Vanity Fair, Inc.v.Kelly C. Hainline

Trademark Trial and Appeal Board

Jan 15, 2008

No. 91166975 (T.T.A.B. Jan. 15, 2008)

Mailed:
Jan. 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Vanity Fair, Inc.
v.
Kelly C. Hainline
_____

Opposition No. 91163354
to application Serial No. 78315301
filed on October 17, 2003
_____

Opposition No. 91166973
to application Serial No. 78248217
filed on May 11, 2003
_____

Opposition No. 91166975
to application Serial No. 78248218
filed on May 11, 2003
_____

Paul J. Kennedy of Pepper Hamilton LLP for Vanity Fair, Inc.

Kelly C. Hainline, pro se.
______

Before Walters, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

The three above-captioned opposition proceedings were
consolidated by order of the Board dated April 27, 2006. We
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91163354, 91166973 and 91166975
2
shall decide all three cases in this single opinion, which
shall be entered in each of the opposition proceeding files.
Kelly C. Hainline, applicant herein, is the owner of
the three applications involved in these three opposition
proceedings. Vanity Fair, Inc., opposer herein, has opposed
registration in each case.
In application Serial No. 78315301 (involved in
Opposition No. 91163354), applicant seeks registration on
the Principal Register of the mark VANITY INSANITY (in
standard character form) for goods identified in the
application as “clothing and athletic apparel, namely
shirts, pants, sweatshirts, shorts, baseball caps, hats,
swimwear, beachwear, bottoms, jackets, sweat jackets,
pullovers, headwear, jogging suits, lingerie, loungewear,
polo shirts, sleepwear, tee shirts, tank tops, underwear,
shoes, warm up suits.”1
In application Serial No. 78248217 (involved in
Opposition No. 91166973), applicant seeks registration on
the Principal Register of the mark VANITY & SANITY (in
standard character form) for goods identified in the
application as “clothing, athletic apparel, and loungewear,
namely shirts, pants, sweatshirts, shorts, baseball caps,
hats, swimwear, beach wear, bottoms, jackets, sweat jackets,

1 This application was filed on October 17, 2003. It is based on
applicant’s asserted bona fide intention to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
Opposition Nos. 91163354, 91166973 and 91166975
3
pullovers, headwear, jogging suits, lingerie, polo shirts,
sleepwear, tee shirts, tank tops, underwear, shoes and warm
up suits.”2
In application Serial No. 78248218 (involved in
Opposition No. 91166975), applicant seeks registration on
the Principal Register of the mark VANITY N SANITY (in
standard character form) for goods identified in the
application as “clothing, athletic apparel, and loungewear,
namely shirts, pants, sweatshirts, shorts, baseball caps,
hats, swimwear, beach wear, bottoms, jackets, sweat jackets,
pullovers, headwear, jogging suits, lingerie, polo shirts,
sleepwear, swimwear, tee shirts, tank tops, underwear, shoes
and warm up suits.”3
Opposer has opposed registration as to each of the
three applications. As its ground of opposition in each
case, opposer alleges that each of applicant’s marks so
resembles opposer’s mark VANITY FAIR, previously used and
registered by opposer in connection with certain clothing
items, as to be likely to cause confusion, to cause mistake,

2 This application was filed on May 11, 2003. It is based on
applicant’s asserted bona fide intention to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).

3 This application was filed on May 11, 2003. It is based on
applicant’s asserted bona fide intention to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).

Opposition Nos. 91163354, 91166973 and 91166975
4
or to deceive. Trademark Act Section 2(d), 15 U.S.C.
§1052(d).4
In each opposition, applicant filed an answer by which
she denied the salient allegations of the notice of
opposition.
Both opposer and applicant submitted evidence at trial.
The case is fully briefed. After careful consideration of
the evidence of record and the parties’ arguments, we
sustain all three of the oppositions.
The evidence of record consists of the files of
applicant’s involved applications; the pleadings herein;
opposer’s notice of reliance on various items; the testimony
declaration of opposer’s witness Helen Winslow and exhibits
thereto; the testimony declaration of opposer’s witness Debi
Auman and exhibits thereto; applicant’s notice of reliance
on various items; the testimony declaration of applicant
Kelly Hainline and exhibits thereto; the testimony
declaration of applicant’s witness Armando Hurtado; and the
testimony declaration of applicant’s witness Shelley
Hurtado.5

4 Opposer also pleaded a dilution claim in each of the three
notices of opposition. Because opposer presented no argument in
its brief as to this ground, we deem opposer to have waived it,
and we shall give it no consideration.

