Wednesday, January 30, 2008

Mesmerized by Fame of "VANITY FAIR" Mark, TTAB Sustains 2(d) Opposition to "VANITY INSANITY" for Clothing

Here's the scenario: famous mark holder versus pro se applicant in a TTAB 2(d) opposition. Take a guess as to who wins? Not Applicant Kelly C. Hainline. Like the lady who backed into the airplane propeller, it was "dis-as-ter" when she tried to register the marks VANITY INSANITY, VANITY & SANITY, and VANITY N SANITY for clothing and athletic apparel. The Board found the marks likely to cause confusion with the famous mark VANITY FAIR, registered for underwear, pajamas, and like clothing items. Vanity Fair, Inc. v. Hainline, Oppositions Nos. 91163354, 91166973, and 91166975 (January 15, 2008) [not precedential].

Vanity Fair argument?

The Board began its analysis with the fifth du Pont factor, the fame of the mark. The record evidence showed that the VANITY FAIR mark has been used for 90 years, and that Opposer's sales and advertising figures [filed under seal] are "very substantial and certainly large enough to support a finding of fame." Indeed, the Board found that the VANITY FAIR mark has achieved a "significant degree of fame." And of course, fame "weighs heavily in favor of a finding of likelihood of confusion."

Turning to the goods, the Board observed that the applications and Opposer's registrations, respectively, include lingerie, loungewear, sleepwear, and underwear. Therefore, the second du Pont factor weighs in Opposer's favor. As to the third factor, the Board must presume that the goods travel in all normal trade channels to all normal classes of consumers. Thus this factor, too, favored Opposer. Likewise, the fourth factor, the conditions under which the goods are purchased, favored Opposer, since the goods are ordinary consumer items purchased with only ordinary care.

Finally, the Board turned to the first du Pont factor, the similarity of the marks. The Board deemed the word VANITY to be the dominant feature of all the marks: "The other words in the respective marks also contribute to the marks' commercial impression and we have given them due consideration, but we deem VANITY to be the most prominent feature of the marks and we therefore accord it the most significant weight in our comparison of the marks." [Game, set, and match - ed.]

Moreover, "the similarity in appearance and sound which results from the presence of VANITY in both marks outweighs the difference between the marks which result from the presence of the different additional wording." And although the marks are "somewhat dissimilar in connotation," the presence of the word VANITY gives them similar commercial impressions.

In sum, because Opposer's VANITY FAIR mark is famous, it is entitled to a "very broad scope of protection." "Given the long use and fame of opposer's VANITY FAIR mark, potential purchasers are likely to view applicant's mark beginning with the word VANITY as whimsical, contemporary variations on opposer's mark," and so confusion is likely.

The Board therefore sustained the three oppositions.

TTABlog comment: Does anyone believe that, in the real world, a half-way intelligent person would find these marks confusingly similar? Oops, I forgot. We're not dealing with the real world here. My bad.

Why is VANITY the dominant portion of all the marks? What about the alliteration of VANITY SANITY? What about the recognized meaning of the two-word phrase VANITY FAIR?

The lesson for Opposers, once again, is this: take the time and make the effort to prove that your mark is as strong as possible. The likelihood of your success in a 2(d) opposition will increase exponentially.

TTABlog postscript: The CAFC affirmed this decision in a nonprecedential dated December 5, 2008.

Text Copyright John L. Welch 2008.


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