Coach Services, Inc. v. Triumph Learning LLC , 668 F.3d 1356 ( 2012 )


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  •   United States Court of Appeals
    for the Federal Circuit
    __________________________
    (Opposition No. 91170112)
    COACH SERVICES, INC.,
    Appellant,
    v.
    TRIUMPH LEARNING LLC,
    Appellee.
    __________________________
    2011-1129
    __________________________
    Appeal from the United States Patent and Trademark
    Office, Trademark Trial and Appeal Board.
    _________________________
    Decided: February 21, 2012
    _________________________
    NORMAN H. ZIVIN, Cooper & Dunham, LLP, of New
    York, New York, argued for appellant. With him on the
    brief was TONIA A. SAYOUR.
    R. DAVID HOSP, Goodwin Procter, LLP, of Boston,
    Massachusetts, argued for appellee. With him on the
    brief was ANTHONY H. CATALDO. Of counsel was JOHN T.
    BENNETT.
    __________________________
    Before NEWMAN, O’MALLEY, and REYNA, Circuit Judges.
    COACH SERVICES   v. TRIUMPH LEARNING                      2
    O’MALLEY, Circuit Judge.
    Coach Services, Inc. (“CSI”) appeals from the final de-
    cision of the Trademark Trial and Appeal Board (“the
    Board”) dismissing its opposition to Triumph Learning,
    LLC’s (“Triumph”) use-based applications to register the
    mark COACH for educational materials used to prepare
    students for standardized tests. The Board found that:
    (1) there was no likelihood of confusion between the
    parties’ COACH marks; (2) CSI failed to prove likelihood
    of dilution; and (3) although Triumph’s marks are merely
    descriptive, they have acquired secondary meaning, and
    thus are entitled to registration. Coach Services, Inc. v.
    Triumph Learning LLC, 
    96 U.S.P.Q.2d 1600
     (T.T.A.B.
    Sept. 17, 2010) (“Board Decision”). For the reasons dis-
    cussed below, we find no error in the Board’s decisions
    regarding likelihood of confusion and dilution, and thus
    affirm as to those grounds. With respect to the Board’s
    acquired distinctiveness analysis, however, we find that
    certain evidentiary errors require us to vacate and re-
    mand solely with respect to the Board’s determination of
    Triumph’s “substantially exclusive and continuous use” of
    its marks. Accordingly, we affirm-in-part, vacate-in-part,
    and remand this matter for further proceedings.
    BACKGROUND
    A. Triumph’s Use of the COACH Mark
    Triumph publishes books and software used to assist
    teachers and students in preparing for standardized tests.
    Triumph claims that it has used the COACH mark in
    connection with its products since at least 1986. Accord-
    ing to Triumph: (1) the “market for test preparation
    materials for state-sponsored standardized tests is highly
    specific and targeted”; and (2) much of the marketing
    takes place through face to face contact with sales repre-
    sentatives or in the form of direct mailings to previously
    3                     COACH SERVICES   v. TRIUMPH LEARNING
    identified educational department heads. Appellee’s Br.
    6.
    Triumph explains that, when Congress passed the No
    Child Left Behind Act in 2001, which mandated that all
    states administer standardized tests to monitor academic
    advancement, Triumph made additional investments in
    its marketing. It began focusing on the style of its brand
    and developed a mascot – a cartoon coach – and a slogan:
    “America’s best for student success.” Triumph invested
    significantly in its marketing efforts, and, according to
    Triumph, it has had substantial commercial success
    selling products under its COACH mark.
    In December 2004, Triumph filed use-based applica-
    tions for three marks: (1) the COACH word mark (Serial
    No. 78/535,642); (2) a stylized COACH mark (Serial No.
    78/536,065); and (3) a COACH mark and design (Serial
    No. 78/536,143) (referred to collectively as “Triumph’s
    COACH marks”). The COACH mark with a design ap-
    pears as follows:
    Each of the applications is for the following goods in
    International Classes 9 and 16:
    Computer software for use in child and adult edu-
    cation, namely, software to assist teachers and
    students at all levels in mastering standards-
    based curricula and in preparing for standardized
    COACH SERVICES   v. TRIUMPH LEARNING                     4
    exams; prerecorded audio and video tapes in the
    field of child and adult education, featuring mate-
    rials to assist teachers and students at all levels
    in mastering standards-based curricula and in
    preparing for standardized exams, in Class 9; and
    Printed materials in the field of child and adult
    education, namely, textbooks, workbooks, teacher
    guides and manuals, posters and flashcards, all
    featuring materials to assist teachers and stu-
    dents at all levels in mastering standards-based
    curricula and in preparing for standardized ex-
    ams, in Class 16.
    Triumph’s COACH marks were published for opposition
    on September 20, 2005.
    B. CSI’s COACH Marks
    CSI advertises and sells a wide variety of “accessible
    luxury” products, including handbags, luggage, clothing,
    watches, eye glasses, and wallets. It has been using the
    COACH mark in connection with its products since at
    least December 28, 1961. 1 CSI owns sixteen incontestable
    trademark registrations for the COACH mark, all but one
    of which issued before Triumph’s applications were filed
    in December 2004.
    CSI sells its COACH products in its own 400 retail
    stores, in department stores, and over the Internet
    through its website. It also promotes its goods by cata-
    logs. CSI advertises and markets its COACH line of
    products throughout the United States using “magazine
    and newspaper ads, billboards and bus and phone kiosks.”
    Appellant’s Br. 5. For example, CSI’s COACH brand
    products have been advertised in national fashion publi-
    1  CSI claims that its predecessor first began using
    the COACH mark in 1957.
    5                      COACH SERVICES   v. TRIUMPH LEARNING
    cations, including Elle, Vogue, Mademoiselle, and Vanity
    Fair.
    Although CSI’s briefing to this court includes adver-
    tising and sales figures from 2000-2008, including a
    representation that its sales exceeded $10 billion over
    that time frame, as discussed below, this evidence was not
    properly submitted to the Board and thus was not consid-
    ered. In fact, the Board found that CSI introduced evi-
    dence of its advertising and sales only for 2008.
    Specifically, CSI introduced the testimony deposition of
    Carole P. Sadler, the former Vice President, General
    Counsel, and Secretary of CSI, who testified that, in 2008:
    (1) CSI’s annual sales were roughly $3.5 billion; and
    (2) CSI spent about “30-60 million a year” on advertising.
    Joint Appendix (“J.A.”) 3659-60.
    To further support the popularity and commercial
    success of its COACH mark, CSI points to: (1) its joint
    marketing efforts with other popular brands, including
    LEXUS and CANON; (2) unsolicited media attention from
    the fashion press; (3) an internal market study conducted
    in June and July 2007 of persons between the ages of 18-
    24, which showed that the COACH brand had 96% aided
    awareness; and (4) the fact that CSI has taken steps to
    enforce its trademark rights against past infringers.
    It is undisputed that CSI is not in the education or
    test-preparation industry, does not consider Triumph a
    competitor, and did not present any evidence of any
    actual confusion stemming from Triumph’s use of the
    Coach mark in conjunction with its educational materials.
    C. TTAB Opposition Proceedings
    On March 17, 2006, CSI filed a Notice of Opposition
    opposing registration of all three of Triumph’s COACH
    marks on grounds of likelihood of confusion under 15
    COACH SERVICES   v. TRIUMPH LEARNING                     
    6 U.S.C. § 1052
    (d) and dilution under 
    15 U.S.C. § 1125
    (c).
    On October 5, 2006, CSI amended its Notice to add a
    claim that COACH is merely descriptive when used on
    goods in the educational and test preparation industries,
    such that the mark is not registrable to Triumph pursu-
    ant to 
    15 U.S.C. § 1052
    (e).
    On September 17, 2010, the Board issued a judgment
    dismissing CSI’s opposition. Specifically, the Board found
    that there was: (1) no likelihood of confusion between the
    parties’ marks; and (2) no likelihood of dilution of CSI’s
    COACH mark for lifestyle goods by Triumph’s COACH
    marks for educational materials. While the Board found
    that CSI’s COACH mark was famous for likelihood of
    confusion purposes, it concluded that CSI failed to provide
    sufficient evidence of fame to support its dilution claim
    under the Trademark Dilution Revision Act of 2006
    (“TDRA”), 
    15 U.S.C. § 1125
    (c). Finally, the Board held
    that, although Triumph’s COACH marks were merely
    descriptive, they had acquired secondary meaning and
    thus were entitled to registration.
    CSI timely appealed to this court. We have jurisdic-
    tion pursuant to 
    28 U.S.C. § 1295
    (a)(4)(B).
    STANDARD OF REVIEW
    We review the Board’s legal conclusions de novo and
    its factual findings for substantial evidence. In re Pacer
    Tech., 
    338 F.3d 1348
    , 1349 (Fed. Cir. 2003). Substantial
    evidence is “‘more than a mere scintilla’ and ‘such rele-
    vant evidence as a reasonable mind would accept as
    adequate’ to support a conclusion.” 
    Id.
     (quoting Consol.
    Edison v. Nat’l Labor Relations Bd., 
    305 U.S. 197
    , 229
    (1938)).
    DISCUSSION
    CSI’s primary arguments on appeal fall into three
    categories. It argues that the Board erred when it:
    (1) improperly balanced the factors set forth in In re E.I.
    DuPont de Nemours & Co., 
    476 F.2d 1357
    , 1361 (C.C.P.A.
    1973), to find no likelihood of confusion; (2) ignored sub-
    stantial evidence showing that CSI’s COACH mark was
    famous for dilution purposes, including corporate annual
    reports that CSI had attempted to introduce via a notice
    of reliance; and (3) found that Triumph’s descriptive
    COACH marks have acquired distinctiveness.
    In response, Triumph argues that the Board correctly
    found: (1) no likelihood of confusion “in light of the vast
    differences in the parties’ respective goods, the channels
    of trade through which those goods are sold, and the
    vastly different commercial impressions made by the
    marks on consumers”; (2) no likelihood of dilution because
    CSI did not meet the stringent standards for fame under
    the TDRA and because “its mark has not become the
    principal meaning of the word ‘coach’”; and (3) that Tri-
    umph’s marks have attained secondary meaning. Appel-
    lee’s Br. 12-13.
    For the reasons set forth below, we find Triumph’s ar-
    guments regarding likelihood of confusion and likelihood
    of dilution well-taken. Because we find that the Board
    made evidentiary errors with respect to its acquired
    distinctiveness analysis, we vacate that portion of the
    Board’s decision and remand for further proceedings on
    that issue alone.
    A. Evidentiary Ruling Regarding CSI’s
    Notice of Reliance
    On appeal, CSI takes issue with the Board’s decision
    to exclude the corporate annual reports it attempted to
    admit through a notice of reliance. According to CSI, the
    COACH SERVICES   v. TRIUMPH LEARNING                      8
    Board should have considered its 2000-2008 annual
    reports as evidence of CSI’s annual sales figures and the
    amount it expended in advertising, design, and promotion
    of its COACH products. In response, Triumph argues
    that the Board properly struck the documents from the
    record because they were not submitted in accordance
    with the Board’s rules and were not otherwise authenti-
    cated. We agree with Triumph.
    This court reviews evidentiary rulings for abuse of
    discretion. Crash Dummy Movie, LLC v. Mattel, Inc., 
    601 F.3d 1387
    , 1390 (Fed. Cir. 2010) (citing Chen v. Bouchard,
    