5 The parties stipulated in writing that each could present trial
testimony by way of declaration. See Trademark Rule 2.123(b),
37 C.F.R. §2.123(b).

Opposition Nos. 91163354, 91166973 and 91166975
5
Opposer has made of record status and title copies of
its six pleaded registrations, which establish that the
registrations are in force and are owned by opposer. These
registrations are summarized as follows:

Registration No. 2808866,6 of the mark VANITY FAIR
(in standard character form) for “foundation
garments, lingerie, underwear, bras, slips,
loungewear, robes, sleepwear and hosiery”;

Registration No. 2185908,7 of the mark VANITY FAIR
(in stylized lettering) for “pajamas, robes,
peignoir sets, bed jackets, scuffs, teddies,
nightgowns, thermal underwear, slips, chemises,
thong underwear, bustiers, camisoles, bras, panty
hose, leggings, socks, body suits, briefs,
panties, pant liners, girdles, bodybriefers, and
panty-girdles”;

Registration No. 0918102,8 of the mark VANITY FAIR
(in stylized lettering) for “paper slips, petti-
slips, and briefs”;

Registration No. 0502941,9 of the mark VANITY FAIR
(in stylized lettering) for “women’s and misses’
underwear and lingerie, namely, vests, bloomers,
panties, briefs, chemises, bandeaux, brassieres,
slips, pettiskirts, lounging pajamas, negligees,
lounging robes, bed jackets, girdles and
pantigirdles; sleeping garments, namely,
nightgowns and pajamas”;

Registration No. 0305749,10 of the mark VANITY
FAIR (in stylized lettering) for “girdles”; and

6 Issued on January 27, 2004.

7 Issued on September 1, 1998. Affidavits under Sections 8 and
15 accepted and acknowledged.

8 Issued on August 10, 1971. Renewed.

9 Issued on October 12, 1948. Renewed.

10 Issued on August 22, 1933. Renewed.

Opposition Nos. 91163354, 91166973 and 91166975
6
Registration No. 0116092,11 of the mark VANITY
FAIR (in stylized lettering, with cameo design)
for “underwear consisting of vests, bloomers,
knickerbockers, drawers, combinations, chemise,
envelop-chemise, nightgowns, pajamas, made of
knitted or textile material, for adults and
babies.”

Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Moreover, because opposer’s pleaded registrations are
of record, Section 2(d) priority is not an issue in this
case as to the marks and goods covered by said
registrations. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315

11 Issued on April 3, 1917. Renewed.
Opposition Nos. 91163354, 91166973 and 91166975
7
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We begin with the fifth du Pont evidentiary factor,
which requires us to consider evidence of the fame of
opposer’s mark, and to give great weight to such evidence if
it exists. See Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002); Recot Inc.
v. Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000);
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).

Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456 [sic – 1897], and
“[f]amous marks thus enjoy a wide latitude of
legal protection.” Id. This is true as famous
marks are more likely to be remembered and
associated in the public mind than a weaker
mark, and are thus more attractive as targets
for would-be copyists. Id. Indeed, “[a] strong
mark … casts a long shadow which competitors
must avoid.” Kenner Parker Toys, 963 F.2d at
353, 22 USPQ2d at 1456. A famous mark is one
“with extensive public recognition and renown.”
Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d
at 1305.
The evidence of record establishes that opposer has
used its VANITY FAIR mark nationwide in connection with
clothing since 1916. (Auman Decl. at ¶3.) Opposer’s sales
Opposition Nos. 91163354, 91166973 and 91166975
8
and advertising figures have been made of record under seal
and we therefore shall not divulge them in this opinion, but
we find that they are very substantial and certainly large
enough to support a finding of fame. (Auman Decl. at ¶¶6-7
and Exh. B and C.) Based on this evidence, we find that
opposer’s VANITY FAIR mark has achieved a significant degree
of fame, for purposes of the fifth du Pont factor.12 Such
fame weighs heavily in favor of a finding of likelihood of
confusion.
We next find, under the sixth du Pont factor, that the
strength of opposer’s mark is not mitigated by third-party
use of similar marks on similar goods. The third-party
VANITY FAIR registrations applicant has made of record
(applicant’s notice of reliance at Exh. A7–A15) are not
evidence of third-party use of such marks for purposes of
the sixth du Pont factor. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992). In any event, those registrations do not cover
clothing, and they therefore are of no probative value under
the sixth du Pont factor. The sixth du Pont factor is

