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HQ 473653





March 20, 2003

TMK-01-RR:IT:IP 473653 RSB

CATEGORY: TRADEMARKS

Timothy J. Morrison
Manager, Intellectual Property
Coach Services, Inc.
516 West 34th Street
New York, NY 10001

RE: Trademark Infringement; Coach “Signature C Design” Trademark (U.S. Patent & Trademark Office [USPTO] Registration No. 2,626,565; Bureau of Customs and Border Protection [BCBP] Recordation No. TMK 02-00948 and USPTO Registration No. 2,592,963; BCBP Recordation No. TMK 02-00659)

Dear Mr. Morrison:

This is in response to your letter dated January 9, 2003, requesting and infringement determination and enforcement against marks that you state infringe on Coach’s registered and recorded “Signature C Design” trademark. The “Signature C Design” mark is registered and recorded for international classes 18 and 25.

FACTS:

According to your letter, the allegedly infringing marks are the “G,” “GO” and oval designs. Along with the letter and supporting documents, this office received samples of genuine goods and allegedly infringing goods that bear six varying designs: a “G” design, a “GO” design, an oval design, a “CO” design, a “CC” and “OO” design and a “Q” design (the marks will be described in the following “Law and Analysis” section).

The “Signature C Design” mark consists of four pairs of the stylized letter “C” arranged in the following positions: one pairing consists of the open ends of the letter facing south, one pairing consists of the open ends of the letter facing north, one pairing consists of the open ends facing each other and joined at the bottom ends of the letters, and one pairing facing each other and joined on the top ends of the letters. These arrangements recur throughout the design. Each “C” is thick through the center of the letter and thin through the remainder of the letter with a wedge-tip on one end of the letter. A drawing of the trademark is featured below.

“Signature C Design “ Trademark

The “Signature C Design” mark as used in commerce is as previously described. The mark is imprinted on goods in international classes 18 (bags, wallets etc.) and 25 (clothing including footwear). Photographs of sample goods bearing the “Signature C Design” mark appear below.

Samples of genuine Coach goods bearing the “Signature C Design” mark

ISSUE:

Whether the “G” design, “GO” design, oval design, “CO” design, “CC” and “OO” design and “Q” design infringe upon the registered and recorded “Signature C Design” trademark (USPTO Registration No. 2,626,565; BCBP Recordation No. TMK 02-00948 and USPTO Registration No. 2,592,963; BCBP Recordation No. TMK 02-00659).

LAW AND ANALYSIS:

Section 526(e) of the Tariff Act of 1930, as amended (19 U.S.C. §1526(e)) provides that merchandise bearing a counterfeit mark (within the meaning of section 1127 of Title 15) that is imported into the United States in violation of 15 U.S.C. §1124 shall be seized and, in the absence of the written consent of the trademark owner, forfeited for violation of the customs laws, where the trademark in question is registered with the U.S. Patent and Trademark Office and recorded with Customs. 19 U.S.C. §1526(e). See also, 19 C.F.R. §133.21(b). The term “counterfeit” is defined as a “a spurious mark that is identical with, or substantially indistinguishable from a registered mark.” 15 U.S.C. §1127. See also, 19 C.F.R. §133.21(a).

The Customs legal standard for determining infringement where the suspect mark is not counterfeit is “confusingly similar.” Under this standard, the dispositive issue is whether the suspect mark is likely to cause confusion, to cause mistake or to deceive. 15 U.S.C. §1114. In this regard, a central inquiry is whether there exists a “likelihood of confusion,” i.e., whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled or simply confused, as to the source of the goods in question.” Mushroom Maker, Inc. v. R.G. Barry Corp., 580 F.2d 44, 199 U.S.P.Q. 65 (2d Cir. 1978). Confusion may take a number of forms, e.g., initial interest confusion; post sale confusion; confusion as to source, sponsorship, affiliation or connection. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition at §23:5 (4th ed. 1999)

In certain cases, trademark protection may be extended to related goods to guard against “numerous evils” such as consumer confusion. Id. at §24:18. See also, Mobil Oil Corp. v. Pegassus Petroleum Corp., 818 F.2d 254, 2 U.S.P.Q.2d 1677 (2d Cir. 1987); Worthington Foods, Inc. v. Kellogg Company, 732 F. Supp. 1417 (U.S. Dist. 1990). This is referred to as the “related goods doctrine.” As is the case in determining trademark infringement of competitive goods, the modern rule of law on related goods gives the trademark owner protection against use of its mark on any product or service which would reasonably confuse the buying public as to the source of the product or service. 4 McCarthy at §24:6, 24:24.

In determining the likelihood of confusion as to the source of a product, the Second Circuit in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961) set forth the following factors to be considered in a trademark infringement action:
the strength of the mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, the reciprocal of defendant’s good faith in adopting its own mark, the quality of defendant’s product, and the sophistication of the buyers.

