DSW Shoe Warehouse, Inc.

Trademark Trial and Appeal Board

Jul 29, 2020

88286291 (T.T.A.B. Jul. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re DSW Shoe Warehouse, Inc.
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Serial No. 88286291
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Theodore R. Remaklus of Wood Herron & Evans LLP
for DSW Shoe Warehouse, Inc.
Marco Wright, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Bergsman, Lykos and Coggins,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
DSW Shoe Warehouse, Inc. (“Applicant”) seeks to register on the Principal
Register the standard character mark COACH AND FOUR for “handbags” in
International Class 18.1

1 Application Serial No. 88286291, filed February 1, 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming September 1, 2018 as the date of first use
anywhere and in commerce.
Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system. Citations to briefs refer to actual page number, if available, as
well as TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE”
corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the
Serial No. 88286291
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Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered marks displayed below, each owned by Coach IP Holdings LLC, that it is
likely to cause confusion or mistake or to deceive:2
Registration No. 1071000 for the typed3 mark COACH on
the Principal Register for, in relevant part, “women’s
handbags and carry-on luggage” in International Class 18;4
and
Registration No. 2088706 for the typed mark COACH on
the Principal Register for, in relevant part, “attache cases,
briefcases, satchels, tote bags, duffle bags, key cases and
leather key fobs, men’s clutches, coin cases, credit card
cases, waist pouches, [water bottle carriers,] passport
covers, cosmetic cases sold empty, toiletry cases sold
empty, and identification tags for luggage, luggage,
garment bags, back packs” in International Class 18.5
Following issuance of the final refusal, Applicant timely filed several requests for
reconsideration, all of which were denied.6 Applicant then filed a notice of appeal
which is now fully briefed. For the reasons explained below, we affirm the refusal to
register.

page number(s) of that particular docket entry. See Turdin v. Trilobite, Ltd., 109 USPQ2d
1473, 1476 n.6 (TTAB 2014).
2 Registration Nos. 1309779 and 2045676 which were also cited as a bar to registration were
cancelled on June 27, 2019.
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings;
the preferred nomenclature was changed to conform to the Madrid Protocol. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012); see also TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018).
4 Registered August 9, 1977; renewed.
5 Registered August 19, 1997; renewed.
6 Requests for Reconsideration were filed on July 23, 2019; August 14, 2019 and September
30, 2019.
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I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each DuPont factor for which there is evidence or argument.
See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). When analyzing these factors, the overriding concerns are not only to prevent
buyer confusion as to the source of the goods, but also to protect the registrant from
adverse commercial impact due to use of a similar mark by a newcomer. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 26 USPQ2d at 1688 (“the
various evidentiary factors may play more or less weighty roles in any particular
determination”). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”)); see also In re Chatam Int’l
Serial No. 88286291
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Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). These
factors, and the others, are discussed below.
We will concentrate our analysis on the registered typed mark COACH identified
in Registration No. 1071000 for “women’s handbags and carry-on luggage.” If
likelihood of confusion is found as to this registration, it is unnecessary to consider
the other cited registration. Conversely, if likelihood of confusion is not found, we
would not find likelihood of confusion as to the other cited registration. See, e.g., In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Goods and Established, Likely-to-Continue Channels of Trade and
Classes of Consumers

We commence by comparing the goods as they are identified in the involved
application and cited registration.7 See In re Detroit Athletic Co., 903 F.3d 1297, 128
USPQ2d 1047, 1050 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v.
Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002). Applicant’s goods are identified as “handbags” in International Class 18. The