12 With respect to fame, applicant in her brief repeatedly refers
to the Board’s decision in The Toro Co. v. ToroHead, Inc., 61
USPQ2d 1164 (TTAB 2001). However, that case dealt with the issue
of fame in the context of a dilution claim, not a likelihood of
confusion claim. The two concepts are distinct. See Palm Bay
Imports, supra, 73 USPQ2d at 1694. Dilution is no longer an
issue in this case, see supra at footnote 4, and the dilution
fame principles set out in Toro are not apposite here.

Opposition Nos. 91163354, 91166973 and 91166975
9
neutral in this case; it certainly does not weigh in
applicant’s favor.
We turn next to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
the goods as identified in applicant’s applications and in
opposer’s registrations. The identification of goods in
each of applicant’s applications includes “lingerie,”
“loungewear,” “sleepwear,” and “underwear.” These items are
also included in the identification of goods in opposer’s
registrations, and applicant’s goods are legally identical
to opposer’s goods to that extent. The second du Pont
factor accordingly weighs in favor of a finding of
likelihood of confusion.13
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels in which
applicant’s and opposer’s goods are or would be marketed.
That determination must be based on the goods as they are
identified in applicant’s applications and in opposer’s
registrations, respectively, regardless of what the evidence
might show to be the actual trade channels in which the

13 We need not and do not decide whether any of the rest of
applicant’s goods are similar or related to opposer’s goods. If
any of the Class 25 items identified in applicant’s applications
is similar to opposer’s goods, the second du Pont factor weighs
in opposer’s favor as to all of the Class 25 goods identified in
applicant’s applications. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 209 USPQ 986 (CCPA 1981); Baseball America Inc.
v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).

Opposition Nos. 91163354, 91166973 and 91166975
10
goods are marketed or intended to be marketed. Because
there are no restrictions or limitations in applicant’s
applications or opposer’s registrations in terms of trade
channels and classes of purchasers, we must presume that the
goods are marketed in all normal trade channels and to all
normal classes of purchasers for such goods. To the extent
that applicant’s goods are legally identical to opposer’s
goods (see discussion supra), the trade channels and classes
of purchasers for the respective goods likewise must be
deemed to be identical. See Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283 (TTAB 2007). We find that the
third du Pont factor weighs in favor of a finding of
likelihood of confusion.
The fourth du Pont factor requires us to consider the
conditions under which the goods are purchased. We find
that applicant’s goods and opposer’s goods, as identified in
the respective identifications of goods, are ordinary
consumer items purchased by ordinary consumers. The goods
are not inherently expensive, and would be purchased with
only a normal degree of care. (Auman Decl. at ¶4.)
Applicant’s arguments to the contrary are not persuasive.
We find that the fourth du Pont factor weighs in favor of a
finding of likelihood of confusion.
As applicant notes, there is no evidence of actual
confusion. However, there also is no evidence that
Opposition Nos. 91163354, 91166973 and 91166975
11
applicant, whose applications at issue are based on intent-
to-use, has made any significant use of her mark. In the
absence of any significant opportunity for actual confusion
to have occurred, the absence of actual confusion is not
probative. Gillette Canada, Inc. v. Ranir, 23 USPQ2d 1768
(TTAB 1992). The seventh and eighth du Pont factors are
neutral in this case.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. The test, under
the first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the recollection
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well-settled that 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
Opposition Nos. 91163354, 91166973 and 91166975
12
determining the commercial impression created by the mark.
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
as follows. First, we find that the dominant feature in the
commercial impressions created by applicant’s marks and
opposer’s mark is the word VANITY. This word is distinctive
if not arbitrary as applied to clothing. It appears as the
first word in each of the marks, and it therefore is more
likely to be perceived and recalled by purchasers as the
dominant indication of source. See Palm Bay Imports v.
Veuve Clicquot, supra; Cunningham v. Laser Golf, supra. The
other words in the respective marks also contribute to the
marks’ commercial impressions 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. In re
Chatam International Inc. supra; In re National Data Corp.,
supra.
In terms of appearance and sound, we find that the
parties’ marks are identical to the extent that they both
start with the word VANITY. The other words in the
respective marks look and sound different. On the whole,
however, we find that the similarity in appearance and sound
which results from the presence of VANITY in both marks
outweighs the differences between the marks which result
Opposition Nos. 91163354, 91166973 and 91166975
13
from the presence of the different additional wording. Also
with respect to the appearance of the marks, applicant’s
asserted intention to depict her marks in highly stylized
lettering is irrelevant because applicant is seeking to
register her marks in standard character form, not in
stylized form. Her registrations therefore would entitle
her to display the marks in any reasonable stylization,
including a stylization similar to the manner in which
opposer’s marks are registered and used. See Cunningham v.
Laser Golf, supra.
In terms of connotation, we find that the marks are
similar to the extent that they both start with the word
VANITY, which would mean the same thing in both marks. The
marks as a whole have somewhat different connotations,
however. Applicant’s marks rhyme VANITY with INSANITY or
SANITY, which results in an unusual composite. Opposer’s
mark VANITY FAIR is a unitary term with its own meaning,14 a
meaning which is not presented by applicant’s marks. On
balance, we find that the marks are somewhat dissimilar in
connotation.

