Coach Services, Inc., of the design house offering handbags, footwear and other luxury goods, recently lost a design mark battle challenging registerability of E&D Trading, Inc.’s (“E&D”) mark for DP in stylized format (the “Challenged Mark”) on the basis that it is likely to cause confusion with Coach’s federally registered “Signature C Design” marks. The parties’ marks, shown below, both cover eyewear, among other goods.
Coach’s protest was lodged with the Trademark Trial and Appeal Board (“TTAB”), an administrative body that is part of the Trademark Office and has authority to rule on challenges to registerability of marks, among other issues. TTAB proceedings and procedure are governed by the Federal Rules of Civil Procedure, as well as the detailed rules set forth in the TTAB’s Manual of Procedure (“TBMP”).
The TTAB found that Coach did not properly follow the procedure for introducing its federal registrations as evidence. As a result, Coach’s ownership of its Signature C Design mark registrations was not in evidence in the proceeding and the registrations were not able to be considered by the TTAB. However, the parties had stipulated to the priority of Coach’s trademark rights and the nature of its goods, so the matter was not dismissed for lack of standing.
After determining that Coach had standing and priority of rights, the TTAB evaluated whether the Challenged Mark was so similar to the Signature C Design marks as to be likely to cause confusion. That analysis is governed by the standard set forth in In re E.I. DuPont de Nemours & Co., which identifies thirteen factors (the “DuPont factors”) that “must be considered” when testing for likelihood of confusion under Section 2(d) [of the Trademark Act].” 476 F.2d 1357, 1360 (C.C.P.A. 1973). Among those factors are the similarity of, respectively, the parties’ marks, goods, channels of trade, and target customers.
Based on the parties’ stipulations and other evidence in the action, the TTAB found the parties’ goods to be closely related, and identical insofar as both parties’ marks covered sunglasses. Because of that, the TTAB presumed that the parties’ goods moved through the same channels of trade and were offered to the same classes of customers. Thus, the TTAB found that these three DuPont factors favored a finding of likelihood of confusion.
The TTAB also reviewed Coach’s assertion that it was entitled to a broad scope of trademark protection because its Signature C Design marks are famous. Coach’s submissions included evidence of “strong sales of its goods and extensive advertising and marketing expenditures.” Nevertheless, the TTAB rejected Coach’s assertion of fame, finding that the evidence was insufficient to provide the “commercial context for its raw statistics” or “evidence of actual consumer recognition of [the asserted] marks.”
Ultimately, the TTAB’s decision turned on its analysis of the similarity of the marks, or lack thereof. The TTAB noted that the Challenged Mark was not a repeating pattern and that there was no evidence in the record that it was used in that way. It also refused to evaluate similarity by considering the Challenged Mark alongside a cropped version of the Signature C Design marks that showed only two Cs, one facing the other in mirror image. That refusal was based on the lack of evidence that Coach owned any trademark rights in the cropped form of the mark. The TTAB went on to find that the parties’ marks were sufficiently distinct in sound, appearance and commercial impression that there was no likelihood of confusion, and dismissed the action.
This decision is significant in that it provides guidance to practitioners seeking to establish fame of their clients’ trademarks in TTAB proceedings, as well as the importance of following TTAB procedure in establishing a record for the TTAB’s consideration.
We will continue to update our readers on the latest developments before the TTAB.
*Trademark images courtesy of USPTO.gov.