The determinative value of each factor varies case-by-case and it is to be used as an aid in determining the ultimate issue of likelihood of confusion. Therefore, it is not necessary to discuss all of the factors in every instance where the Polaroid test is employed.

In this case, we will discuss the following three Polaroid factors: the strength of the mark, the degree of similarity between the registered and recorded trademark and the suspect marks and the proximity of the products.

STRENGTH OF THE MARK

The strength of a mark refers to its distinctiveness or tendency to identify goods as emanating from a particular source. Gruner + Jahr USA Pub., 793 F. Supp. 1222 (S.D.N.Y. 1992), aff’d, 991 F.2d 1072. The more famous and well-known the mark, the more likely it is that encroachment on it will produce confusion. Id. at §24:49. See also, Champions Golf Club v. Champions Golf Club, 78 F.3d 1111, 38 U.S.P.Q.2d 1161 (6th Cir. 1996). Non-verbal marks such as letters are classed as “fanciful.” McCarthy at §11:8. Fanciful marks are referred to as the “strongest” of all marks, in that their novelty creates a substantial impact on the buyer’s mind—if sufficiently advertised and recognized. Id. at §11:6. See also, Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 146 U.S.P.Q. 566 (7th Cir. 1965). Consequently, the likelihood of confusion of a “strong” mark with similar marks will be more readily inferred. Arrow Distilleries, Inc. v. Globe Brewing Co., 117 F.2d 347, 48 U.S.P.Q. 157 (4th Cir. 1941).

The Seventh Circuit, in Westward Coach Manufacturing Co., Inc. v. Ford Motor Co., stated, “A mark is strong if it is conspicuously distinctive; it is distinctive if the public has already been educated to accept it as the hallmark of a particular source. A mark can be distinctive . . . because it has been the subject of wide and intensive advertisement . . . ” Westward Coach Manufacturing Co., Inc. v. Ford Motor Co., 388 F.2d 627, 634 (7th Cir. 1968). See also, 3 Callman, Unfair Competition and Trade-Marks §69 (2d ed.).

The “Signature C Design” mark consists of the letter “C” arranged in a variety of positions. This falls into the fanciful category, thus, it is inherently a stronger mark than other types of marks. And, due to extensive advertising, marketing, and promotional efforts, it has become a very well known mark. In the last two years, Coach, reportedly, has spent more than $4,000,000 on major magazine, newspaper and outdoor media advertisements in major cities, promoting products bearing the mark. Coach’s marketing efforts are said to include the appearance of advertisements for the “Signature C Design” in most popular publications. Further, according to some reports, Coach’s sales have soared, in large part, due to the new “Signature C Design” collection. As such, we find that the subject protected “Signature C Design” mark is properly characterized as “strong.”

SIMILARITY OF MARKS

In determining the similarity of marks, courts often follow the three-part test of the 1938 Restatement §729(a) often characterized as the “sound, sight and meaning” trilogy. Plough, Inc. v. Kreis Laboratories, 314 F.2d 635 (9th Cir. 1963). That is, the conflicting marks are to be compared with respect to similarity of pronunciation, appearance, and verbal translation. Watkins Products, Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496 (7th Cir. 1962). A similarity as to any one of the trilogy may be sufficient to support a holding of a likelihood of confusion. In re White Swan, Ltd., 8 U.S.P.Q.2d 1534 (T.T.A.B. 1988). In determining the similarity in appearance, one should look to the overall impression created by the mark as a whole rather than comparing individual features of the marks. Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500 (5th Cir. 1980). The marks do not have to be identical; it is sufficient that enough be taken to deceive the public. 3 McCarthy §23:20. See, McLean v. Fleming, 96 U.S. 245 (1878).

The suspect “G” design mark consists of four pairs of the stylized letter “G.” The “G” is thick through the center of the letter and thinner toward the ends; it has a wedge-tip on the top end of the letter and a thin line at the bottom end of the letter that renders the letter a “G” rather than a “C.” The pairs are arranged in four different recurring settings. Photographs of sample goods from international classes 18 (bags and wallets) and 24 (fabric) bearing the “G” mark will follow.

Suspect wallet, bag and fabric bearing the allegedly infringing “G” design

In comparing the “G” design to Coach’s “Signature C Design” mark, the two designs are identical in the styling and the placement of the letters including the recurring pattern sequence. The only difference between the two designs is that a very thin appendage is added to the arc of the suspect mark rendering it a “G” rather than a “C.” The overall appearance of the “G” design is substantially indistinguishable from the “Signature C Design.”

The “GO” design mark consists of the letter “G” and “O” placed side-by-side. The letter “G” is thick through the center of the letter and thinner at the ends; it has a wedge-tip on the top end of the arc and a thin line at the bottom end of the arc that renders the letter a “G” rather than a “C.” The “G” faces every angle. The letter “O” is thick on one end gradually decreasing to a thin end. The “O” appears with the thick end facing north, south, east and west. The letters appear in a recurring sequence of angles. A photograph of a sample bag bearing the “GO” mark is provided below.