14 “Vanity Fair” is defined as “a place or scene of ostentation or
empty, idle amusement and frivolity.” The American Heritage
Dictionary of the English Language (4th ed. 2000). The Board may
take judicial notice of dictionary definitions. See University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Opposition Nos. 91163354, 91166973 and 91166975
14
In terms of overall commercial impression, we find that
the marks are similar due to the fact that they all begin
with the word VANITY. As noted above, VANITY is the
dominant feature in opposer’s mark and in applicant’s marks
as well. Upon encountering applicant’s marks beginning with
the word VANITY, purchasers familiar with opposer’s VANITY
FAIR mark are likely to be confused as to whether there is a
source connection between products bearing the respective
marks.
Viewing the marks in their entireties, we find that
they are similar, for purposes of the first du Pont factor.
In making this determination, we keep in mind that where the
parties’ goods are identical, as they are in this case, the
degree of similarity between the marks which is required to
support a finding of likelihood of confusion necessarily
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Moreover, because opposer’s mark is famous, it is entitled
to a very broad scope of protection. Bose Corp. v. QSC
Audio Products Inc., supra. Given the long use and fame of
opposer’s VANITY FAIR mark, potential purchasers are likely
to view applicant’s marks beginning with the word VANITY as
whimsical, contemporary variations on opposer’s mark when
the marks are used on the identical goods involved here. We
conclude that applicant’s marks are sufficiently similar to
Opposition Nos. 91163354, 91166973 and 91166975
15
opposer’s famous mark that source confusion is likely to
result if the respective marks are used on the identical
goods involved in this case.
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists. Opposer’s VANITY FAIR mark
is famous and entitled to a broad scope of protection. The
parties’ goods, trade channels and classes of purchasers are
legally identical. The goods are inexpensive, ordinary
consumer items that would not be purchased with a great
degree of care. There is no evidence that opposer’s mark is
weakened by third-party use of similar marks on similar
goods. The absence of evidence of actual confusion is not
probative, given the fact that there has been no significant
opportunity for actual confusion to have occurred.
Considered together, these facts suffice to establish that a
likelihood of confusion exists. To the extent that any
doubts might exist as to the correctness of our conclusion,
we resolve such doubts against applicant. See Century 21
Real Estate Corp., supra; Ava Enterprises Inc. v. Audio Boss
USA Inc., 77 USPQ2d 1783 (TTAB 2006); and Baseball America
Inc. v. Powerplay Sports Ltd., supra.
In summary, we find that opposer has established its
standing and its Section 2(d) ground of opposition in each
Opposition Nos. 91163354, 91166973 and 91166975
16
of the three oppositions, and that it therefore is entitled
to prevail in each case.
Decision: Opposition Nos. 91163354, 91166973 and
91166975 are sustained.