  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