7 Applicant presented no arguments regarding this DuPont factor in its main brief. In reply,
it stated that it “does not dispute the relatedness of the respective goods…” Reply Brief, p. 2;
7 TTABVUE 3.
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cited registration includes International Class 18 goods identified as “women’s
handbags and carry-on luggage.” Insofar as Applicant’s “handbags” are unrestricted
as to type, we can assume that the identification encompasses all types of handbags
including Registrant’s more specific “women’s handbags.” See, e.g., In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.”‘). As such, the goods are in-part
identical.
In addition, because Applicant’s identification does not contain limitations
regarding intended users of its respective goods, we cannot narrow the class of the
intended purchasers. See, e.g., Detroit Athletic Co., 128 USPQ2d at 1052 (“the
registration does not set forth any restrictions on use and therefore cannot be
narrowed by testimony that the applicant’s use is, in fact, restricted to a particular
class of purchasers”) (citation omitted); In re i.am.symbolic, LLC, 123 USPQ2d at
1748. Because the goods are legally identical in part and unrestricted as to trade
channels, we must presume that these particular goods travel in the same ordinary
trade and distribution channels and will be marketed to the same potential
consumers, namely women. See Viterra, 101 USPQ2d at 1908 (even though there was
no evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion); In
re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
there are legally identical goods, the channels of trade and classes of purchasers are
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considered to be the same); Am. Lebanese Syrian Associated Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
These DuPont factors weigh in favor of finding a likelihood of confusion.
B. The Marks

Next we compare Applicant’s applied-for standard character mark COUCH AND
FOUR with Registrant’s typed mark COACH. This DuPont likelihood of confusion
factor involves an analysis of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (citing DuPont, 177 USPQ at 567). “Similarity
in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No.
18–2236 (Fed. Cir. Sept. 13, 2019) (mem) (citing In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)). Accord Krim-Ko Corp. v. Coca-Cola Bottling Co. , 390 F.2d 728 , 156
USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling
or sound alone is likely to cause confusion.”) (citation omitted).
“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.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Our analysis cannot be predicated on
dissecting the marks into their various components; that is, the decision must be
Serial No. 88286291
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based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a
mark should not be dissected and considered piecemeal; rather, it must be considered
as a whole in determining likelihood of confusion.”).
Where, as here, the goods are identical in part, less similarity between the marks
is needed for us to find a likelihood of confusion. Coach Servs., Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.”).
Applicant, citing Kellogg Co. v. Pack’em Enter. Inc., 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991), argues that the first DuPont factor is dispositive due to notable
differences in sound, appearance, connotation and commercial impression. Applicant
acknowledges that both marks contain the term COACH but argues that “[v]isually
and audibly, the marks are quite different.”8 Applicant highlights the fact that its
mark consists a “three-word, three-syllable, unitary phrase” whereas the cited mark
consists of a single monosyllabic word.9 Applicant urges the Board to find that the
additional wording AND FOUR is co-dominant with the term COACH, thereby
differentiating the marks both visually and audibly. Applicant also points to the

8 Applicant’s Brief, p. 15; 4 TTABVUE 17.
9 Id.
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inclusion of AND FOUR as altering the meaning and commercial impression as a
reference to “four horses (i.e. a coach and four horses).”10 Applicant maintains that
the word COACH when considered in isolation “can be read to have a variety of
meanings (the leader of a sports team, to guide or train someone, etc.).”11
We disagree. Consumers do not focus on minutia but rather overall impressions.
See In re John Scarne Games, Inc., 120 USPQ 315, 315-16 (TTAB 1959) (“Purchasers
of game boards do not engage in trademark syllable counting — they are governed by
general impressions made by appearance or sound, or both.”). Applicant’s and
Registrant’s marks are highly similar in appearance and sound. Applicant’s mark
COACH AND FOUR commences with the word COACH, the entirety of the cited
mark, and the term “coach” when considered in relation to the goods is arbitrary. See
Detroit Athletic Co., 128 USPQ2d at 1049 (finding “the identity of the marks’ two
initial words is particularly significant because consumers typically notice those
words first”); Palm Bay, 73 USPQ2d at 1692 (finding similarity between VEUVE
ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains
a ‘prominent feature’ as the first word in the mark and the first word to appear on
the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and
CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e]
identical lead word”). Consumers, focusing on the first shared common element, are