    347 F.3d 1299
    , 1307 (Fed. Cir. 2003)). We will reverse
    only if the Board’s evidentiary ruling was: (1) “clearly
    unreasonable, arbitrary, or fanciful”; (2) “based on an
    erroneous conclusion[] of law”; (3) premised on “clearly
    erroneous findings of fact”; or (4) the record “contains no
    evidence on which the Board could rationally base its
    decision.” 
    Id. at 1390-91
    .
    The Trademark Rules of Practice, which govern inter
    partes trademark proceedings before the Board, provide,
    in part, that “printed publications” which are “available to
    the general public in libraries or of general circulation
    among members of the public or that segment of the
    public which is relevant under an issue in a proceeding . .
    . may be introduced in evidence by filing a notice of reli-
    ance on the material being offered.” 
    37 C.F.R. § 2.122
    (e).
    Historically, corporate annual reports were not considered
    printed publications available to the general public and
    thus were not admissible via a notice of reliance without
    any authentication. See Jeanne-Marc, Inc. v. Cluett,
    Peabody & Co., Inc., 
    221 U.S.P.Q. 58
    , 59, n.4 (T.T.A.B.
    1984) (“It is well settled that annual reports do not fall
    within the category of printed publications as contem-
    plated” under the Trademark Rules.); see also Midwest
    Plastic Fabricators Inc. v. Underwriters Labs. Inc., 12
    9                      COACH SERVICES   v. TRIUMPH LEARNING
    U.S.P.Q.2d 1267, 1270 n.5 (T.T.A.B. 1989) (“[P]rinted
    material in the nature of annual reports is not considered
    printed publications available to the general public such
    that it may be relied on pursuant to Rule 2.122(e).
    Rather, such material must be introduced in connection
    with the deposition testimony of a competent witness.”);
    VTech Holdings Ltd. v. Varian Semiconductor Equip.
    Assocs., Inc., Opp. No. 91156936, 2007 TTAB LEXIS 245,
    at *11 (T.T.A.B. Sept. 21, 2007) (“Opposer’s corporate
    annual reports, newsletters and other house publications
    are not self-authenticating printed publications or official
    records and may not be made of record by notice of reli-
    ance. We sustain applicant’s objection to all such docu-
    ments and shall give them no consideration.”) (internal
    citations omitted).
    In a 2010 decision, however, the Board expanded the
    types of documents that can be introduced by way of a
    notice of reliance. Safer Inc. v. OMS Investments Inc., 
    94 U.S.P.Q.2d 1031
    , 1039 (T.T.A.B. 2010). In Safer, the
    Board held that:
    if a document obtained from the Internet identifies
    its date of publication or date that it was accessed
    and printed, and its source (e.g., the URL), it may
    be admitted into evidence pursuant to a notice of
    reliance in the same manner as a printed publica-
    tion in general circulation in accordance with
    Trademark Rule 2.122(e). . . The Board will hence-
    forth deem a document obtained from the Internet
    displaying a date and its source as presumptively
    true and genuine. Of course, the document must
    be publicly available. The date and source infor-
    mation on the face of Internet documents allow
    the nonoffering party the opportunity to verify the
    documents.
    COACH SERVICES   v. TRIUMPH LEARNING                      10
    
