Even the Iconic Cannot Always Claim Dilution

March 12, 2012, 2:11 PM

In previous posts, we have explained that violating the dilution provisions of the Federal Trademark laws is difficult and only available to the uber-famous. As living proof of this point, the Federal Circuit recently denied such protection to the iconic Coach brand. Without a doubt, Coach is one of the most famous American high fashion, handbag manufacturers, ubiquitously present in nearly all high fashion magazines and annually selling billions of dollars of Coach branded products. Yet, even with this type of fame, the company could not avail itself of the anti-dilution provisions of the Trademark Dilution Revision Act of 2006 ("TDRA"), 15 U.S.C. 1125(c), to block the registration of the mark coach by Triumph Learning who made and marketed test preparation materials under that name.

Dilution claims are the stepchildren of the trademark world because, by their very nature, the claims do not involve products that compete. Rather, the claims are based on a claim that a noncompeting use intrinsically devalues the strength of the brand. As such, courts have struggled to limit its use. In Coach Servs., Inc. v. Triumph Learning LLC, No. 2011-1129, 2012 WL 540069 (Fed. Cir. Feb. 21, 2012), the Federal Circuit held that to take advantage of the TDRA, the mark had to not only be famous but, since its mark was based on a common word with other ordinary uses, the mark holder had to establish that the ordinary "uses of the mark are now eclipsed by the owner's use of the mark . . . in almost any context" and that the mark has become "a household name." Despite its extensive sales and ubiquity, a multitude of registered trademarks, extensive survey evidence, and even two Second Circuit decisions finding the mark famous, the Federal Circuit held that Coach had not shown that its use of the Coach mark had become a household name that eclipsed the other, ordinary uses of coach. In the end, the Court may be signaling just how careful it will be with extending trademark protection beyond the confines of competition.

Stephen E. Noona is the head of Kaufman & Canoles Trial Section and Co-chair of its Intellectual Property Law and Franchising Practice Group. In his 24 years of practice, he has been counsel in hundreds of intellectual property cases in federal courts across the nation, including over ninety (90) patent cases in the Eastern District and is Fellow in the American College of Trial Lawyers. He regularly appears before the judges in all four Divisions of the Eastern District on intellectual property matters. --Stephen E. Noona