10 Id.
11 Id. at 16; 4 TTABVUE 18.
Serial No. 88286291
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likely to perceive the applied-for mark as a modification of the cited mark. As such,
the marks are similar in sound and appearance.
In addition, nothing in the record supports Applicant’s argument that consumers
are likely to perceive COACH AND FOUR as a phrase with a distinct connotation
and commercial impression when compared with Registrant’s single word mark
COACH. Even if we accept Applicant’s position as to the various connotations and
commercial impressions of the cited mark COACH, a similar connotation as referring
to a horse drawn carriage could also be gleaned by consumers when encountering
Registrant’s mark.12 For this reason, it is likely that consumers will perceive
Applicant’s standard character mark COACH AND FOUR as a product line extension
of the cited typed mark COACH based on their similar meanings and commercial
impressions as evoking a four-wheeled horse drawn carriage. Applicant’s and
Registrant’s marks therefore engender similar connotations and commercial
impressions as well.
Under such circumstances, where Applicant’s mark incorporates the entirety of
Registrant’s mark, the similarity of the marks increases. See China Healthways Inst.
Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007)
(applicant’s mark CHI PLUS is similar to opposer’s mark CHI both for electric
massagers); The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ

12 “Coach” when used as a noun, may be defined as “a large usually closed four-wheeled horse-
drawn carriage having doors in the sides and an elevated seat in front for the driver” from
www.merriam-webster.com. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23
(TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed
format or have regular fixed editions).
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419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne,
hair spray, conditioner and shampoo is similar to CONCEPT for cold permanent wave
lotion and neutralizer); Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph
E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s
mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause
confusion with BENGAL for gin).
In sum, although we have pointed to the identical dominant portions of the
marks, we acknowledge the fundamental rule that the marks must be considered in
their entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir.
2015); Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ
272, 273-74 (CCPA 1974). We note the specific differences pointed out by Applicant.
These differences, however, are outweighed by the similarities of the marks. Thus,
when comparing the marks overall, they are similar in sound, meaning, connotation
and overall commercial impression. The similarity of the marks weighs in favor of
finding a likelihood of confusion.
C. Conditions of Sale
We turn now to the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
Serial No. 88286291
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inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
Applicant asserts that handbags, as a fashion product, “are typically purchased
only after extremely careful consideration based on the purchasers’ knowledge of the
field and its brands, the quality and function of the products, and, perhaps most
importantly, personal taste, style, and whether the handbag would complement the
purchaser’s attire, etc.”13 Essentially Applicant contends that consumers are more
likely to carefully choose a handbag based on style, quality, and color. Applicant also
points to evidence that Registrant’s handbags are a “luxury” item, retailing at a price
range of $150 - $5300.14 For these reasons, Applicant maintains that prospective
consumers will be able to distinguish Applicant’s mark from the cited mark.
Applicant’s arguments are misplaced. The identifications in the applications and
cited registration include handbags at no specified price point and are not restricted
by age, fashion sense or sophistication. As noted above, we cannot assume, as
Applicant urges, that these items are rendered to different classes of buyers, in
different marketing contexts or at different prices. We look to the registration and

