Test Your TTAB Judge-Ability: Is INDIGO VANITY for T-Shirts Confusable With VANITY FAIR for Camisoles?

Vanity Fair, Inc. opposed an application to register the mark INDIGO VANITY for t-shirts, claiming likelihood of confusion with, and likelihood of dilution of, it allegedly famous, registered mark VANITY FAIR for camisoles, nightgowns, and the like. The Board found camisoles and t-shirts to be related, but Opposer failed to prove its claim that its mark is famous. So how do you think this came out? Vanity Fair, Inc. v. Ilyil Entertainment, LLC, Opposition No. 91201657 (May 21, 2014) [not precedential].

Fame: Because fame is a dominant factor in the duPont analysis, it is incumbent upon the claimant to clearly prove fame. Vanity Fair failed to do so. Although its advertising and sales figures were impressive, they were not placed in a meaningful context, and there was no evidence regarding the circulation of the magazines that mentioned VANITY FAIR branded merchandise. In sum, the evidence "fell short of demonstrating the extent so which such activities and achievements translate into widespread recognition of opposer's VANITY FAIR mark among the general public."

Opposer pointed to a decision in another case, in which its VANITY FAIR mark was found to be famous, but the Board "was not privy to the evidence made of record" in that proceeding. [Not to mention the fact that the applicant here was not a party to that prior proceeding and cannot be bound by the factual finding made therein - ed.].

The Board, however, found the VANITY FAIR mark to be arbitrary, and the long use and substantial sales and advertising under the mark, and lack of third-party use for similar goods, led the Board to find the mark to be strong and entitled to a broad scope of protection.

Of course, the failure to prove fame for Section 2(d) purposes put an end to Opposer's dilution claim, where an even higher standard for fame must be met.

The goods: The Board found opposer's camisoles to be similar to applicant's t-shirts: both are tops that can be worn as outerwear. If relatedness is established between one item in the application and one item in the cited registration, the Board pointed out, that suffices for a finding of likely confusion.

The Board, of course, assumed that the involved goods move through all normal channels of trade to all classes of purchasers. The record showed that opposer's goods are sold in nationwide retail stores that also carry t-shirts.

The identified goods include inexpensive apparel that would be purchased without a great deal of care or customer sophistication.

The marks: Not only are the involved marks different in appearance and sound, but they also differ in meaning and overall commercial impression.

Opposer argued that "indigo" is a shade of blue and therefore the opposed mark connoted "blue vanity." It maintained that the color blue is prominently featured in its packaging, trade dress, and advertising. The Board was not impressed:

Even assuming, arguendo, that opposer prominently features blue in relation to its goods, when considering word marks, the Board ordinarily does not look at trade dress because it is not part of opposer's mark, and opposer is free to change it or abandon it at any time. Moreover, there was no evidence that the public would associate the word "indigo" in applicant's mark with the color blue, rather than with the recording artist Indigo Marie Ford, who is affiliated with applicant. [She adopted the nickname "Indigo Vanity" in 2009].

Vanity Fair is a unitary phrase with literary connotations (in Pilgrim's Progress and in the novel of the same name by Thackeray). The opposed mark does not share that connotation, and overall the marks create different commercial impressions. Moreover, the Board found that INDIGO is the dominant element in applicant's mark because it appears as the first word in the mark.

Concluding that the first duPont factor was pivotal and outweighed all other factors, the Board dismissed the opposition.

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TTABlog note:  On the dilution issue, could opposer have shown that VANITY FAIR is a "household word" that points to its products? What about Vanity Fair magazine? Or the novel?

Text Copyright John L. Welch 2014.