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.