13 Applicant’s Brief, p. 16; 4 TTABVUE 17. In support thereof, Applicant cites to McGregor-
Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137 [202 USPQ 81, 93] (2d Cir. 1979) (finding
no likelihood of confusion because the purchaser of women’s coats “tends to be sophisticated
and knowledgeable”). McGregor-Doniger was an infringement case, and the Court, unlike
this Board, was entitled to and did consider several elements not relevant in ex parte Board
cases. While the Board may consider opinions from other circuits, it relies primarily on
decisions of the Board itself, as well as the decisions of the Court of Appeals for the Federal
Circuit (“Federal Circuit”) (which determines appeals from decisions of the Board) and the
Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal
Circuit).
14 July 23, 2019 Request for Reconsideration, Exhs. 7-8, TSDR pp. 35-64 (excerpts from
www.tapestry.com and www.coach.com/shop/women-handbags-new arrivals).
Serial No. 88286291
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application, and not to extrinsic evidence about Registrant’s and Applicant’s actual
goods, customers, or channels of trade. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 110 USPQ2d at 1161; Octocom Sys, Inc. v. Hous. Comput. Serv. Inc., 16
USPQ2d at 1787 (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant's goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed.”); Paula Payne Prods. v. Johnson Publ’g Co.,
473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue
of likelihood of confusion must be decided on the basis of the respective descriptions
of goods”). Rather, we must assume that the types of buyers overlap to include both
the sophisticated fashionista as well as the ordinary bargain hunter. Ordinary
consumers of Applicant’s and Registrant’s goods are likely to exercise only ordinary
care, and given the lack of price restrictions in the identifications, may even buy
inexpensive goods of this type on impulse. See Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-
priced and subject to impulse buying, the risk of likelihood of confusion is increased
because purchasers of such products are held to a lesser standard of purchasing
care.”). Accordingly, this factor also weighs in favor of finding a likelihood of
confusion.
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D. Any Other Established Fact Probative of the Effect of Use
Applicant devotes the majority of its appeal brief to the thirteenth and final
DuPont factor which pertains to “any other established fact probative of the effect of
use.” DuPont, 177 USPQ at 567. Rarely invoked, this factor “accommodates the need
for flexibility in assessing each unique set of facts….” In re Strategic Partners Inc.,
102 USPQ2d 1397, 1399 (TTAB 2012). This includes a variety of circumstances, such
as the coexistence of an applicant’s prior-registered mark or marks with the cited
registration. Applicant, pointing to the following sequence of actions by the USPTO,
argues that the Examining Attorney failed to give due consideration to this factor:
● On October 27, 1953, Applicant’s Registration No.
0581571 was registered on the Principal Register for the
mark COACH AND FOUR and DESIGN displayed below
for “ladies’ and misses’ shoes, made of leather, suede,
canvas, fabric, or compositions and combinations thereof”
in International Class 25. This registration remains valid
and subsisting.
15
● Nearly 24 years later, on August 9, 1977, Registration
No. 1071000, owned by Coach IP Holdings LLC, was
registered for the typed mark COACH on the Principal
Register for, in relevant part, “women’s handbags and
carry-on luggage” in International Class 18. This
registration remains valid and subsisting.

15 See June 7, 2019 Response to Office Action, Ex. 3 (TESS printout), TSDR pp. 11-12.
Serial No. 88286291
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● On December 18, 1984, Registration No. 1309779, owned
by Coach Services Inc., was registered on the Principal
Register for the composite mark displayed below for
“Eyeglass Cases” in International Class 9; “Checkbook
Cases and Pocket Secretaries” in International Class 16;
and “Leather Goods-Namely, Wallets, Purses, Key Cases,
Cosmetic Cases (Sold Empty), Business Card Cases, Credit
Card Cases, Passport Holders, Clutches, Tote Bags, and
Shoulder Bags” in International Class 18. This registration
remained in existence until June 27, 2019.

