Advertising Law Blog

How Far Can a Trademark Go?

A trademark is often a company's most valuable asset. It is what distinguishes a company's products or services from that of its competitors, and many times, consumers will make their purchasing decisions based on the goodwill of a particular brand. For that reason, it is not unusual for a company to have a knee-jerk reaction to challenge another company's use or ownership of the identical mark.

A trademark is often a company's most valuable asset. It is what distinguishes a company's products or services from that of its competitors, and many times, consumers will make their purchasing decisions based on the goodwill of a particular brand. For that reason, it is not unusual for a company to have a knee-jerk reaction to challenge another company's use or ownership of the identical mark. When the other company's goods or services are related to those of the trademark owner, the use of and/or attempt to register an identical mark by the other company should be challenged to protect the rights of the trademark owner. What happens, however, when the goods or services of the other company are not related to the goods or services sold by the trademark owner? Can a trademark owner still challenge the other company's use or registration?

Coach Services, Inc. recently found that its famous trademark COACH for handbags and related items was not quite famous enough to successfully challenge the registration of a COACH trademark by Triumph Learning LLC for educational materials used to prepare students for standardized tests. In Coach Services, Inc. v. Triumph Learning LLC, Case No. 11-1129 (Fed. Cir., Feb . 21, 2012) the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board rejecting Coach's opposition to the registration of Triumph's COACH trademarks, finding that there was no likelihood of confusion or dilution. The case is an example of how even famous trademarks have limits and cannot stop all uses or registrations of identical marks.

The court in Coach Services found that although COACH is a famous trademark for determining a likelihood of confusion, other factors weighed in favor of Triumph. Namely, the commercial impressions of the marks, when applied to the goods of the parties, were completely different. In addition, the vast differences between the goods and the trade channels could not support a finding that consumers were likely to believe that there was an affiliation between Triumph's test preparation products and Coach.

The court also found that the COACH trademark, while famous, had not acquired the level of fame necessary to prove trademark dilution. The court explained that in proving fame for dilution purposes, a party "must show that, when the general public encounters the mark 'in almost any context, it associates the term, at least initially, with the mark's owner.'" The word COACH simply has too many other meanings, and while it is associated with Coach in the context of handbags and related items, the word is not associated with Coach in other contexts. In addition, while not discussed by the court, it is worth noting that there are several other registrations for the word COACH for unrelated goods and services such as bandages, firearms, and pest control. Thus, when consumers encounter the word COACH, they would not automatically think of Coach.

It is understandable that a trademark owner does not want its trademark to be used or registered by anyone else, even for unrelated goods or services. However, a trademark owner should understand that its rights may have limitations and carefully evaluate whether it will be able to prove the elements required when challenging the use or registration of the mark by another party.