Proving fame for trademark dilution purposes requires satisfying a heavy burden. A plaintiff alleging fame must establish that its mark is “widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2). This is a higher standard than proving fame for likelihood of confusion purposes, where the fame of the prior mark is one among the familiar du Pont factors. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Fame is a prerequisite to dilution protection and, unlike the spectrum of fame recognized in the likelihood of confusion analysis, fame in the dilution context is a binary proposition. A negative ruling on fame can be a severe setback to a trademark owner’s enforcement position. The stakes in alleging dilution and setting out to prove fame, therefore, are high. The Federal Circuit’s recent decision in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (“Fed. Cir. Decision”), illustrates this and reveals significant evidentiary pitfalls that can prevent a mark – even one that is a very familiar brand name – from satisfying this precondition for dilution.
Coach Services, Inc. (“Coach”), the well-known global maker of luxury handbags, luggage, wallets, clothing, and other personal accessories under the mark COACH, opposed Triumph Learning LLC’s (“Triumph”) applications to register the word mark COACH and the design:
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Triumph’s applications covered computer software and printed materials used to assist students in preparing for standardized tests. Coach opposed Triumph’s applications on the grounds of likelihood of confusion, likelihood of dilution, and descriptiveness. After an inter partes trial and hearing, the Trademark Trial and Appeal Board (the “Board”) dismissed Coach’s opposition, finding that Triumph’s COACH marks did not create a likelihood of confusion or dilution with Coach’s mark and that Triumph’s marks were descriptive but had acquired distinctiveness. Coach Services, Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600 (T.T.A.B. 2010) (“Board Decision”). In reaching this conclusion, the Board determined that Coach’s COACH marks were famous for purposes of confusion but not dilution. Coach appealed.
The Lanham Act’s anti-dilution provisions direct courts to consider “all relevant factors” in determining fame, including the following non-exhaustive factors: (i) “the duration, extent, and geographic reach of advertising and publicity” of the plaintiff’s mark; (ii) “the amount, volume, and geographic extent of sales of goods or services offered under the mark”; (iii) the extent of actual recognition of the mark”; and (iv) whether the mark was registered on the principal register. 15 U.S.C. § 1125(c)(2)(A). Unfortunately for Coach, the Board found – and the Federal Circuit affirmed – Coach’s evidence insufficient to prove the COACH mark is famous.
In support of the first factor – the duration and extent of Coach’s advertising and publicity – Coach submitted hundreds of unsolicited media references to its COACH mark and products, as well as evidence of Coach’s joint marketing efforts to promote COACH products with other well-known brands, such as LEXUS and CANON. The Board found the media references insufficient because the “vast majority” referred to COACH as one of several brands and because too few of the articles spoke specifically to the renown of the COACH mark. Board Decision, 96 U.S.P.Q.2d at 1611. The Federal Circuit affirmed on this point, and noted that, although Coach’s mark certainly has “achieved a substantial degree of recognition,” many of the articles Coach submitted were published subsequent to the filing of Triumph’s applications. Because “an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application” it opposes, the Federal Circuit disregarded all of Coach’s media references dated after Triumph’s December 2004 filings. Fed. Cir. Decision, 668 F.3d at 1375 (quoting Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1174 (T.T.A.B. 2001)). The Federal Circuit agreed that Coach’s evidence of joint marketing under the COACH mark also failed to satisfy this fame factor because Coach did not submit any evidence showing the success or effect of its marketing efforts with consumers. Id. As a result, the Federal Circuit affirmed the Board’s negative findings with regard to this factor.
In attempting to prove the second fame factor – the amount and volume of sales and advertising under the mark – Coach submitted by notice of reliance its annual reports from 2000 to 2008, which showed extensive sales and advertising of COACH-branded products dating back to years before Triumph’s applications. The Board, however, rejected this evidence on the ground that Coach did not authenticate the annual reports and that Coach could not introduce them merely by notice of reliance as a printed publication pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e). Historically, the Board did not permit parties to enter annual reports into evidence by notice of notice of reliance; however, in 2010 in Safer Inc. v. OMS Investments Inc., 94 U.S.P.Q.2d 1031, 1039 (T.T.A.B. 2010), the Board expanded the scope of documents admissible as printed publications to accept documents printed from the Internet when those documents had the proper indicia or authenticity and public accessibility (e.g., website URL and date accessed). Here, the Federal Circuit affirmed the Board’s evidentiary decision to reject Coach’s annual reports, finding that the reports were not admissible as printed publications under the Board’s pre-Safer rules. Fed. Cir. Decision, 668 F.3d at 1363-64. The court similarly rejected Coach’s argument that the Board should have accepted the reports under Safer because they were publicly available online, explaining that the documents Coach submitted were not taken from the Internet and nonetheless did not include the indicia of authenticity Safer required for Internet documents. Id. Thus, Coach’s only evidence of sales and advertising expenditures was the testimony of Coach’s former General Counsel, who testified only about Coach’s 2008 figures. Although the amounts were large, they were insufficient evidence of fame because they corresponded to dates well after Triumph’s filings.