● On March 18, 1997, Registration No. 2045676, also
owned by Coach Services Inc., was registered on the
Principal Register for the composite mark displayed below
for “key fobs of metal and money clips” in International
Class 6; “cellular phone cases, computer cases and
computer accessory cases” in International Class 9; “desk
pads,[ desk file trays, memo boxes, pencil cups], business
card holders, paperweights, planning diaries, daily
business planners, checkbook covers, passport covers” in
International Class 16; “attache cases, briefcases,
briefcase-type portfolios, satchels, duffel bags, men’s
clutches, coin cases, waist pouches, [water bottle carriers,]
passport covers, and identification tags for luggage,
luggage, garment bags, backpacks” in International Class
18; “picture frames, jewelry cases not of precious metal” in
International Class 20; and “hats, caps and gloves” in
International Class 20. This registration also remained in
existence until June 27, 2019.
Serial No. 88286291
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● Shortly thereafter, on August 19, 1997, Registration No.
2088706, owned by Coach IP Holdings LLC, was registered
for the typed mark COACH on the Principal Register for,
in relevant part, “attache cases, briefcases, satchels, tote
bags, duffle bags, key cases and leather key fobs, men’s
clutches, coin cases, credit card cases, waist pouches,
[water bottle carriers,] passport covers, cosmetic cases sold
empty, toiletry cases sold empty, and identification tags for
luggage, luggage, garment bags, back packs” in
International Class 18. This registration also remains valid
and subsisting.
● Applicant then obtained on December 16, 2008, a second
registration, Registration No. 3548150, on the Principal
Register for the standard character mark COACH AND
FOUR for “[ Handbags, wallets, purses, tote bags, luggage,
and small leather goods, namely, clutch purses, leather key
cases and credit card cases ]” in International Class 18 and
“[ Gloves, hats, dresses, pants, skirts, jackets, coats, shirts,
blouses, vests, shorts and sweaters, belts, men’s ties, ]
ladies’ and misses’ shoes, made of leather, suede, canvas,
fabric, or compositions and combinations thereof” in
International Class 25. The registration was partially
cancelled under Section 8 insofar as all of the goods in
International Class 18 were deleted, including “handbags,
… purses, … clutch purses,” and some of the goods in
Serial No. 88286291
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International Class 25 were removed.16 Otherwise the
registration remains valid and subsisting.17
● On February 25, 2013, Coach IP Holdings LLC obtained
Registration No. 4296582 on the Principal Register for the
mark COACH EST. 1941 NEW YORK and DESIGN
displayed below (EST. 1941 and NEW YORK disclaimed)
for in relevant part “Business card cases; Handbags;
Leather credit card cases; Purses; Shoulder bags; Wallets;
Wristlet bags” in International Class 18. The description of
the mark is as follows. “The mark consists of an image of a
horse drawn carriage with the words ‘COACH EST. 1941’
in a lozenge design and the words ‘NEW YORK’
underneath.” The registration remained valid and
subsisting until September 27, 2019.
18
● On February 1, 2019, Applicant filed Application Serial
No. 88286291, the application involved in this appeal, for
the standard character mark COACH AND FOUR on the

16 See Applicant’s “Combined Declaration of Use and Incontestability under Sections 8 & 15,”
filed November 25, 2014 (“For International Class 018, this filing does not cover this specific
class. This entire class is to be permanently deleted from the registration. For International
Class 025, this filing does NOT cover the following goods or services for this specific class
listed in the registration, and these goods or services are to be permanently deleted from the
registration: Gloves, hats, dresses, pants, skirts, jackets, coats, shirts, blouses, vests, shorts
and sweaters, belts, men’s ties.”). July 23, 2019 Request for Reconsideration, Ex. 6 (TESS
printout) TSDR pp. 22-26.
17 See June 7, 2019 Response to Office Action, Ex. 1 (TESS printout), TSDR pp. 5-6.
18 July 23, 2019 Request for Reconsideration, Ex. 5 (TESS printout) TSDR pp. 19-20.
Serial No. 88286291
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Principal Register for “handbags” in International Class
18.
● A few months after Applicant filed the instant
application that is the subject of this appeal, on April 16,
2019, Applicant obtained a third registration on the
Principal Register, Registration No. 5728793, for the mark
COACH AND FOUR and DESIGN displayed below for
“handbags” in International Class 18. The description of
the mark is as follows: “The mark consists of the stylized
wording ‘COACH AND FOUR’ between two horizontal
lines above which is the image of a horse-drawn stage coach
driven by a man and pulled by two pairs of horses.” Color
is not claimed as a feature of the mark.
19
● On May 24, 2019, approximately five weeks after
Applicant’s COACH AND FOUR and DESIGN mark noted
above was registered for “handbags,” the Examining
Attorney cited Registration Nos. 1071000 and 2088706
owned by Coach IP Holdings LLC and the two registrations
owned by Coach Services Inc., Registration Nos. 1309779
and 2045676, as a bar to registration under Section 2(d).
The Examining Attorney did not cite Coach IP Holdings
LLC’s Coach IP Holdings LLC’s Registration No. 4296582
for the mark COACH EST. 1941 NEW YORK and DESIGN
as a bar to registration.
● Registration Nos. 1309779 and 2045676 owned by Coach
Services Inc. were cancelled on June 27, 2019 for failure to
file a Section 8 declaration.
● The next day, on June 28, 2019, the Examining Attorney
issued a Final Office Action maintaining the Section 2(d)