Suspect bag bearing the allegedly infringing “GO” design

The styling of the letters of the suspect “GO” design is identical to that of Coach’s “Signature C Design”: thick on one end and thin on the other end. The differences in this design from the “Signature C Design” is the use of the letters “G” and “O” rather than the “C” and the fact that the letters stand alone. As a result there are fewer pattern variations than in the “Signature C Design.” This design is sufficiently similar to the “Signature C Design,” that it evokes the image of the Coach design, but it is not identical or substantially indistinguishable from the Coach design; it is confusingly similar to the “Signature C Design.”

Oval Design

The oval design consists of pairs of ovals thick on one end and thinner on the other end arranged in four different recurring patterns. A photograph of a sample bag bearing the oval design mark described is provided below.

Suspect bag bearing the allegedly infringing oval design

The styling of the oval is identical to that of the “Signature C Design” in that it is thick on one end and thin on the other end. The difference is that the suspect mark consists of ovals or closed loops while the “Signature C Design” consists of loops with an opening or the letter “C.” The thin end of the oval is so fine, however, that its appearance is almost identical to that of the “C” in the “Signature C Design.” The recurring pattern sequence of the two designs is identical. This oval design mark is substantially indistinguishable from the “Signature C Design” mark.

The “CO” design consists of pairs of the letters “C” and “O” arranged horizontally and vertically in a recurring sequence. A photograph of a sample shoe bearing the mark will follow.

Suspect shoe bearing the allegedly infringing “CO” design

The styling of “C” and “O” are identical to the “C” in the “Signature C Design”: thick on one end and thin on the other end. The recurring pattern sequence between the two marks is similar. The difference between this suspect mark and the “Signature C Design” mark is that the suspect mark consists of a “C” and an “O” while the “Signature C Design” mark consists of only the letter “C.” The thin end of the letter “O” is so fine that it evokes the image of the “C” in the Coach design. The overall appearance of the suspect mark is substantially indistinguishable from the “Signature C Design.”

The “CC” and “OO” design consists of a pair of “C’s” side-by-side and a pair of “O’s” connected to each other with a wedge at the point of connection. The “C” is thick at the center and thinner as it reaches the opening; it has a wedge at the tip of one end. The “O” also is thick on one end and thinner on the other end. A photograph of a piece of sample fabric bearing the design is provided below.

Suspect fabric bearing the allegedly infringing “CC” and “OO” design

The styling of the letters in this design is identical to the “C” in the “Signature C Design”: thick on one end and thin on the other end. The recurring pattern sequence also is identical to that of the “Signature C Design.” The difference between the two designs is that the suspect design includes the letter “O” while the “Signature C Design” only consists of the letter “C.” One end of the “O” in the suspect mark, however, is so fine that it evokes the image of the “C” in the “Signature C Design.” The differences between the two designs are so subtle that the overall appearance of the suspect mark is substantially indistinguishable from the “Signature C Design” mark.

The “Q” design consists of four pairs of the letter “Q” arranged in varying, but recurring patterns. The ovals are thick on one end and thinner on the other end. A photograph of a sample piece of fabric bearing the mark is provided below.

Sample of the allegedly infringing “Q” design

The styling of the letter “Q” is identical to the “C” in the “Signature C Design”: thick on one end and thin on the other end. The recurring pattern sequence is identical to that of the “Signature C Design.” The only difference between the protected mark and the suspect mark is that the suspect mark is composed of the letter “Q” while the “Signature C Design” mark is composed of the letter “C.” One end of the “Q” is so fine, however, that it evokes the image of the “C” in the “Signature C Design” mark. The suspect “Q” design mark is substantially indistinguishable from the “Signature C Design” mark.

PROXIMITY OF THE PRODUCTS

In regard to the proximity of products, the question is whether it is likely that consumers mistakenly will assume that a service (or product) is associated with the trademark holder. Lois Sportswear U.S.A. Inc. v. Levi Strauss & Co., 799 F.2d 867, 874 (2d Cir. 1986). The “G,” “GO” oval and “CO” designs appear on products that are the same as the products for which the “Signature C Design” trademark is registered and recorded, international classes 18 and 25; thus, consumer confusion is likely. The “G,” “CC” and “OO” and the “Q” designs appear on fabric. The final products for fabric are goods in international classes 18 and 25; thus, due to the close proximity between fabric and the goods for which the “Signature C Design” trademark is registered and recorded, protection may be extended to fabric under the “related goods doctrine.”

HOLDING:

Based on the strength of the “Signature C Design” mark and the proximity of the goods, combined with the above findings of similarity, the conclusion is as follows: the “G,” oval, “CO,” “CC” and “OO,” and “Q” designs are substantially indistinguishable from the “Signature C Design,” thus they are counterfeit; and the “GO” design is confusingly similar to the “Signature C Design.”

Sincerely,

George Frederick McCray, Esq.
Chief, Intellectual Property Rights Branch

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