    Id.
     (emphasis in original). In a footnote, the Board recog-
    nized that documents could be treated differently depend-
    ing on their format. For example, “a corporate annual
    report available only in paper form may not be admissible
    through a notice of reliance because it is not a document
    in general circulation,” while a report “in digital form
    publically available over the Internet would be admissible
    through a notice of reliance because its publication on the
    Internet places it in general circulation.” 
    Id.
     at 1039 n.18.
    Here, CSI’s First Notice of Reliance, which was dated
    October 20, 2008, listed its annual reports from 2002 to
    2008. 2 Triumph objected on grounds that “annual reports
    may not be introduced through a notice of reliance, but
    must be introduced and authenticated by competent
    testimony.” Board Decision, 96 U.S.P.Q.2d at 1603. The
    Board, relying on Trademark Rule 2.122(e) and the re-
    lated cases cited above, indicated that “corporate annual
    reports are not considered to be printed publications
    available to the general public.” 
    Id.
     In a footnote, the
    Board acknowledged the recent Safer decision and found
    that, “[b]ecause the annual reports were not printed from
    the Internet, they may not be admitted into evidence
    pursuant to a notice of reliance.” 
    Id.
     at 1603 n.2 (citing
    Safer, 94 U.S.P.Q.2d at 1039 n.18). The Board further
    noted that CSI did not have any witness testify to the
    authenticity of the reports. Accordingly, the Board sus-
    tained Triumph’s objection and gave CSI’s annual reports
    no consideration.
    2   Although its Notice of Reliance listed its annual
    reports for 2002-2008, in its briefing, CSI argues that the
    Board should have considered its annual reports from
    2001 to 2008. This discrepancy is irrelevant, however,
    given the Board’s decision to exclude all of the reports on
    grounds that they were improperly introduced.
    11                       COACH SERVICES    v. TRIUMPH LEARNING
    On appeal, CSI argues that the Board should have
    considered the annual reports in light of the Safer deci-
    sion. According to CSI, because its annual reports from
    2001 to 2008 were available online, the Board should have
    accepted the printed versions of the reports. In the alter-
    native, CSI argues that, if the court agrees with the Board
    that the paper versions of the annual reports are not
    admissible via a notice of reliance, but that “identical
    copies printed off the Internet are admissible, Coach
    submitted the testimony of its Vice President and General
    Counsel that Coach’s sales and advertising information is
    reported publicly because it is a public company.” Appel-
    lant’s Br. 29-30.
    The record reveals that CSI’s former Vice President
    and General Counsel – Carole Sadler – testified as fol-
    lows:
    Q. About how much does Coach spend on adver-
    tising every year?
    A. Currently we spend about 30 to $60 million a
    year. If you include design and promotional
    expenditures with advertising, it is closer to
    125 million.
    Q. Annually?
    A. Annually, yes.
    Q. And is that information available publicly?
    A. Yes, it is in our annual report.
    Q. What are Coach’s sales approximately today?
    A. About three-and-a-half billion dollars.
    Q. Is that information available publicly?
    A. Yes.
    Q. Is Coach a public company?
    COACH SERVICES   v. TRIUMPH LEARNING                     12
    A. Yes.
    Q. So it reports that information publicly?
    A. Yes.
    J.A. 3659-60. According to CSI, this testimony corrobo-
    rates that the advertising spending and sales figures from
    2000 to 2008 are publicly available through the annual
    reports CSI proffered. It is undisputed, however, that Ms.
    Sadler was not shown the annual reports during her
    deposition and did not authenticate the documents at
    issue.
    Despite CSI’s contentions to the contrary, we find that
    the Board’s decision to exclude the annual reports is
    consistent with both the Trademark Rules and the
    Board’s related case law. It is significant, moreover, that
    CSI submitted its Notice of Reliance in October 2008, and
    the Board did not decide Safer until 2010. At the time the
    Notice of Reliance was submitted, therefore, the Board’s
    rules and existing case law were clear that corporate
    annual reports were not admissible via a notice of reli-
    ance. Even under the Board’s Safer decision, moreover,
    CSI’s printed versions of its annual reports could not be
    admitted into evidence pursuant to a notice of reliance
    because they lacked identifying information such as the
    online source and date accessed. Indeed, Safer specifi-
    cally contemplated this situation where a corporate
    annual report is “inadmissible in paper form by way of a
    notice of reliance because it is not a document in general
    circulation whereas the same annual report in digital
    form, publicly available over the internet, would be ad-
    missible through a notice of reliance because its publica-
    tion on the internet places it in general circulation.” Gary
    D. Krugman, Trademark Trial & App. Board Prac. &
    Proc. § 3.138 (2011).
    13                     COACH SERVICES   v. TRIUMPH LEARNING
    With respect to Ms. Sadler’s testimony, the Board
    found that her statements were limited to 2008 because
    she specified that her sales and advertising estimates
    were “current” estimates, and her deposition was taken in
    2008. And, as Triumph notes and CSI concedes, the sales
    figure Ms. Sadler quoted during her testimony was for
    worldwide sales, not sales within the United States, and
    there was no indication as to whether the advertising
    figures quoted were limited to the United States. Simply
    put, there was no testimony authenticating the annual
    reports or independently establishing the information
    contained therein.
    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. Because CSI offered only
    paper versions of its annual reports, which are not self-
    authenticating, we find that the Board did not abuse its
    discretion when it excluded those reports. Accordingly,
    we affirm the Board’s evidentiary ruling.
    B. Likelihood of Confusion
    Next, CSI argues that the Board erred in finding no
    likelihood of confusion under the factors articulated in
    DuPont. Likelihood of confusion is a legal determination
    based on underlying facts. Cunningham v. Laser Golf
    Corp., 
    222 F.3d 943
    , 945 (Fed. Cir. 2000); see also M2
    Software, Inc. v. M2 Commc’ns, Inc., 
    450 F.3d 1378
    , 1381
    (Fed. Cir. 2006) (“Likelihood of confusion is a question of
    law, based on findings of relevant underlying facts,
    namely findings under the DuPont factors.”). Although
    we review the Board’s findings as to the DuPont factors
    for substantial evidence, we review its overall determina-
    tion of likelihood of confusion without deference. In re
    Chatam Int’l Inc., 
    380 F.3d 1340
    , 1342 (Fed. Cir. 2004)
    COACH SERVICES   v. TRIUMPH LEARNING                      14
    Under Section 2(d) of the Lanham Act, the Patent and
    Trademark Office (“PTO”) may refuse to register a trade-
    mark if it is so similar to a registered mark “as to be
    likely, when used on or in connection with the goods of the
    applicant, to cause confusion, or to cause mistake, or to
    deceive.” 
    15 U.S.C. § 1052
    (d). Whether a likelihood of
    confusion exists between an applied-for mark and a prior
    mark is determined on a case-by-case basis applying the
    thirteen non-exclusive factors set forth in DuPont. 3
    3   The DuPont factors include:
    (1) The similarity or dissimilarity of the marks in
    their entireties as to appearance, sound, connota-
    tion and commercial impression. (2) The similar-
    ity or dissimilarity and nature of the goods or
    services as described in an application or registra-
    tion or in connection with which a prior mark is in
    use. (3) The similarity or dissimilarity of estab-
    lished, likely-to-continue trade channels. (4) The
    conditions under which and buyers to whom sales
    are made, i.e., “impulse” vs. careful, sophisticated
    purchasing. (5) The fame of the prior mark (sales,
    advertising, length of use). (6) The number and
    nature of similar marks in use on similar goods.
    (7) The nature and extent of any actual confusion.
    (8) The length of time during and conditions un-
    der which there has been concurrent use without
    evidence of actual confusion. (9) The variety of
    goods on which a mark is or is not used (house
    mark, “family” mark, product mark). (10) The
    market interface between applicant and the owner
    of a prior mark . . . . (11) The extent to which ap-
    plicant has a right to exclude others from use of
    its mark on its goods. (12) The extent of potential
    confusion, i.e., whether de minimis or substantial.
    (13) Any other established fact probative of the ef-
    fect of use.
    DuPont, 476 F.2d at 1361.
    15                     COACH SERVICES   v. TRIUMPH LEARNING
    Citigroup Inc. v. Capital City Bank Group, Inc., 
    637 F.3d 1344
    , 1349 (Fed. Cir. 2011) (citation omitted). “Not all of
    the DuPont factors are relevant to every case, and only
    factors of significance to the particular mark need be
    considered.” In re Mighty Leaf Tea, 
    601 F.3d 1342
    , 1346
    (Fed. Cir. 2010). For example, the Board can “focus . . . on
    dispositive factors, such as similarity of the marks and
    relatedness of the goods.” Herbko Int’l, Inc. v. Kappa
    Books, Inc., 
    308 F.3d 1156
    , 1164 (Fed. Cir. 2002) (citation
    omitted).
    Here, the Board focused on the following DuPont fac-
    tors: (1) the strength or fame of CSI’s COACH marks;
    (2) the similarity of the goods; (3) the channels of trade;
    (4) the classes of consumers; and (5) the similarity of the
    marks in their entireties. The Board weighed each of
    these factors and found that there was no likelihood of
    confusion because the parties’ marks “have different
    meanings and engender different commercial impres-
    sions,” and the goods involved “are not similar or related
    in any way.” Board Decision, 96 U.S.P.Q.2d at 1609.
    CSI argues that the Board failed to give proper weight
    to: (1) the fame of its COACH mark; (2) the identical
    nature of the parties’ marks; and (3) the “overlap between
    the parties’ goods and the overlap and lack of sophistica-
    tion of the parties’ customers.” Appellant’s Br. 19. We
    address each of the challenged determinations in turn and
    find that they are supported by substantial evidence.
    After careful review and balancing of the DuPont factors,
    we conclude that the Board correctly found no likelihood
    of confusion.
    1. Strength or Fame of CSI’s Coach Mark
    The fame of the registered mark plays a “dominant”
    role in the DuPont analysis, as famous marks “enjoy a
    wide latitude of legal protection.” Recot, Inc. v. M.C.
    COACH SERVICES   v. TRIUMPH LEARNING                     16
    Becton, 
    214 F.3d 1322
    , 1327 (Fed. Cir. 2000); see also
    Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Mai-
    son Fondee En 1772, 
    396 F.3d 1369
    , 1374 (Fed. Cir. 2005)
    (“[A] strong mark . . . casts a long shadow which competi-
    tors must avoid”) (citation omitted)). A famous mark is
    one that has “extensive public recognition and renown.”
    Bose Corp. v. QSC Audio Prods. Inc., 
    293 F.3d 1367
    , 1371
    (Fed. Cir. 2002) (citation omitted).
    Fame for purposes of likelihood of confusion is a mat-
    ter of degree that “varies along a spectrum from very
    strong to very weak.” Palm Bay, 
    396 F.3d at 1375
     (quot-
    ing In re Coors Brewing Co., 
    343 F.3d 1340
    , 1344 (Fed.
    Cir. 2003)). Relevant factors include sales, advertising,
    length of use of the mark, market share, brand aware-
    ness, licensing activities, and variety of goods bearing the
    mark. Recot, 
    214 F.3d at 1326
    ; see also Bose, 
    293 F.3d at 1371
     (“[O]ur cases teach that the fame of a mark may be
    measured indirectly, among other things, by the volume
    of sales and advertising expenditures of the goods travel-
    ing under the mark, and by the length of time those
    indicia of commercial awareness have been evident.”).
    The party asserting that its mark is famous has the
    burden to prove it. Leading Jewelers Guild, Inc. v. LJOW
    Holdings, LLC, 
    82 U.S.P.Q.2d 1901
    , 1904 (T.T.A.B. 2007)
    (“It is the duty of a party asserting that its mark is fa-
    mous to clearly prove it.”).
    It is well-established that fame is insufficient, stand-
    ing alone, to establish likelihood of confusion. Univ. of
    Notre Dame Du Lac .v J.C. Gourmet Food Imports Co.,
    Inc., 
    703 F.2d 1372
    , 1374 (Fed. Cir. 1983) (“Likely . . . to
    cause confusion means more than the likelihood that the
    public will recall a famous mark on seeing the same mark
    used by another.”) (internal quotations omitted). Al-
    though fame cannot overwhelm the other DuPont factors,
    we are mindful that it “deserves its full measure of weight
    17                      COACH SERVICES   v. TRIUMPH LEARNING
    in assessing likelihood of confusion.” Recot, 
    214 F.3d at 1328
     (noting that “fame alone cannot overwhelm the other
    DuPont factors as a matter of law”).
    To show the strength and fame of its mark, CSI intro-
    duced the following evidence before the Board:
    •   CSI began using the COACH mark at least as
    early as December 28, 1961.
    •   There are approximately 400 COACH retail stores
    throughout all 50 states.
    •   CSI’s COACH products are sold by approximately
    1,000 third-party retailers throughout the US.
    •   In 2008, CSI’s annual sales were roughly $3.5 bil-
    lion.
    •   In 2008, CSI spent “about $30-60 million a year”
    on advertising.
    •   CSI has advertised in magazines such as Elle,
    Vogue, Vanity Fair, and The New Yorker.
    •   CSI has advertised in newspapers in major metro-
    politan areas.
    •   CSI’s COACH products have received unsolicited
    publicity from newspapers and magazines discuss-
    ing fashion trends.
    •   CSI has been the subject of articles that refer to
    the renown of its products.
    •   CSI’s internal brand awareness study, which is-
    sued in March 2008, showed a high level of
    awareness of the COACH brand for women be-
    tween the ages of 13-24.
    •   CSI’s COACH products are the subject of counter-
    feiting.
    COACH SERVICES   v. TRIUMPH LEARNING                     18
    Based on this evidence, the Board found that CSI’s
    COACH mark is famous for purposes of likelihood of
    confusion. Substantial evidence supports this finding. As
    discussed below, however, the Board found that the other
    factors, on balance, dispel any likelihood of confusion
    between the parties’ marks.
    2. Similarity of the Marks
    Under the next DuPont factor, the Board must con-
    sider the “similarity or dissimilarity of the marks in their
    entireties as to appearance, sound, connotation and
    commercial impression.” 476 F.2d at 1361. CSI argues
    that the substantial similarity of the marks should have
    weighed heavily in favor of likelihood of confusion. Tri-
    umph responds that, although the marks for both compa-
    nies contain the word “Coach,” “when viewed in their
    commercial contexts, together with the relevant designs
    and in connection with their respective goods, they convey
    entirely different commercial impressions.” Appellee’s Br.
    36-37.
    It is well-established that it is improper to dissect a
    mark, and that marks must be viewed in their entireties.
    In re Shell Oil Co., 
    992 F.2d 1204
    , 1206 (Fed. Cir. 1993)
    (“The marks are considered in their entireties, words and
    design.”); see also Sports Auth. Mich., Inc. v. PC Auth.,
    Inc., 
    63 U.S.P.Q.2d 1782
    , 1792 (T.T.A.B. 2002) (same). In
    some circumstances, however, “one feature of a mark may
    be more significant than another, and it is not improper to
    give more weight to this dominant feature in determining
    the commercial impression created by the mark.” Lead-
    ing Jewelers Guild, 82 U.S.P.Q.2d at 1905; see also In re
    Nat’l Data Corp., 
    753 F.2d 1056
    , 1058 (Fed. Cir. 1985)
    (“[T]here is nothing improper in stating that, for rational
    reasons, more or less weight has been given to a particu-
    19                     COACH SERVICES   v. TRIUMPH LEARNING
    lar feature of a mark, provided the ultimate conclusion
    rests on consideration of the marks in their entireties.”).
    The proper test is not a side-by-side comparison of the
    marks, but instead “whether the marks are sufficiently
    similar in terms of their commercial impression” such
    that persons who encounter the marks would be likely to
    assume a connection between the parties. Leading Jewel-
    ers Guild, 82 U.S.P.Q.2d at 1905. In this fact-specific
    inquiry, if the parties’ goods are closely related, a lesser
    degree of similarity between the marks may be sufficient
    to give rise to a likelihood of confusion. In re Inca Tex-
    tiles, LLC, 
    344 Fed. Appx. 603
    , 606 (Fed. Cir. 2009) (citing
    Century 21 Real Estate Corp. v. Century Life of Am., 
    970 F.2d 874
    , 877 (Fed. Cir. 1992)). Even where the marks at
    issue are identical, or nearly identical, the Board has
    found that differences in connotation can outweigh visual
    and phonetic similarity. See Blue Man Prods. Inc. v.
    Tarmann, 
    75 U.S.P.Q.2d 1811
    , 1820-21 (T.T.A.B. 2005)
    (finding that BLUE MAN GROUP “has the connotation of
    the appearance of the performers” and that applicant’s
    BLUEMAN mark “has no such connotation for cigarettes
    or tobacco. Thus, the marks differ in their connotations
    and commercial impressions”); see also In re Sears, Roe-
    buck & Co., 
    2 U.S.P.Q.2d 1312
    , 1314 (T.T.A.B. 1987)
    (considering     CROSSOVER          for    brassieres   and
    CROSSOVER for ladies’ sportswear and finding that,
    “[a]s a result of their different meanings when applied to
    the goods of applicant and registrant, the two marks
    create different commercial impressions, notwithstanding
    the fact that they are legally identical in sound and
    appearance”).
    Here, the Board found that, although the marks are
    identical in terms of sight and sound, they differ as to
    connotation and commercial impression.      The Board
    stated that, in assessing connotation and commercial
    COACH SERVICES   v. TRIUMPH LEARNING                    20
    impression, “we are compelled to consider the nature of
    the respective goods and services.” Board Decision, 96
    U.S.P.Q.2d at 1609 (citing TBC Corp. v. Holsa, Inc., 
    126 F.3d 1470
     (Fed. Cir. 1997)). Applying this analysis, the
    Board found that:
    Opposer’s COACH mark, when applied to fashion
    accessories is clearly either arbitrary or sugges-
    tive of carriage or travel accommodations (e.g.,
    stagecoach, train, motor coach, etc.) thereby en-
    gendering the commercial impression of a travel-
    ing bag (e.g., a coach or carriage bag). On the
    other hand, applicant’s COACH marks call to
    mind a tutor who prepares a student for an ex-
    amination.
    