19 See June 7, 2019 Response to Office Action, Ex. 2 (TESS printout), TSDR pp. 8-9.
Serial No. 88286291
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refusal based on Coach IP Holdings LLC’s two cited
registrations.
● Coach IP Holdings LLC’s Registration No. 4296582 for
the mark COACH EST. 1941 NEW YORK and DESIGN
was cancelled on September 27, 2019 for failure to file a
Section 8 declaration.
● On December 4, 2019, Applicant filed a Notice of Appeal.
Based on this chronology, Applicant takes the position that:
The respective marks have coexisted for almost 60 years,
have been used with handbags or closely related apparel
products continuously during that time, and have
repeatedly been registered over each other for the same
marks and goods (and closely related marks and goods) as
appear in the pending application. Five separate
examining attorneys over the course of six registrations
spread out over decades have all come to the conclusion
that confusion is not likely to occur, and Applicant has
specifically registered the same mark with the same goods
as in the pending application three times over the course of
more than a decade. These facts alone, namely, the decades
of coexistence and repeated coregistration by multiple
examining attorneys for the same marks and the same or
closely related goods, demonstrate that confusion is not
likely to occur, that the USPTO has repeatedly recognized
this for both Applicant and the owner of the Cited Marks,
and that the refusal should be reversed.
More specifically, Applicant contends that its previously registered marks are
either “identical to the applied-for mark or they otherwise contain the identical text
paired with a design that merely depicts that text,” that is to say they each “contain
identical text below a design that directly depicts the text (in other words, the design
element does not change then meaning or connotation of the text or otherwise add
meaningfully different elements).”20 Applicant further argues that the goods listed in

