The Coach Services, Inc. v. Triumph Learning, LLC Case: What it Means for a Trademark to Be “Famous” for Trademark Dilution Purposes

A holder of a “famous” trademark has the right to prevent dilution of its mark—that is, to stop uses of the mark by others that are likely to blur or tarnish the famous mark even in the absence of potential customer confusion. However, the Federal Circuit’s decision in Coach Services, Inc. v. Triumph Learning LLC clarified the high burden that trademark owners have in demonstrating that its mark is famous in order to support a dilution claim. Coach Services, Inc. (“CSI”), the producer of well-known luxury handbags and accessories, learned that its famous COACH trademark is not so famous after all.

In its recent decision, the U.S. Court of Appeals for the Federal Circuit affirmed, in large part, Triumph Learning’s (“Triumph”) victory against CSI, holding that the Trademark Trial and Appeal Board (“TTAB” or “Board”) of the U.S. Patent and Trademark Office did not err in finding that (i) that there was no likelihood of confusion between CSI’s use of its COACH mark for luxury products and Triumph’s use of the COACH mark in connection with educational products, and (ii) that CSI had failed to introduce sufficient evidence to establish that its COACH mark was famous for dilution purposes. The Federal Circuit, however, ruled that the Board made evidentiary errors on its analysis of whether Triumph’s COACH marks had acquired secondary meaning and remanded the case for further proceedings on that issue instead of affirming the TTAB’s decision to dismiss CSI’s opposition outright. This decision highlights the different standards for showing that a mark is famous for likelihood of confusion and dilution and reaffirms earlier Federal Circuit precedent finding that fame, while important, may be insufficient standing alone to establish a likelihood of confusion where other factors set forth in In re E.I. DuPont DeNemours & Co. weigh heavily against finding a likelihood of confusion.

Please see full article below for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.