    Id.
     Given the “completely different meanings and com-
    mercial impressions engendered by the marks,” the Board
    concluded that Triumph’s COACH marks are not similar
    to CSI’s COACH mark. 
    Id.
    As noted, Triumph’s applications seek to register
    COACH in standard character form, COACH in a stylized
    font, and COACH with a mascot and the tagline “Amer-
    ica’s Best for Student Success.” It is undisputed that the
    word marks for both parties are identical in sound and
    appearance: they both use the word “Coach.” This fact is
    significant to the similarity inquiry. We, nevertheless,
    agree with the Board that, despite their undisputed
    similarity, the marks have different meanings and create
    distinct commercial impressions. This is particularly true
    given that the word “coach” is a common English word
    that has many different definitions in different contexts.
    Specifically, we find that substantial evidence sup-
    ports the Board’s determination that Triumph’s COACH
    mark, when applied to educational materials, brings to
    mind someone who instructs students, while CSI’s
    21                     COACH SERVICES   v. TRIUMPH LEARNING
    COACH mark, when used in connection with luxury
    leather goods, including handbags, suitcases, and other
    travel items, brings to mind traveling by carriage. We
    agree with the Board that these distinct commercial
    impressions outweigh the similarities in sound and ap-
    pearance, particularly since, as discussed below, the
    parties’ goods are unrelated. See Blue Man Prods., 75
    U.S.P.Q.2d at 1820-21 (“We consider these differences in
    the connotations and the commercial impressions of the
    marks to outweigh the visual and phonetic similarity.”).
    Accordingly, this factor favors Triumph.
    3. Similarity of the Goods
    With respect to the DuPont factor assessing the simi-
    larity of the goods, the Board found, and we agree, that
    the parties’ goods are unrelated. This factor requires a
    comparison between the goods or services described in the
    application and those described in the registration. See
    M2 Software, 
    450 F.3d at 1382
     (noting that, when review-
    ing the relatedness of the goods, this court considers “the
    applicant’s goods as set forth in its application, and the
    opposer’s goods as set forth in its registration”).
    When analyzing the similarity of the goods, “it is not
    necessary that the products of the parties be similar or
    even competitive to support a finding of likelihood of
    confusion.” 7-Eleven Inc. v. Wechsler, 
    83 U.S.P.Q.2d 1715
    ,
    1724 (T.T.A.B. 2007). Instead, likelihood of confusion can
    be found “if the respective products are related in some
    manner and/or if the circumstances surrounding their
    marketing are such that they could give rise to the mis-
    taken belief that they emanate from the same source.” 
    Id.
    When trademarks would appear on substantially identical
    goods, “the degree of similarity necessary to support a
    conclusion of likely confusion declines.” Citigroup Inc. v.
    Capital City Bank Group, Inc., 
    637 F.3d 1344
    , 1355 (Fed.
    COACH SERVICES   v. TRIUMPH LEARNING                   22
    Cir. 2011) (citing Century 21 Real Estate, 
    970 F.2d at 877
    ).
    The Board found “clear and significant differences”
    between the parties’ goods.         Board Decision, 96
    U.S.P.Q.2d at 1608. While Triumph’s applications iden-
    tify computer software and printed materials for use in
    preparing students for standardized exams, the various
    products identified in CSI’s registrations include hand-
    bags, fashion accessories, luggage, and clothing. The
    Board further noted that, although CSI uses its mark on
    many different types of goods, it does not use COACH on
    educational products.
    On appeal, CSI concedes that the parties’ products are
    not the same, but contends that there is some overlap
    between their goods because it “has used the mark in
    connection with books and audio and videotapes and in
    connection with tote bags, caps and shirts.” Appellant’s
    Br. 49. This alleged overlap does not help CSI’s position,
    however, particularly since there is no evidence in the
    record regarding the sales or marketing of these items. 4
    4    As Triumph correctly points out, CSI provided no
    evidence as to the sales of these books, any marketing
    efforts, when the books were last sold, or whether CSI
    generated revenue from the books. For example, during
    Ms. Sadler’s deposition, she testified that CSI has pub-
    lished books about its history including a book called
    “Portrait of a Leather Goods Factory.” J.A. 3647. On
    cross-examination, however, Ms. Sadler could not provide
    any information regarding the sales of this book or
    whether it was even sold by CSI. J.A. 3675-76. With
    respect to CSI’s “audio and video tapes,” the record re-
    veals that these are materials it prepares and provides to
    U.S. Customs to intercept counterfeit goods. There is no
    evidence that CSI sells these tapes.
    23                     COACH SERVICES   v. TRIUMPH LEARNING
    Finally, although CSI argues that the parties’ prod-
    ucts are related because Triumph uses its marks on
    shirts, caps, and tote bags, the Board correctly noted that
    Triumph’s applications do not seek to register its COACH
    marks for those items, and likelihood of confusion must be
    based on the goods identified in the application. Board
    Decision, 96 U.S.P.Q.2d at 1608. And, there is no evi-
    dence that Triumph sells these products, which, according
    to Triumph, are worn by its sales agents to market Tri-
    umph’s test preparation materials.
    Based on the foregoing, substantial evidence supports
    the Board’s conclusion that the parties’ goods are not
    related.
    4. Channels of Trade and Classes of Customers
    Next, we consider the similarity or dissimilarity of the
    trade channels in which the parties’ goods are sold and
    the purchasers to whom the parties’ goods are marketed.
    The Board correctly recognized that, because Triumph’s
    description of goods is not limited to sales to educational
    professionals, the goods are presumed to travel in all
    normal channels and to all prospective purchasers for the
    relevant goods. See Packard Press, Inc. v. Hewlett-
    Packard Co., 
    227 F.3d 1352
    , 1360-61 (Fed. Cir. 2000)
    (“When the registration does not contain limitations
    describing a particular channel of trade or class of cus-
    tomer, the goods or services are assumed to travel in all
    normal channels of trade.”).
    With respect to the trade channels, the Board noted
    that CSI sells its products through its 400 retail stores
    and through third-party retailers. It also advertises in
    newspapers, fashion magazines, and catalogs that target
    female consumers between the ages of 25-65 in all income
    brackets. For its part, Triumph markets its products
    COACH SERVICES   v. TRIUMPH LEARNING                     24
    through catalogs, direct mail, and personal sales repre-
    sentatives.
    With respect to the classes of customers, CSI argues
    that customers of both products are ordinary consumers,
    including teachers, “who may buy the products at issue
    without a great deal of thought.” Appellant’s Br. 48. The
    Board found, however, that Triumph targets educational
    professionals with responsibility for purchasing educa-
    tional materials. The Board further found that, although
    educational professionals “may include females between
    the ages of 25-65,” the products are “not sold under cir-
    cumstances likely to give rise to the mistaken belief that
    the products emanate from the same source.” Board
    Decision, 96 U.S.P.Q.2d at 1608. In fact, the Board found
    that educational professionals are likely to exercise a high
    level of care in making purchasing decisions, which would
    minimize likelihood of confusion.
    Under these circumstances, the Board did not err in
    concluding that the goods are not related and the chan-
    nels of trade are distinct. Although there could be some
    overlap in the classes of purchasers for the parties’ prod-
    ucts, we agree it is unlikely that, in the circumstances in
    which the products are sold, customers would associate
    CSI’s COACH brand products with educational materials
    used to prepare students for standardized tests. And,
    there is nothing in the record to suggest that a purchaser
    of test preparation materials who also purchases a luxury
    handbag would consider the goods to emanate from the
    same source. See Sports Auth. Mich., 63 U.S.P.Q.2d at
    1794 (“There is nothing in the record, however, to suggest
    that merely because the same consumer may purchase
    these items, such consumer would consider the goods as
    likely to emanate from the same source or have the same
    sponsorship.”). Accordingly, substantial evidence sup-
    ports the Board’s decision that this factor favors Triumph.
    25                     COACH SERVICES   v. TRIUMPH LEARNING
    5. Balancing the DuPont Factors
    The Board found that two of the DuPont factors
    weighed in favor of CSI, in whole or in part: (1) CSI’s
    COACH mark is famous for likelihood of confusion; and
    (2) the classes of consumers may overlap. In contrast, the
    Board found that the following factors weighed in favor of
    Triumph: (1) the goods of the parties are not similar or
    related; (2) the goods move in different trade channels;
    (3) the marks used by the parties have different meanings
    and engender different commercial impressions; and
    (4) Triumph markets to sophisticated purchasers. 5 After
    balancing these factors, the Board determined that no
    likelihood of confusion would arise between the parties’
    marks.
    On appeal, CSI argues that the Board should have
    given more weight to its determination that its COACH
    mark was famous. As the Board correctly found, however,
    fame, while important, is insufficient standing alone to
    establish likelihood of confusion. On the record before us,
    and after weighing the relevant DuPont factors de novo,
    we agree with the Board that customer confusion is not
    likely between the parties’ respective COACH marks.
    Although CSI’s COACH mark is famous for likelihood of
    confusion purposes, the unrelated nature of the parties’
    goods and their different channels of trade weigh heavily
    against CSI. Absent overlap as to either factor, it is
    difficult to establish likelihood of confusion. Because the
    DuPont factors favoring Triumph outweigh the factors
    5  Although the Board did not make any explicit
    findings on these DuPont factors, Triumph also points out
    that: (1) CSI provided no evidence of actual confusion
    between the marks; and (2) there was more than 20 years
    of concurrent use.
    COACH SERVICES   v. TRIUMPH LEARNING                     26
    favoring CSI, the Board was correct in finding no likeli-
    hood of confusion.
    C. Dilution
    The TDRA, which was signed into law on October 6,
    2006, amended Section 43(c) of the Lanham Act, 
    15 U.S.C. § 1125
    (c). It provides that:
    the owner of a famous mark that is distinctive,
    inherently or through acquired distinctiveness,
    shall be entitled to an injunction against another
    person who, at any time after the owner’s mark
    has become famous, commences use of a mark or
    trade name in commerce that is likely to cause di-
    lution by blurring or dilution by tarnishment of
    the famous mark, regardless of the presence or
    absence of actual or likely confusion, of competi-
    tion, or of actual economic injury.
    
