Cartier International AG V. Coachman, Opp. No. 91209815 (T.T.A.B. Oct. 5, 2016)
In Cartier International AG v. Coachman, Opp. No. 91209815 (T.T.A.B. Oct. 5, 2016), the Trademark Trial and Appeal Board (the “Board”) recently sustained opposer Cartier International A.G.’s (“Cartier”) opposition to an application to register TRINITY for leather handbags filed by Lance Coachman. Cartier’s opposition was based on the ground that Coachman’s TRINITY mark would likely cause confusion with Cartier’s own TRINITY mark. Cartier had long used the TRINITY mark in connection with various goods, and owned a federal registration for the TRINITY mark in connection with jewelry. Moreover, in the past, Cartier itself had used the TRINITY mark in connection with handbags, and intended to do so in the future.
The Board first addressed Cartier’s standing and priority. The parties did not dispute that Cartier had standing, but Coachman argued that Cartier had failed to establish priority because it did not have priority for the mark TRINITY for leather handbags. The Board recognized, however, that Cartier was not relying on its past use of TRINITY for leather handbags to establish priority; rather, it was relying on its registration for the TRINITY mark for jewelry. Slip op. at 6. Thus, Cartier had established priority and the issue was whether Coachman’s mark TRINITY for handbags so resembled Cartier’s previously-registered TRINITY mark for jewelry as to be likely to cause confusion.
The Board then reviewed the likelihood of confusion factors. First, the parties’ marks were identical. Id. at 7. Second, the Board found that Cartier’s TRINITY mark was strong for jewelry and therefore entitled to a wide scope of protection. In particular, Cartier’s line of TRINITY jewelry had received extensive unsolicited media coverage that referred to the “iconic” or “famous” TRINITY jewelry design. Id. at 9-11. Coachman had made of record three third-party uses of the TRINITY mark for handbags and one registration owned by one of the third parties. The Board held that evidence of only three third parties using the term TRINITY was not sufficient to demonstrate that Cartier’s TRINITY mark was weak. Moreover, Coachman had proffered no evidence regarding the extent of such third-party use. Id. at 11-12.
Third, the Board held that jewelry and handbags were related. The Board relied on evidence showing that Cartier markets its products as part of collections, with the products offered under each collection changing from year to year and season to season. Through the years, the TRINITY collection had encompassed a wide variety of goods, which included not only jewelry, but also leather belts, cufflinks, key rings, diaries, organizers, travel clocks, and pens. Moreover, in 2004 and 2005, Cartier had used the TRINITY mark in connection with handbags. Id. at 15-16. Further, Cartier had introduced evidence showing fourteen third parties that offered jewelry and handbags under the same mark. Id. at 16-18. On the basis of this evidence, the court found the goods related. Id. at 19.
Fourth, the Board considered the parties’ trade channels, and because neither party had limited the trade channels or purchasers in their respective application and registration, found that the goods were likely to move in the same channels of trade. Id. at 19-21. Fifth was the sophistication of purchasers factor. The Board rejected Coachman’s argument that the purchasers were sophisticated because the parties were selling expensive goods under their marks. The Board noted that neither Coachman’s application nor Cartier’s registration limited the goods to any particular price point, and therefore this factor was neutral. Id. at 21-22. Finally, the Board addressed the actual confusion factor. Coachman had argued that the lack of actual confusion established that there was unlikely to be confusion between the marks. The Board, however, found that there was no reasonable opportunity for confusion to have occurred because Coachman’s use of its mark had been minimal. Therefore, the actual confusion factor was neutral. Id. at 23-25.
Balancing the factors, the Board held that because the marks were identical, the goods were related, and the goods would move in the same channels of trade, Coachman’s registration of the TRINITY mark was likely to cause confusion with Cartier’s TRINITY mark.