Next, the Federal Circuit affirmed the Board’s finding that Coach’s internal brand awareness study was “of dubious probative value” on the issue of fame. Fed. Cir. Decision, 668 F.3d at 1375 (quoting Board Decision, 96 U.S.P.Q.2d at 1611). The 2007 study surveyed women between the ages of 18 and 24, finding 96% aided awareness of the COACH brand. Although this is a high figure, the Board and Federal Circuit both noted that Coach conducted the survey years after Triumph filed its applications. Furthermore, the survey did not evidence any recognition by women in other age groups or by men. For a mark to be famous, the dilution statute requires that it be “widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A). This 2006 revision to the statute foreclosed the possibility of niche market fame, which was all Coach’s survey demonstrated.
The Federal Circuit accepted Coach’s evidence of its sixteen COACH registrations as relevant to the fame analysis, but found they could not be conclusive evidence of fame. Fed. Cir. Decision, 668 F.3d at 1374.
Coach also referred the Board to two Second Circuit decisions, decided in 1991 and 2002, which noted consumers’ recognition of Coach as evidence of the fame of its COACH mark. The Board did not specifically address those cases, but the Federal Circuit agreed with Triumph that they were irrelevant and not probative of fame because the 1991 case did not involve a dilution claim and both cases focused on the hangtag features of Coach’s products rather than the COACH mark alone. Id. at 1375-76.
Upon analyzing Coach’s evidence of fame, the Federal Circuit affirmed the Board’s finding that, based on the evidentiary record, Coach had failed to prove the fame of its COACH mark, which was dispositive of Coach’s dilution claim.
There are many differences between the federal rules and the Board’s rules for introducing evidence into the record. There also are many difficulties in carrying the heavy burden of proving fame for a winning dilution claim. Faced with these challenges, it is not uncommon for litigants in Board proceedings to propound evidence that is held to be defective, insufficient, or unpersuasive. The case could be made that COACH actually is a famous mark that should enjoy dilution protection; however, the Board and Federal Circuit found otherwise in Coach v. Triumph based on the evidence of record.
Future litigants should avoid the pitfalls that plagued Coach’s evidence. First, as the Federal Circuit noted, “Although the Board’s requirements for admission of evidence via a notice of reliance are specific, and do not mirror the Federal Rules of Evidence, they can be readily learned and easily satisfied.” Fed. Cir. Decision, 668 F.3d at 1365. Parties asserting fame must either follow the Board’s rules for submitting notices of reliance carefully – for instance, by satisfying the requirements for admitting documents as printed publications – or enter such evidence into the record with proper authenticating testimony, either through trial depositions or, if available by stipulation, by declaration. Typically, the Board grants parties wide latitude to adjust the rules for entering evidence by agreement, as in its Accelerated Case Resolution (“ACR”) procedure. Regardless, the Board tends to enforce its rules and any agreed upon modifications to the tee. Therefore, parties must be cognizant of the Board’s specific evidentiary requirements to avoid exclusion of potent evidence – here, annual reports showing hundreds of millions of dollars worth of relevant sales and advertising expenditures.
Proving fame for dilution purposes requires very specific evidence. Because fame for dilution is a yea or nay prerequisite to any viable dilution claim, the stakes for entering sufficient and persuasive evidence are high, especially in Board proceedings where evidentiary objections only are decided after the completion of all trial briefing. Parties must also take care to show that their marks became famous before their opponents’ applications were filed, and should cultivate evidence accordingly. Similarly, parties should make sure that any surveys, polls, or recognition studies encompass a sample broad enough to pass for the general U.S. consuming public if they are going to be used to prove fame. Finally, evidence of advertising alone may not satisfy the Board; rather, parties should endeavor to prove the fruits of their marketing, either through timely brand awareness surveys (preferably showing unaided consumer recognition of the mark) or by other means. With this evidence in the record, the owner of a mark that is famous in the marketplace is in the best position to secure a finding of fame from the Board.