    15 U.S.C. § 1125
    (c)(1). Therefore, to prevail on a dilution
    claim under the TDRA, a plaintiff must show that: (1) it
    owns a famous mark that is distinctive; (2) the defendant
    is using a mark in commerce that allegedly dilutes the
    plaintiff’s famous mark; (3) the defendant’s use of its
    mark began after the plaintiff’s mark became famous; and
    (4) the defendant’s use of its mark is likely to cause dilu-
    tion by blurring or by tarnishment.
    The TDRA defines dilution by blurring as an “associa-
    tion arising from the similarity between a mark or trade
    name and a famous mark that impairs the distinctiveness
    of the famous mark.” 
    15 U.S.C. § 1125
    (c)(2)(B). Dilution
    by tarnishment is defined as “an association arising from
    the similarity between a mark or trade name and a fa-
    mous mark that harms the reputation of the famous
    mark.” 
    15 U.S.C. § 1125
    (c)(2)(C).
    27                     COACH SERVICES   v. TRIUMPH LEARNING
    In its Opposition, CSI argued that Triumph’s marks
    would blur the distinctiveness of its COACH mark and
    tarnish its reputation. On appeal, however, CSI aban-
    dons its dilution by tarnishment claim and focuses its
    arguments solely on blurring. 6 The Board found that CSI
    could not succeed on its dilution claims because it failed to
    show that its COACH mark was famous for dilution
    purposes. For the reasons explained below, we agree.
    Because we find that CSI failed to prove fame for dilution,
    we need not address the other statutory factors courts can
    consider to determine whether a mark is likely to cause
    dilution by blurring.
    1. Fame for Dilution
    A threshold question in a federal dilution claim is
    whether the mark at issue is “famous.” Under the TDRA,
    a mark is famous if it “is widely recognized by the general
    consuming public of the United States as a designation of
    source of the goods or services of the mark’s owner.” 
    15 U.S.C. § 1125
    (c)(2)(A). By using the “general consuming
    public” as the benchmark, the TDRA eliminated the
    possibility of “niche fame,” which some courts had recog-
    nized under the previous version of the statute. 7 See Top
    Tobacco, LP v. N. Atl. Operating Co., 
    509 F.3d 380
    , 384
    (7th Cir. 2007) (noting that the reference to the general
    public “eliminated any possibility of ‘niche fame,’ which
    6  During oral argument, counsel for CSI specifically
    indicated that CSI is not pursuing a tarnishment claim on
    appeal.     See Oral Argument at 0:49, available at
    http://www.cafc.uscourts.gov/oral-argument-
    recordings/2011-1129/all (“We are not pursuing a tar-
    nishment claim on appeal . . . we are going to limit it to
    blurring.”).
    7   The previous version of the statute, prior to the
    2006 revision, was the Federal Trademark Dilution Act of
    1995 or “FTDA.”
    COACH SERVICES   v. TRIUMPH LEARNING                     28
    some courts had recognized before the amendment”). The
    TDRA lists four non-exclusive factors for courts to con-
    sider when determining whether a mark is famous:
    (i) The duration, extent, and geographic reach of ad-
    vertising and publicity of the mark, whether ad-
    vertised or publicized by the owner or third
    parties.
    (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.
    (iv) Whether the mark was registered under the Act of
    March 3, 1881, or the Act of February 20, 1905, or
    on the principal register.
    
