## Facts

- Coach Leatherware Company, Inc. (Coach) designed and sold high-quality leather handbags and accessories, marketed under the Coach name through Coach channels and Coach-identified displays.
- Coach did not have trademark registrations covering the overall designs of its handbags, but claimed that the overall appearance of certain classic bags functioned as protectable trade dress.
- Coach attached to its handbags a distinctive lozenge-shaped leather hang tag embossed “Coach Leatherware,” suspended from a beaded brass chain; Coach owned a federal registration for the hang-tag configuration.
- AnnTaylor, Inc. (AnnTaylor), a retail chain selling women’s clothing and accessories, arranged for manufacturers (including Laura Leather Goods, Inc. and A & R Handbag, Inc.) to produce handbags that Coach alleged copied three classic Coach styles (commonly identified in the litigation as the Dinky Bag, Duffle Sac, and Convertible Clutch).
- The AnnTaylor handbags included leather tags suspended by beaded brass chains in a similar format, but embossed “AnnTaylor” in a different typeface.
- Coach sued under the Lanham Act, asserting (1) trade-dress infringement for the unregistered handbag designs under § 43(a), (2) infringement of the registered hang-tag mark under § 32, and also asserted New York unfair-competition claims.
- Coach moved for a preliminary injunction. Defendants cross-moved for summary judgment, arguing Coach could not show the secondary meaning required to protect the unregistered handbag designs.
- The district court, acting on its own initiative, granted summary judgment for Coach (the nonmovant) and entered a permanent injunction that barred defendants from substantially emulating any of Coach’s handbag designs.

## Issues

1. Whether the district court properly granted summary judgment sua sponte for Coach and, if so, whether the record permitted summary judgment on Coach’s unregistered handbag trade-dress claims (secondary meaning and likelihood of confusion).
2. Whether Coach was entitled to summary judgment on its registered hang-tag trademark claim based on likelihood of confusion.
3. Whether the permanent injunction—extending beyond the specific handbags and reaching essentially all Coach designs—was overbroad and required narrowing.

## Decision

- The Second Circuit affirmed summary judgment for Coach on the registered hang-tag claim, concluding the similarity of defendants’ tags (used in the same manner on similar handbags) supported likelihood of confusion as a matter of law on that trademark claim.
- The court reversed summary judgment for Coach on the unregistered handbag trade-dress claims, holding that disputes of fact remained as to whether the asserted design features had acquired secondary meaning and whether the overall designs created a likelihood of confusion.
- The court vacated the sweeping injunction that effectively barred imitation of all Coach designs and remanded for further proceedings, directing that any injunctive relief be limited to proven violations and that the design-based trade-dress claims be resolved on an appropriate factual record.

## Legal Principles

- A district court may, in limited circumstances, grant summary judgment for a nonmoving party, but only where the losing party had a fair opportunity to present evidence and where there is no genuine dispute of material fact.
- Unregistered product-design trade dress is protected under Lanham Act § 43(a) only if the plaintiff proves (a) the design identifies source in the minds of consumers (secondary meaning) and (b) the defendant’s use is likely to cause consumer confusion.
- Secondary meaning and likelihood of confusion typically turn on fact questions (including market context and competing evidence such as surveys) and may not be resolved on summary judgment when the record permits competing conclusions.
- A registered trademark is enforced under Lanham Act § 32 upon a showing of likelihood of confusion; a registered, fanciful mark receives strong protection, and close imitation in a directly competing context can justify summary judgment.
- Injunctive relief in trademark and trade-dress cases must be narrowly drawn to prevent the specific unlawful conduct found; courts should not impose broad bans covering unadjudicated product designs.

## Conclusion

Coach established trademark infringement as a matter of law only as to its registered lozenge-shaped hang tag, because defendants used a closely similar tag on handbags that closely resembled Coach’s classics, creating a likelihood of confusion. But Coach was not entitled to summary judgment on its broader, unregistered handbag trade-dress theories because secondary meaning and confusion regarding the overall bag designs remained disputed. The Second Circuit therefore affirmed only the hang-tag portion of the judgment, vacated the sweeping “all designs” injunction, and remanded for narrower relief and further proceedings on the design-based trade-dress claims.


Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162 (1991)