20 Applicant’s Brief, p. 10; 4 TTABVUE 11.
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the application, “handbags,” are either identical or closely related and complementary
to the goods identified in Applicant’s prior registrations. Finally, Applicant points to
prior and contemporaneous use of each of its registered marks with the cited mark
based on the claimed dates of use set out in each registration.
Where an applicant owns a prior registration and the mark is “substantially the
same” as in the applied-for application, this can weigh against finding that there is a
likelihood of confusion. Inn at St. John’s, 126 USPQ2d at 1748 (citing In re Strategic
Partners Inc., 102 USPQ2d at 1399). In the seminal case Strategic Partners, no
likelihood of confusion was found with the registered mark ANYWEAR BY JOSIE
NATORI and design where the applicant’s prior registered mark ANYWEARS was
“substantially similar” to the applied-for mark ANYWEAR for identical goods and the
applicant’s prior registration and cited registration had coexisted for over five years.
Strategic Partners Inc., 102 USPQ2d at 1399.
As a critical part of its reasoning, the Board emphasized that a petition to cancel
the applicant’s prior registration on the basis of a Section 2(d) claim was foreclosed
because the registration was over five years old. Id. See Trademark Act Section 14(3);
15 U.S.C. § 1064(3) (permitting cancellation after five years only on enumerated
grounds not including likelihood of confusion). In reversing the Section 2(d) refusal,
the Board reasoned:
[T]he present case involves the unique situation presented
by the coexistence of applicant's existing registration with
the cited registration for over five years, when applicant's
applied-for mark is substantially similar to its existing
registered mark, both for identical goods. When we
consider these facts under the thirteenth du Pont factor,
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we find in this case that this factor outweighs the others
and leads us to conclude that confusion is unlikely.
Id. at 1400.
By contrast, in In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790
(TTAB 2017) where the Section 2(d) refusal was affirmed, the applicant’s intervening
registration had coexisted with the cited registrations for less than five years,
meaning that particular applicant’s registration was still subject to a petition to
cancel under Section 2(d). See Section 14 of the Trademark Act, 15 U.S.C. § 1064. The
Board found that “while the 3 year co-existence of Applicant’s prior registration and
the cited registration is a relevant consideration, it does not outweigh the other du
Pont factors in this case.” USA Warriors, 122 USPQ2d at 1793. Accord In re Country
Oven, Inc., 2019 USPQ2d 443903, *18 (TTAB 2019) (in affirming Section 2(d) refusal,
Board noted that two of applicant’s three prior registrations were less than five years
old and could be challenged in a cancellation proceeding under Section 2(d)).
A further refinement of this analysis was provided in In re Inn at St. John’s, LLC,
where the U.S. Court of Appeals for the Federal Circuit affirmed the Board’s
likelihood of confusion determination. The Board distinguished the circumstances of
Inn at St. John’s from Strategic Partners because “Applicant’s applied-for mark —
5IVE STEAKHOUSE and design — moves closer to the cited registration —
5IVESTEAK and design — than the mark in Applicant’s prior registration — 5IVE
RESTAURANT and design — rendering the new mark more similar in appearance,
sound, and meaning to Registrant’s mark”). Inn at St. John’s, 126 USPQ2d at 1745-
46.
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Country Oven provides another set of distinguishing circumstances from
Strategic Partners. In Country Oven, the Board affirmed the Section 2(d) refusal
despite the existence of the applicant’s prior registration for the same mark because
the services identified in the applicant’s prior registration were different than those
set forth in the application at issue. 2019 USPQ2d 443903, *18 (“Applicant’s only
prior registration [for the same mark] that has been registered for over five years and
thus impervious to a challenge under Section 2(d) is, as noted, for different services.”).
TMEP Section 1207.01 summarizes that state of the law as follows:
In view of Strategic Partners, when determining whether
the coexistence of the applicant’s prior registration with
another party’s registration weighs against citing the
latter registration in a §2(d) refusal of the applicant’s
applied-for mark, the examining attorney should consider:
(1) whether the applicant’s prior registered mark is the
same as the applied-for mark or is otherwise not
meaningfully different; (2) whether the identifications of
goods/services in the application and the applicant’s prior
registration are identical or identical in relevant part; and
(3) the length of time the applicant’s prior registration has
co-existed with the registration being considered as the
basis for the §2(d) refusal. See id. at 1400. The duration of
coexistence is not dispositive as to whether a §2(d) refusal
should issue; instead, this factor should be considered
together with all the other relevant DuPont factors. See id.
at 1400; cf. In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1748 (TTAB 2018) (finding that applicant’s earlier
registration of a partially similar mark was a neutral factor
in the §2(d) analysis, because the applied-for mark was
more similar to the cited registered mark than applicant’s
previously registered mark), appeal filed, No. 18-2236
(Fed. Cir.); In re USA Warriors Ice Hockey Program, Inc.,
122 USPQ2d 1790, 1793 (TTAB 2017) (distinguishing
Strategic Partners and finding that the 3½-year
coexistence of applicant’s prior registration and the cited
registration was a relevant consideration but did not
outweigh the other relevant DuPont factors).
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In this particular case, we do not find the coexistence of Applicant’s prior
registrations with the cited registrations to be pivotal. Applicant’s Registration Nos.
0581571 and 3548150 are over five years old meaning that they are each impervious
to a Section 2(d) challenge in a cancellation proceeding. However, while the mark
COACH AND FOUR and DESIGN displayed in Registration No. 0581571 contains
the same literal element as the applied-for mark, it is accompanied by a design