    15 U.S.C. § 1125
    (c)(2)(A). Whether a mark is famous
    under the TDRA is a factual question reviewed for sub-
    stantial evidence.
    Fame for likelihood of confusion and fame for dilution
    are distinct concepts, and dilution fame requires a more
    stringent showing. 4 J. Thomas McCarthy, McCarthy On
    Trademark and Unfair Competition § 24:104 at 24-290
    (4th ed. 2011) (“The standard for the kind of ‘fame’ needed
    to trigger anti-dilution protection is more rigorous and
    demanding than the ‘fame’ which is sufficient for the
    classic likelihood of confusion test.”). While fame for
    dilution “is an either/or proposition” – it either exists or
    does not – fame for likelihood of confusion is a matter of
    degree along a continuum. Palm Bay, 
    396 F.3d at
    1374-
    75. Accordingly, a mark can acquire “sufficient public
    recognition and renown to be famous for purposes of
    likelihood of confusion without meeting the more strin-
    gent requirement for dilution fame.”           7-Eleven, 83
    U.S.P.Q.2d at 1722.
    29                      COACH SERVICES   v. TRIUMPH LEARNING
    It is well-established that dilution fame is difficult to
    prove. See Toro Co. v. ToroHead Inc., 
    61 U.S.P.Q.2d 1164
    ,
    1180 (T.T.A.B. 2001) (“Fame for dilution purposes is
    difficult to prove.”); Everest Capital, Ltd. v. Everest Funds
    Mgmt. LLC, 
    393 F.3d 755
    , 763 (8th Cir. 2005) (“The
    judicial consensus is that ‘famous’ is a rigorous stan-
    dard.”); see also 4 McCarthy, § 24:104 at 24-286, 24-293
    (noting that fame for dilution is “a difficult and demand-
    ing requirement” and that, although “all ‘trademarks’ are
    ‘distinctive’ – very few are ‘famous’”). This is particularly
    true where, as here, the mark is a common English word
    that has different meanings in different contexts. Impor-
    tantly, the owner of the allegedly famous mark must show
    that its mark became famous “prior to the filing date of
    the trademark application or registration against which it
    intends to file an opposition or cancellation proceeding.”
    Toro, 61 U.S.P.Q.2d at 1174.
    As noted, fame for dilution requires widespread rec-
    ognition by the general public. 
    15 U.S.C. § 1125
    (c)(2)(A).
    To establish the requisite level of fame, the “mark’s owner
    must demonstrate that the common or proper noun uses
    of the term and third-party uses of the mark are now
    eclipsed by the owner’s use of the mark.” Toro, 61
    U.S.P.Q.2d at 1180. 8 An opposer must show that, when
    the general public encounters the mark “in almost any
    context, it associates the term, at least initially, with the
    mark’s owner.” Id. at 1181. In other words, a famous
    mark is one that has become a “household name.” Nissan
    Motor Co. v. Nissan Computer Corp., 
    378 F.3d 1002
    , 1012
    (9th Cir. 2004) (quoting Thane Int’l, Inc. v. Trek Bicycle
    Corp., 
    305 F.3d 894
    , 911 (9th Cir. 2002)). With this
    framework in mind, we turn to CSI’s evidence of fame.
    8 Although the Board’s Toro decision predates the
    TDRA, its discussion of fame for dilution purposes re-
    mains relevant.
    COACH SERVICES   v. TRIUMPH LEARNING                      30
    2. CSI Failed to Introduce Sufficient Evidence
    of Fame for Dilution
    The Board found that CSI’s evidence of fame was in-
    sufficient to support a dilution claim. On appeal, CSI
    argues that the same evidence establishing fame for
    likelihood of confusion also establishes fame for dilution
    purposes. Specifically, CSI argues that the Board disre-
    garded: (1) sales and advertising figures for years 2000-
    2008; (2) its sixteen federal trademark registrations;
    (3) unsolicited media attention; (4) joint marketing efforts;
    (5) two Second Circuit decisions finding the Coach hang-
    tag, which features the COACH mark, to be famous; and
    (6) CSI’s internal brand awareness survey showing
    awareness among 18-24 year old consumers. We address
    each category of evidence in turn. For the reasons set
    forth below, we find substantial evidence supporting the
    Board’s decision that CSI failed to show the requisite level
    of fame for dilution.
    Turning first to CSI’s evidence of sales and advertis-
    ing expenditures, CSI argues that the Board erred when
    it ignored the annual reports that were attached to a
    Notice of Reliance. As previously discussed, however, the
    Board correctly held that these reports were unauthenti-
    cated and thus inadmissible. The only sales and advertis-
    ing figures in the record via Ms. Sadler’s testimony were
    for one year – 2008 – which, notably, is after Triumph
    filed its use-based applications in December 2004. We
    agree with the Board that this limited evidence of sales
    and advertising is insufficient to show fame. Even if the
    Board had considered the annual reports, moreover, such
    evidence, standing alone, would be insufficient. See Toro,
    61 U.S.P.Q.2d at 1181 (“Merely providing evidence that a
    mark is a top-selling brand is insufficient to show this
    general fame without evidence of how many persons are
    purchasers.”).
    31                      COACH SERVICES   v. TRIUMPH LEARNING
    With respect to CSI’s registrations, the Board found
    that the mere existence of federally registered trademarks
    is insufficient to show that the mark is famous for pur-
    poses of dilution because ownership of a registration is
    not proof of fame. On appeal, CSI argues that the Board
    erred in this determination because one of the statutory
    factors a court can consider in the fame analysis is
    whether the mark is registered on the principal register.
    See 
    15 U.S.C. § 1125
    (c)(2)(A)(iv). As Triumph points out,
    however, “[o]ne cannot logically infer fame from the fact
    that a mark is one of the millions on the Federal Regis-
    ter.” 4 McCarthy, § 24:106 at 24-310. While ownership of
    a trademark registration is relevant to the fame inquiry,
    and – to the extent the Board decision implies otherwise –
    the Board erred on this point, proof of registration is not
    conclusive evidence of fame.
    With respect to media attention, the Board found that
    CSI’s evidence fell short of showing “widespread recogni-
    tion of opposer’s mark [by] the general population.”
    Board Decision, 96 U.S.P.Q.2d at 1611. Specifically, the
    Board found that:
    the vast majority of unsolicited media recognition
    for opposer’s COACH mark comprises a reference
    to one of opposer’s products as one of many differ-
    ent fashion buys or trends, and the news articles
    noting opposer’s renown are too few to support a
    finding that opposer’s mark has been transformed
    into a household name.
    Id. On appeal, CSI argues that the Board ignored hun-
    dreds of unsolicited articles mentioning the COACH mark
    over the years. CSI points to several examples, including
    the following:
    •   “In fact, Coach’s growth . . . has been phenomenal.
    When Sara Lee acquired the firm in 1985, its vol-
    COACH SERVICES   v. TRIUMPH LEARNING                   32
    ume was about $18 million. In Sara Lee’s latest
    fiscal year, which ended last June 30, Coach’s
    sales exceeded $500 million. The name also reso-
    nates with consumers. The brand ranked eighth
    among the top 10 in accessories firms in the latest
    Fairchild 100 consumer survey of fashion labels,
    in 1995. J.A. 3607 (Women’s Wear Daily, May 5,
    1997).
    •   “Coach, one of the top makers of status handbags
    in the United States . . .” J.A. 3598 (The New
    York Times, Jan. 27, 1999).
    •   “Coach’s creative director has helped transform
    the 60-year old company into a must-have Ameri-
    can icon.” J.A. 3156 (Women’s Wear Daily, June
    2001).
    •   “Will Coach Become Too Popular? . . . Coach, the
    maker and retailer of stylish handbags, just had a
    blowout season. . . . Clearly Coach has recorded
    some of the best growth numbers of any retailer or
    accessories maker in recent years.” J.A. 3543
    (Business Week, Jan. 24, 2007).
    Looking at the media attention in the record, there is
    certainly evidence that CSI’s COACH mark has achieved
    a substantial degree of recognition. That said, many of
    the articles submitted are dated after Triumph filed its
    registration applications and thus do not show that CSI’s
    mark was famous prior to the filing date. See Toro, 61
    U.S.P.Q.2d at 1174 (“an owner of an allegedly famous
    mark must establish that its mark had become famous
    prior to the filing date of the trademark application”
    which it opposes). And, there is substantial evidence
    supporting the Board’s determination that many of the
    references are limited to mentioning one of CSI’s COACH
    products among other brands. Accordingly, even though
    33                     COACH SERVICES   v. TRIUMPH LEARNING
    there is some evidence of media attention, substantial
    evidence supports the Board’s conclusion that the media
    evidence submitted fails to show widespread recognition.
    With respect to joint marketing efforts, CSI argued
    that other popular brands, including LEXUS and
    CANON, have used the COACH mark in connection with
    their products. The Board found that CSI “failed to
    provide any testimony regarding the success of the joint
    marketing efforts and the effect of those efforts in promot-
    ing opposer’s mark.” Board Decision, 96 U.S.P.Q.2d at
    1611, n.37. We agree. Without evidence as to the success
    of these efforts or the terms of any contracts involved,
    they have little value here.
    Next, the Board found that CSI’s 2008 brand aware-
    ness study was “of dubious probative value” because it did
    not offer a witness with first-hand knowledge of the study
    to explain how it was conducted. Id. at 1611. The Board
    further noted that, although the study showed a high
    level of brand awareness among women ages 13-24, it
    provided no evidence of brand awareness among women
    generally, or among men. See Top Tobacco, 
    509 F.3d at 384
     (noting that the TDRA eliminated the possibility of
    “niche fame” as a basis for finding a mark famous). And,
    the survey was conducted in 2007, several years after
    Triumph filed its applications. Given these circum-
    stances, we find no error in the Board’s decision to give
    this survey limited weight.
    CSI also argues that the Board failed to adequately
    consider two Second Circuit decisions finding that the
    hangtag attached to its various handbags, which features
    the COACH mark, is distinctive. See Coach Leatherware
    Co., Inc. v. AnnTaylor, Inc., 
    933 F.2d 162
    , 166 (2d Cir.
    1991) (finding that Coach’s lozenge-shaped leather tags
    embossed with the name “Coach Leatherware,” which are
    COACH SERVICES   v. TRIUMPH LEARNING                      34
    attached to Coach’s handbags by beaded brass chains,
    “have become distinctive and valuable through Coach’s
    promotional efforts and by virtue of its upscale reputa-
    tion”); see also Coach, Inc. v. We Care Trading Co., Inc., 
    67 Fed. Appx. 626
    , 630 (2d Cir. 2002) (affirming the jury’s
    dilution verdict on grounds that “the jury’s determination
    that the hang tag was famous and distinctive was not
    unreasonable” and “the substantial similarity of the two
    marks here coupled with the use of Coach’s very distinc-
    tive hang tag shape amply justified the jury’s verdict”).
    Although the Board did not specifically address these
    cases, we agree with Triumph that they are unrelated and
    irrelevant, particularly because: (1) the 1991 case did not
    involve a dilution claim; and (2) both cases focus on the
    hangtag feature on CSI’s handbags, not on the alleged
    fame of the COACH mark generally.
    Based on the foregoing, we agree with the Board that
    CSI failed to provide sufficient evidence of fame for dilu-
    tion purposes. Absent a showing of fame, CSI’s dilution
    claim fails, and we need not address the remaining statu-
    tory factors for dilution by blurring.
    Before moving on, we pause to emphasize the fact-
    specific nature of our holding today. While the burden to
    show fame in the dilution context is high – and higher
    than that for likelihood of confusion purposes – it is not
    insurmountable. We do not hold that CSI could never
    establish the requisite level of fame for dilution purposes.
    We hold only that, on the record presented to it, the Board
    had substantial support for its conclusion that CSI’s
    evidentiary showing was just too weak to do so here.
    D. Whether Triumph’s Marks Were Registrable
    As an alternative ground for opposition, CSI argued
    that Triumph’s COACH mark is merely descriptive and
    thus not registrable under 
    15 U.S.C. § 1052
    (e). The Board
    35                    COACH SERVICES   v. TRIUMPH LEARNING
    found that, although CSI had standing to oppose Tri-
    umph’s applications on descriptiveness grounds, Triumph
    demonstrated that its COACH marks had acquired dis-
    tinctiveness.
    Both parties take issue with portions of the Board’s
    decision on descriptiveness. For its part, Triumph argues
    that the Board incorrectly found that CSI had standing to
    oppose registration on descriptiveness grounds. In con-
    trast, CSI argues that it had standing and that “there was
    no evidence in the record to support a finding that Tri-
    umph’s descriptive ‘Coach’ marks have acquired distinct-
    iveness.” Appellant’s Br. 19. We address the parties’
    arguments in turn.
    1. Standing
    Standing is a question of law that this court reviews
    de novo. Under Article III of the United States Constitu-
    tion, a plaintiff must show a “case or controversy” be-
    tween the parties to establish standing.        Ritchie v.
    Simpson, 
    170 F.3d 1092
    , 1094 (Fed. Cir. 1999). The
    “case” and “controversy” restrictions do not, however,
    apply to matters before administrative agencies. 
    Id.
    Instead, for an agency such as the PTO, standing is
    conferred by statute. Here, standing is conferred by
    Section 13 of the Lanham Act, which provides, in perti-
    nent part, that “[a]ny person who believes that he would
    be damaged by the registration of a mark . . . may, upon
    payment of the prescribed fee, file an opposition in the
    Patent and Trademark Office, stating the grounds there-
    for.” 
    15 U.S.C. § 1063
    (a). The purpose of the standing
    requirement is “to prevent litigation where there is no
    real controversy between the parties, where a plaintiff,
    petitioner or opposer, is no more than an intermeddler.”
    Lipton Indus., Inc. v. Ralston Purina Co., 
    670 F.2d 1024
    ,
    1028-29 (C.C.P.A. 1982).
    COACH SERVICES   v. TRIUMPH LEARNING                      36
    In addition to meeting the broad requirements of Sec-
    tion 13, an opposer must satisfy two judicially-created
    standing requirements. Ritchie, 
    170 F.3d at 1095
    . Spe-
    cifically, an opposer must show: (1) a “real interest” in the
    proceeding; and (2) a “reasonable basis” for believing that
    it would suffer damage if the mark is registered. 
    Id.
    Under the “real interest” requirement, an opposer must
    have “a legitimate personal interest in the opposition.”
    
