Fed. Cir.
1988), quoting Trademark Rule 2.41(a), 37 CFR 2.41(a). Such
evidence includes the duration, extent and nature of the use
of the mark in commerce, advertising expenditures, letters
or statements from the trade or public, and other
appropriate evidence. Trademark Rule 2.41(a); see also In
re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424
(Fed. Cir. 2005) (adding copying, unsolicited media
coverage, and consumer surveys). “The amount and character
of the evidence, if any, required to establish that a given
word or phrase … ‘has become distinctive’ of the goods
necessarily depends on the fact of each case particularly on
the nature of the alleged mark.” Roux Laboratories, Inc. v.
Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970); see
also In re Steelbuilding.com, 75 USPQ2d at 1424 (“no single
factor is determinative … the determination examines all of
the circumstances involving the use of the mark”). With

72 Opposer’s Reply Brief, pp. 9-11.
Opposition No. 91170112
53
respect to the nature of the alleged mark, “the applicant’s
burden of showing acquired distinctiveness increases with
the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.” In re
Steelbuilding.com, 75 USPQ2d at 1424.
At the outset, we note that while applicant’s COACH
mark is merely descriptive, it is not so highly descriptive
that applicant has the burden to show a concomitantly high
level of acquired distinctiveness. Also, contrary to
opposer’s contention, applicant is not required to introduce
a consumer survey or other direct evidence of consumer
recognition. Yamaha International v. Hoshino Gakki, 6
USPQ2d at 1010; Roux Laboratories, Inc. v. Clairol Inc., 166
USPQ at 37 n.6. It is well settled that we may determine
the consumer’s reaction to the mark based on the inferences
that we can draw from the evidence that is of record. Id.
Contrary to our findings of fact listed above, opposer
contends that, with the exception of what it characterizes
as Ms. Fisher’s self-serving and uncorroborated testimony,
applicant did not provide any evidence to show that
applicant’s use of COACH had acquired distinctiveness.73 To
the extent that we relied on her testimony, we note that Ms.
Fisher was subjected to rigorous cross-examination, and we

73 Opposer’s rebuttal brief, p. 9.
Opposition No. 91170112
54
find that her testimony was credible.74 There were no
contradictions or inconsistencies and it was sufficiently
definite.
With respect to the nature of applicant’s use of its
COACH marks, we note that while applicant has been using the
word “Coach” as a stand alone trademark on its educational
materials only since 2003, it has been promoting itself as
the “Coach” brand since 1989 through its references to
“Coach series,” “Coach Books and Software,” and “the Coach.”
Its marketing efforts evidently have been effective because
applicant has become the largest publisher of educational
materials for preparing for standardized testing.
Based on the record before us, we find that applicant’s
use of its COACH marks for educational materials for
preparing for standardized tests is, and has been,
substantially exclusive. The requirement for substantially
exclusive use makes allowance for use by others that may be
inconsequential or infringing. L.D. Kichler Co. v. Davoil,
Inc., 192 F.3d 1349, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999);
Yamaha International v. Hoshino Gakki, 6 USPQ2d at 1010
(applicant proved that its product configuration had
acquired distinctiveness despite evidence that four other
companies made similar products prior to registration).

74 As noted above, we specifically did not rely on Ms. Fisher’s
testimony regarding customer representatives noted by opposer in
its brief.
Opposition No. 91170112
55
We note the 43 book and software titles,75 the seven
websites,76 and emails from Ken Butkus, applicant’s
Executive Vice President of Sales and Marketing, warning
that competitors may be using titles or marks with the word
“Coach.”77 This evidence of purported third-party use is of
limited probative value because there is nothing to show
that the public is aware of the books and software or if any
have been sold. Likewise, there is no evidence of whether
the public is aware of the businesses identified by the
websites, the number of the customers or the trading area
for these businesses. See Penguin Books Ltd. v. Eberhard,
48 USPQ2d 1280, 1284 n.5 (TTAB 1998); In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1565 n.16 (TTAB 1996). The book
titles and websites are evidence for what they show on their
face: that a large number of books have “Coach” in their
title and that various companies purport to offer self-help
counseling, consulting in the field of sports coaching,
business consulting services and medical services for low
income children using the word “Coach” as part of their
name.78 This evidence does not show that applicant’s use of

75 Opposer’s third notice of reliance.
76 Fisher Testimony Dep., pp. 158-167 and Exhibits 154-160.
77 Fisher Testimony Dep., pp. 183-188 and Exhibits
78 Two of the websites were for totally irrelevant products:
COACHGUARD microphone shield device and the COACH 2 Incentive
Spirometer, a device to facilitate post-surgical breathing.

Opposition No. 91170112
56
its COACH marks for educational materials for preparing for
standardized examinations is not substantially exclusive.
Of the book and software titles made of record by
opposer few appear to be related to applicant’s subject
matter. The following titles may fall within the penumbra
of educational materials for preparing for standardized
tests:
1. A Writer’s Coach: An Editor’s Guide to Words that
Work (2006);
2. The Effective Literacy Coach: Using Inquiry to
Support Teaching and Learning (2007);
3. Writer’s Coach: The Complete Guide to Writing
Strategies That Work (2007);
4. My SAT Coach (2008); and
5. My Word Coach (2007).
To the extent that these titles may be related to
applicant’s educational materials, they all have publication
dates subsequent to the filing date of applicant’s
applications and the dates of first use of applicant’s
marks.
Finally, the “Coach” marks referenced in the Butkus
emails have little probative value. First, Ms. Fisher, the
witness authenticating the emails, had no knowledge
regarding the products referenced in the emails and Ms.
Fisher testified that to the best of her knowledge the
Opposition No. 91170112
57
companies purportedly publishing the other “Coach” materials
were not competitors of applicant.79 Second, there is no
evidence that the purported third-party “Coach” products
were ever marketed.
In view of the foregoing, we find that applicant’s use
of its COACH marks has made an impact on the purchasing
public in the field of educational materials for preparing
for standardized tests as an indication of origin and has
acquired distinctiveness. In view thereof, applicant has
established its affirmative defense that its COACH marks
have acquired distinctiveness and applicant’s registrations
will issue with the appropriate notation.
Decision: The opposition is dismissed.

79 Fisher Testimony Dep., pp. 183-186.