Coach Services, Inc.v.Triumph Learning LLC

Trademark Trial and Appeal Board

Jun 18, 2012

No. 91170112 (T.T.A.B. Jun. 18, 2012)

Mailed:
June 18, 2012

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
_____

ON REMAND FROM THE U.S. COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

_____

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, Bergsman and Kuczma,1
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

1 Judge Walsh sat on the panel at the oral argument and
participated in writing the September 17, 2010 decision. Judge
Walsh has since retired, and Judge Kuczma has been substituted
for him on the panel deciding this case. The change in
composition of the panel does not necessitate a rehearing of the
oral argument. In re Bose, 772 F.2d 866, 227 USPQ 1, 4 (Fed.
Cir. 1985); Hunt Control Systems Inc. v. Koninklijke Philips
Electronics N.V., 98 USPQ2d 1558, 1560 (TTAB 2011).
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91170112
2
Triumph Learning LLC (“applicant”) filed use-based
applications for the mark COACH, in standard character form
(Serial No. 78535642), Coach (stylized), shown below (Serial
No. 78536065),

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
Opposition No. 91170112
3
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
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, in its answer, denied the salient
allegations in the notice of opposition and, as an
affirmative defense, claimed that if its COACH marks were
found to be merely descriptive, that they have acquired
distinctiveness.
In a decision dated September 17, 2010, the Board found
that there was no likelihood of confusion, that there was no
dilution and that applicant’s mark was merely descriptive,
but that it had acquired distinctiveness. Coach Services
Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB 2010).
On appeal, the Court of Appeals for the Federal Circuit
affirmed the Board’s findings that there is no likelihood of
confusion, there is no dilution, and that applicant’s mark
Opposition No. 91170112
4
is merely descriptive. However, the court vacated “the
Board’s decision solely on its finding of acquired
distinctiveness” and remanded for further proceedings.
Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1730 (Fed. Cir. 2012).
Specifically, the court noted that there were two
errors in the Board’s analysis of acquired distinctiveness.
First, the Board did not consider five book titles that were
published after applicant filed its applications. “Acquired
distinctiveness and buyer recognition is to be tested in an
opposition proceeding as of the date the issue is under
consideration. The filing date is not a cutoff for any
evidence developing after that time.” Id., quoting Target
Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007).
Accordingly, the case was remanded “so that the Board can
assess the extent to which those titles might cut against a
claim of ‘substantially exclusive use.’” Coach Services
Inc. v. Triumph Learning LLC, 101 USPQ2d at 1730.
Second, the court found that applicant failed to lay
the proper foundation to establish that the catalogs
identified by applicant’s witness Jane Fisher were prepared
and kept as business records. “Accordingly, on remand, the
Board must address the weight, if any, to be given to pre-
July 2003 documents in the absence of any testimony
authenticating them or addressing their use. The Board must
Opposition No. 91170112
5
then assess whether these apparent gaps in [applicant’s]
proofs impact the Board’s determination that the mark was in
continuous use during any relevant period.” Id.
We presume the parties are familiar with the record in
this case.
Secondary Meaning/Acquired Distinctiveness
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:2
1. Applicant began using the word COACH as a
trademark in 1986.
Applicant first used the word COACH as a
trademark in connection with its sale of
various printed test preparation
materials in 1986. … Since 1986, the
products on which Applicant has used
various COACH marks have included:
textbooks; teach guides; software
applications; as well as free
promotional items such as t-shirts, polo
shirts, canvas tote bags, buttons, pens,
whistles, and caps.3

2 Pursuant to the instructions in the Federal Circuit’s decision
on appeal, the Board has not considered any pre-2003 documents,
nor has the Board considered any testimony by Jane Fisher
regarding activities taking place prior to 2003.
3 Opposer’s first notice of reliance, Exhibit 236, applicant’s
responses to opposer’s first set of interrogatories, Nos. 1-3.
Opposition No. 91170112
6
2. Applicant is the largest publisher of educational
materials for preparing for standardized tests and COACH is
applicant’s primary trademark;4
3. Between 2003 and 2008, applicant’s advertising
expenditures quadrupled.5 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;6
4. 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;7
5. Between 2003 and 2007, applicant’s revenues have
been substantial.8 They reach seven figures annually; and
6. In 2003, applicant began using COACH as a stand
alone mark for its educational materials,9 and has been
continuously using COACH as a stand alone mark since then.10
Opposer contends applicant’s evidence does not prove
that applicant’s COACH marks have acquired distinctiveness

4 Fisher Testimony Dep., p. 133.
5 Fisher Testimony Dep., pp. 137-138.
6 Id.
7 Id. at pp. 115-116.
8 Id. at pp. 144-148 and Exhibits 142-144. Opposer noted
“Indeed, that Applicant has ‘multiple millions’ in sales casts
grave doubt on its portrayal of itself as a ‘smaller company’
with few resources.” (Opposer’s Reply Brief, p. 10 n.6).
9 Id., Exhibit 45 (software) and Exhibit 46 (books).
10 Id., Exhibits 47-145.
Opposition No. 91170112
7
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
recognition or copying.11 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 distinctive 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) (acquired distinctiveness may be shown by
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

11 Opposer’s Reply Brief, pp. 9-11.
Opposition No. 91170112
8
distinctive’ of the goods necessarily depends on the facts
of each case and 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 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.
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
Opposition No. 91170112
9
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.12 To
the extent that we relied on her testimony, we note that Ms.
Fisher was subjected to rigorous cross-examination, and we
find that her testimony was credible.13 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 1986. Its marketing efforts
evidently have been effective because applicant has become
the largest publisher of educational materials for preparing
for standardized testing.14
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

12 Opposer’s rebuttal brief, p. 9.
13 As indicated above, the Board did not rely on Ms. Fisher’s
testimony regarding any pre-2003 activities.
14 Fisher Testimony Dep., p. 133.

Opposition No. 91170112
10
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).
Opposer introduced into evidence 43 titles of books and
software incorporating the word “coach” in the title,15
seven websites,16 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.”17 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;
2. The Effective Literacy Coach: Using Inquiry to
Support Teaching and Learning;
3. Writer’s Coach: The Complete Guide to Writing
Strategies That Work;

15 Opposer’s third notice of reliance.
16 Fisher Testimony Dep., pp. 158-167 and Exhibits 154-160.
17 Fisher Testimony Dep., pp. 183-188 and Exhibits 449-450.
Opposition No. 91170112
11
4. My SAT Coach; and
5. My Word Coach.
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).
With respect to the book titles, the title of a single
creative work, as we have here, does not serve as a source
identifier that would demonstrate that applicant’s use of
its COACH mark is anything other than substantially
exclusive. See Herbko International Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002)
(“the title of a single book cannot serve as a source
identifier”); In re Cooper, 254 F.2d 611, 117 USPQ 396, 400
(CCPA 1958), cert denied, 358 U.S. 840, 119 USPQ 501 (1958)
(“A book title … identifies a specific literary work … and
is not associated in the public mind with the publisher,
printer or bookseller …”).
The book titles and websites are evidence for what they
show on their face: that a large number of books have
Opposition No. 91170112
12
“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.18 This evidence does not show that
applicant’s use of its COACH marks for educational materials
for preparing for standardized examinations is not
substantially exclusive.
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
companies purportedly publishing the other “Coach” materials
were not competitors of applicant.19 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

18 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.
19 Fisher Testimony Dep., pp. 183-186.

Opposition No. 91170112
13
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.