    Id.
     With respect to the second inquiry, the opposer’s
    belief of damage “must have a reasonable basis in fact.”
    
    Id. at 1098
     (citation and quotation omitted).
    Here, the Board found that, “[b]ecause opposer’s reg-
    istrations are of record, opposer has established its stand-
    ing.” Board Decision, 96 U.S.P.Q.2d at 1604. Although
    this case is unusual because CSI asserted likelihood of
    confusion, dilution, and mere descriptiveness, without
    asserting that it has the right to use the mark descrip-
    tively, the Board found “no question that opposer has
    established a real interest in preventing the registration
    of applicant’s mark.” Id. at 1605. In reaching this deci-
    sion, the Board noted that “standing and grounds may be
    related, but they are distinct inquiries.” Id. (citation
    omitted).
    On appeal, Triumph argues that: (1) CSI’s only wit-
    ness testified that it would not be harmed from the “al-
    leged descriptive nature” of Triumph’s mark; 9 (2) CSI
    9   During her deposition, Sadler testified as follows:
    Q. You believe that a descriptive use of the
    word “Coach” by someone is going to cause
    your company harm?
    A. No.
    Q. So it is dilution and likelihood of confusion
    that would cause your company harm,
    correct?
    37                     COACH SERVICES   v. TRIUMPH LEARNING
    “failed to establish that it uses the mark COACH in a
    descriptive fashion or in a manner to describe its goods”;
    and (3) because CSI does not have an interest in using the
    Triumph marks descriptively, it lacks standing to oppose
    Triumph’s marks on descriptiveness grounds. Appellee’s
    Br. 46-47. Triumph’s arguments are not persuasive.
    As the Board noted in its decision, this court has pre-
    viously found that, “[o]nce standing is established, the
    opposer is entitled to rely on any of the grounds set forth
    in section 2 of the Lanham Act which negate applicant’s
    right to its subject registration.” Jewelers Vigilance v.
    Ullenberg Corp., 
    823 F.2d 490
    , 493 (Fed. Cir. 1987) (cita-
    tion omitted); see also Enter. Rent-A-Car Co. v. Advantage
    Rent-A-Car, Inc., 
    330 F.3d 1333
    , 1345 (Fed. Cir. 2003)
    (“Once standing is established, in order to state a claim,
    an opposer must base its ground of opposition on a statu-
    tory claim found in the Lanham Act.”); see also Estate of
    Biro v. Bic Corp., 
    18 U.S.P.Q.2d 1382
    , 1385-86 (T.T.A.B.
    1991) (noting that, once the opposer shows “a personal
    interest in the outcome of the case . . . the opposer may
    rely on any ground that negates applicant’s right to the
    registration sought”). Accordingly, in this context, once
    an opposer meets the requirements for standing, it can
    rely on any of the statutory grounds for opposition set
    forth in 
    15 U.S.C. § 1052
    .
    Triumph does not challenge CSI’s standing to assert
    claims for likelihood of confusion and dilution, and in-
    A. Correct.
    Mr. Zivin: Objection. Mischaracterization.
    J.A. 3672: 4-13. We do not view this testimony as an
    admission that registration of Triumph’s marks would not
    harm CSI.
    COACH SERVICES   v. TRIUMPH LEARNING                     38
    stead focuses its standing arguments solely on CSI’s
    descriptiveness challenge. There is no question that CSI
    has a personal stake in the outcome of the opposition and
    has asserted it will be harmed by registration of Tri-
    umph’s marks. Therefore, any theory that would prevent
    Triumph from registering its marks would necessarily
    prevent the alleged harm to CSI. Because CSI has estab-
    lished a real interest and reasonable basis for believing
    registration of Triumph’s marks will cause harm in the
    form of likelihood of confusion or dilution, it also has
    standing to assert a claim on descriptiveness grounds.
    2. Mere Descriptiveness
    Marks that are “merely descriptive” of goods and ser-
    vices are not entitled to protection. In re Abcor Dev.
    Corp., 
    588 F.2d 811
    , 813 (C.C.P.A. 1978). A mark is
    merely descriptive “if it immediately conveys knowledge
    of a quality, feature, function, or characteristic of the
    goods or services with which it is used.” In re Bayer
    Aktiengesellschaft, 
    488 F.3d 960
    , 963 (Fed. Cir. 2007)
    (“Bayer”) (citing In re Gyulay, 
    820 F.2d 1216
    , 1217 (Fed.
    Cir. 1987)). A mark may be merely descriptive “even if it
    does not describe the ‘full scope and extent’ of the appli-
    cant’s goods or services.” In re Oppedahl & Larson LLP,
    
    373 F.3d 1171
    , 1173 (Fed. Cir. 2004) (citation omitted).
    It is well-established that “[d]escriptiveness of a mark
    is not considered in the abstract.” Bayer, 
    488 F.3d at
    963-
    64. Instead, the mark must be “considered in relation to
    the particular goods for which registration is sought, the
    context in which it is being used, and the possible signifi-
    cance that the term would have to the average purchaser
    of the goods because of the manner of its use or intended
    use.” 
    Id. at 964
    . Evidence that a term is merely descrip-
    tive “may be obtained from any competent source, such as
    dictionaries, newspapers, or surveys.” Bayer, 
    488 F.3d at
    39                     COACH SERVICES   v. TRIUMPH LEARNING
    964 (quoting In re Bed & Breakfast Registry, 
    791 F.2d 157
    , 160 (Fed. Cir. 1986)). A determination that a mark
    is merely descriptive is a factual finding that this court
    reviews for substantial evidence. Bayer, 
    488 F.3d at 964
    .
    The Board found that COACH is merely descriptive
    when used in connection with educational materials used
    to prepare students for standardized tests because it
    “immediately conveys to purchasers the purpose of the
    materials.” Board Decision, 96 U.S.P.Q.2d at 1617. In
    support of this finding, the Board pointed to dictionary
    definitions of the word “coach,” which include: (1) “a
    private tutor who prepares a student for an examination”;
    (2) “a person who trains an athlete”; and (3) “to give
    instruction or advice in the capacity of a coach; instruct.”
    Id. at 1616-17. The Board also relied on evidence of third-
    party use of the term “coach.” For example, CSI intro-
    duced forty-three titles of books and software incorporat-
    ing the word “coach,” including: “The Business Coach” and
    “My SAT Coach.” Based on the evidence of record, the
    Board concluded that the word “coach” is “a personifica-
    tion of the act of instructing or tutoring for an examina-
    tion.” Id. at 1616-17.
    Substantial evidence supports the Board’s decision
    that Coach is merely descriptive. Specifically, we agree
    that the dictionary definitions in the record, coupled with
    evidence of third parties that use the term “coach” to
    describe services that are similar to those identified in
    Triumph’s application, support the Board’s descriptive-
    ness finding.
    3. Secondary Meaning
    Although the Board found that Triumph’s marks were
    merely descriptive when used in connection with its
    goods, it concluded that Triumph provided sufficient
    COACH SERVICES   v. TRIUMPH LEARNING                     40
    evidence showing that its COACH marks had acquired
    secondary meaning through use in commerce.
    It is well-established that a descriptive mark can be
    registered if it has acquired secondary meaning. Section
    2(f) of the Lanham Act provides, in part, that:
    nothing herein shall prevent the registration of a
    mark used by the applicant which has become dis-
    tinctive of the applicant’s goods in commerce. The
    Director may accept as prima facie evidence that
    the mark has become distinctive, as used on or in
    connection with the applicant’s goods in com-
    merce, proof of substantially exclusive and con-
    tinuous use thereof as a mark by the applicant in
    commerce for the five years before the date on
    which the claim of distinctiveness is made.
    