element and is for goods different from those at issue here, “ladies’ and misses’ shoes,
made of leather, suede, canvas, fabric, or compositions and combinations thereof” in
International Class 25. The standard character mark COACH AND FOUR set forth
in Registration No. 3548150 is identical to the applied-for mark here; however,
“handbags, … purses, … clutch purses” were deleted from the registration under
Section 8, meaning that the identified goods are no longer identical. And Applicant’s
most recently issued registration, Registration No. 5728793, for the mark COACH
AND FOUR and DESIGN for “handbags” in International Class 18 is less than five
years old. As such, this registration may still be challenged in a cancellation
proceeding under Section 2(d). See Trademark Act § 14, 15 U.S.C. § 1064.
Furthermore, as with Registration No. 0581571, Applicant’s most recent registration
contains the same literal element as the applied-for mark but it is accompanied by a
design element.
Applicant cites to the Board’s reversal of the Section 2(d) refusal in In re Allegiance
Staffing, 115 USPQ2d 1319 (TTAB 2015) as support for its position. In Allegiance
Staffing, the applicant previously owned a registration for ALLEGIANCE
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STAFFING for staffing services, which was inadvertently allowed to expire, and was
seeking a new registration for the same mark and services. Over a number of years,
six registrations for ALLEGIS GROUP and variations thereof for similar services
issued and another two were approved for publication all while applicant’s prior
registration remained valid. These intervening registrations were cited against the
applicant’s new application. Six of the intervening registrations were over five years
old, and thus immune from cancellation on the ground of likelihood of confusion. Id.
at 1322–23. Although the applicant’s prior registration had inadvertently expired,
the Board took the intervening registrations into account as one factor in reversing
the refusal to register. Id. at 1323–24. This however was not the sole factor in the
Board’s decision to reverse the refusal. The Board also cited “the differences in the
meaning and commercial impression of the marks [and] the degree of care exercised
by consumers.” Allegiance Staffing, 115 USPQ2d at 1323. As the Board explained, “it
is the difference in meaning of the words that is even more significant, since
ALLEGIANCE has a clear meaning, while ALLEGIS is a coined term which has no
meaning.” Such is not the case here where the marks at issue COACH AND FOUR
and COACH are similar in connotation and meaning.
In addition, Applicant’s allegations that the involved marks have been in use for
years without evidence of confusion, which actually pertain to the eighth DuPont
factor, are unsupported. See In re Guild Mtg. Co., 2020 USPQ2d 10279 *6 (TTAB
2020) (“The eighth du Pont factor, by contrast — “[t]he length of time during and
conditions under which there has been concurrent use without evidence of actual
Serial No. 88286291
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confusion,” see du Pont, 177 USPQ at 567 — requires us to look at actual market
conditions, to the extent there is evidence of such conditions of record.”). See also In
re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971). In contrast to the
case before us, in Guild Mtg., the Board was able to analyze the purported lack of any
actual confusion because applicant submitted a declaration by the applicant’s
president attesting to the extent of the applicant’s use of its mark. In addition, the
applicant submitted evidence regarding the registrant’s business. However, neither
the testimony, nor the evidence, provided any specifics regarding the geographic
extent or overlap of applicant’s or registrant’s services. 2020 USPQ2d 10279 at *7. In
addition, the Board noted “there has been no opportunity to hear from Registrant
about whether it is aware of any reported instances of confusion. We therefore are
getting only half the story.” Guild Mtg., 2020 USPQ2d at *7, citing In re Opus One,
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001) (“The fact that an applicant in an ex parte
case is unaware of any instances of actual confusion is generally entitled to little
probative weight in the likelihood of confusion analysis, inasmuch as the Board in
such cases generally has no way to know whether the registrant likewise is unaware
of any instances of actual confusion, nor is it usually possible to determine that there
has been any significant opportunity for actual confusion to have occurred.”)
(citations omitted).
Hence, we find that the USPTO’s issuance of Applicant’s prior registrations,
while weighing slightly against a finding of likelihood of confusion, is not pivotal.
“[T]here is no rule that a prior registration entitles a party to another registration.
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[The thirteenth] DuPont factor is highly fact specific and it is under very specific
circumstances that this factor may matter.” Country Oven, Inc., 2019 USPQ2d
443903, *18.
II. Conclusion
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto. The similarities of the marks coupled with the in-part
identical nature of the goods and presumptively overlapping trade channels and
classes of consumers lead us to the conclusion that prospective consumers are likely
to confuse the involved goods as originating from or associated with or sponsored by
the same entity. While an addition to a mark may be sufficient to avoid a likelihood
of confusion if the marks in their entireties convey significantly different commercial
impressions (see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d
1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use
of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen
textiles (including barbeque mitts) is likely to cause confusion, because, inter alia,
THE RITZ KIDS creates a different commercial impression)) such is not the case
here. Although the existence of Applicant’s prior registrations is a factor in our
decision, we do not consider this to be a dispositive factor against a finding of
likelihood of confusion. And as noted above, we have no evidence regarding any
instances of actual confusion, meaning that this DuPont factor is neutral.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.