    15 U.S.C. § 1052
    (f).
    To establish secondary meaning, or acquired distinct-
    iveness, an applicant must show that “in the minds of the
    public, the primary significance of a product feature or
    term is to identify the source of the product rather than
    the product itself.” In re Dial-A-Mattress Operating Co.,
    
    240 F.3d 1341
    , 1347 (Fed. Cir. 2001) (citation omitted).
    To determine whether a mark has acquired secondary
    meaning, courts consider: advertising expenditures and
    sales success; length and exclusivity of use; unsolicited
    media coverage; copying of the mark by the defendant;
    and consumer studies. In re Steelbuilding.com, 
    415 F.3d 1293
    , 1300 (Fed. Cir. 2005). Acquired distinctiveness is a
    question of fact which is “reviewed under the clearly
    erroneous standard.” Yamaha Int’l Corp. v. Hoshino
    Gakki Co., Ltd., 
    840 F.2d 1572
    , 1581 (Fed. Cir. 1988).
    As the Board noted, Triumph raised acquired distinct-
    iveness as its sixth affirmative defense in its answer to
    41                      COACH SERVICES   v. TRIUMPH LEARNING
    CSI’s amended notice of opposition. Based on the record
    before it, the Board made the following factual findings:
    •   Triumph is the largest publisher of educational
    materials for preparing for standardized tests and
    COACH is its primary trademark;
    •   Between 2003-2008, Triumph’s advertising expen-
    ditures quadrupled and exceeded six figures;
    •   Between 2003-2007, Triumph’s revenues have
    reached seven figures;
    •   Triumph has been promoting COACH as the name
    of its series of books since at least 1989.
    Board Decision, 96 U.S.P.Q.2d at 1617. CSI challenged
    Triumph’s evidence on grounds that: (1) there was no
    direct evidence of consumer recognition; (2) Triumph
    introduced and relied upon self-serving, uncorroborated
    testimony from its Vice President of Marketing: Jane
    Fisher; (3) Triumph’s sales success is not necessarily
    indicative of acquired distinctiveness; (4) Triumph’s use
    has not been substantially exclusive; and (5) Triumph did
    not present evidence of media recognition. The Board
    rejected each of these arguments and found that Triumph
    met its burden of showing that its COACH marks have
    acquired distinctiveness.
    First, the Board stated that, contrary to CSI’s conten-
    tion, Triumph was not required to introduce a consumer
    survey and that the Board could determine consumers’
    reactions to the mark based on inferences from the record.
    Next, the Board found that Ms. Fisher’s testimony was
    subject to cross-examination and found her testimony –
    which dealt with Triumph’s advertising expenditures and
    revenue between 2003 and 2008 – credible. The Board
    further found that Triumph’s use of its COACH mark in
    connection with educational materials for preparing for
    COACH SERVICES   v. TRIUMPH LEARNING                    42
    standardized tests “is, and has been, substantially exclu-
    sive.” Board Decision, 96 U.S.P.Q.2d at 1619. And, the
    Board concluded that Triumph has been “promoting itself
    as the ‘Coach’ brand since 1989 through its references to
    ‘Coach series,’ ‘Coach Books and Software,’ and ‘the
    Coach.’” 
    Id.
     Based on the foregoing, the Board found
    Triumph established its affirmative defense of acquired
    distinctiveness.
    On appeal, CSI argues that Triumph’s sales figures
    are insufficient to prove secondary meaning and that
    Triumph’s use of the COACH mark is not “substantially
    exclusive,” particularly given that there was “evidence of
    43 different book and software titles showing use of the
    designator ‘Coach’ for coaching materials.” Appellant’s
    Br. 53-54. CSI also argues that, in finding that Triumph
    has used its COACH marks “since 1989,” the Board
    improperly relied on evidence it said it would not consider
    because it was not authenticated. Specifically, CSI ar-
    gues that: (1) Triumph’s witness, Ms. Fisher, lacked any
    personal knowledge of certain marketing documents
    because she was not working for Triumph at the time the
    materials allegedly were used; and (2) “review of the
    alleged brand since 1989 would show that Triumph did
    not seek to use ‘Coach’ as a ‘brand’ until Fall 2003.”
    Appellant’s Reply 14. We address CSI’s arguments in
    turn.
    With respect to the forty-three book and software ti-
    tles not affiliated with Triumph that include the word
    “coach,” the Board found no evidence in the record as to
    their sales and that most of the titles do not relate to
    educational materials for preparing for standardized
    tests. Although the Board found five titles of record that
    arguably relate to Triumph’s subject matter – including
    “A Writer’s Coach”, “My SAT Coach”, and “My Word
    Coach” – it dismissed those titles at least in part on
    43                     COACH SERVICES   v. TRIUMPH LEARNING
    grounds that they were published after Triumph filed its
    applications in 2004. The Board cites no authority for its
    decision to disregard these titles based on their publica-
    tion dates, and Triumph has offered none. Indeed, the
    Board has previously noted that “[a]cquired distinctive-
    ness and buyer recognition is to be tested in an opposition
    proceeding as of the date the issue is under consideration.
    The filing date is not a cutoff for any evidence developing
    after that time.” Target Brands, Inc. v. Hughes, 
    85 U.S.P.Q.2d 1676
    , 1681 (T.T.A.B. 2007) (citing McCormick
    & Co. v. Summers, 
    354 F.2d 668
     (C.C.P.A. 1966); Harsco
    Corp. v. Electrical Sciences, Inc., 
    9 U.S.P.Q.2d 1570
    ,
    (T.T.A.B. 1988)). We conclude that the Board’s failure to
    consider all pre-decision third-party use of the term
    “coach” for educational materials undermines its secon-
    dary meaning analysis and requires remand so that the
    Board can assess the extent to which those titles might
    cut against a claim of “substantially exclusive use.”
    With respect to Triumph’s use of the COACH mark,
    the Board concluded that Triumph has been promoting
    itself as “the ‘Coach’ brand since 1989.” Board Decision,
    96 U.S.P.Q.2d at 1619. Triumph offered Ms. Fisher’s
    testimony to authenticate advertising materials dating
    back to the early 1990s. Because Ms. Fisher did not begin
    working for Triumph until July 2003, CSI objected to her
    testimony “regarding any matters other than the identifi-
    cation of business records prior to July 2003 on the
    ground that she lack[ed] personal knowledge about appli-
    cant’s business prior to that date.” 
    Id. at 1603
    . The
    Board sustained CSI’s objection, stating that it would
    consider Ms. Fisher’s testimony regarding pre-July 2003
    matters “only for purposes of authenticating documents
    kept by applicant in the ordinary course of business.” 
    Id.
    On appeal, CSI argues that: (1) “there was no testi-
    mony authenticating these documents as business records
    COACH SERVICES   v. TRIUMPH LEARNING                    44
    of Triumph”; and (2) Ms. Fisher “had no personal knowl-
    edge of where, when, to whom and how many of the
    materials were distributed.” Appellant’s Br. 55 n.23. On
    these points, CSI is correct. Review of the relevant testi-
    mony reveals that Ms. Fisher identified certain catalogs,
    indicated that those catalogs were actually used to mar-
    ket and sell products, and testified as to when the cata-
    logs were used. Nowhere is a foundation laid to establish
    that the catalogs identified actually were prepared and
    kept as business records of Triumph. Given the Board’s
    ruling excluding testimony by Ms. Fisher about market-
    ing activities of which she had no personal knowledge,
    moreover, there is no admissible testimony in the record
    regarding the actual use of the catalogs or the fact of
    marketing prior to 2003. Accordingly, on remand, the
    Board must address the weight, if any, to be given to pre-
    July 2003 documents in the absence of any testimony
    authenticating them or addressing their use. The Board
    must then assess whether these apparent gaps in Tri-
    umph’s proofs impact the Board’s determination that the
    mark was in continuous use during any relevant period.
    Because the Board’s evidentiary errors call into ques-
    tion the validity of its secondary meaning analysis, we
    vacate the Board’s decision solely on its finding of ac-
    quired distinctiveness and remand for further proceed-
    ings.
    CONCLUSION
    For the foregoing reasons, and because we find that
    CSI’s remaining arguments are without merit, we affirm
    the Board’s decision dismissing CSI’s opposition on likeli-
    hood of confusion and dilution grounds. With respect to
    acquired distinctiveness, however, we vacate and remand
    for further proceedings consistent with this opinion.
    45               COACH SERVICES   v. TRIUMPH LEARNING
    AFFIRMED-IN-PART, VACATED-IN-PART,
    REMANDED
    

Document Info

Docket Number: 2011-1129

Citation Numbers: 668 F.3d 1356, 101 U.S.P.Q. 2d (BNA) 1713, 2012 U.S. App. LEXIS 3385, 2012 WL 540069

Judges: Newman, O'Malley, Reyna

Filed Date: 2/21/2012

Precedential Status: Precedential

Modified Date: 10/19/2024

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