Hainline v. Vanity Fair, Inc. , 301 F. App'x 949 ( 2008 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1313
(Opposition Nos. 91/163,354; 91/166,973; and 91/166,975)
KELLY C. HAINLINE,
Appellant,
v.
VANITY FAIR, INC.,
Appellee.
Kelly C. Hainline, of Castle Rock, Colorado, pro se.
Paul J. Kennedy, Pepper Hamilton LLP, of Philadelphia, Pennsylvania, for
appellee.
Appealed from: United States Patent and Trademark Office
Trademark Trial and Appeal Board
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1313
(Opposition Nos. 91/163,354; 91/166,973; and 91/166,975)
KELLY C. HAINLINE,
Appellant,
v.
VANITY FAIR, INC.,
Appellee.
Appeal from the United States Patent and Trademark Office, Trademark Trial and
Appeal Board.
__________________________
DECIDED: December 5, 2008
__________________________
Before MAYER and DYK, Circuit Judges and HUFF, District Judge.*
PER CURIAM.
Kelly C. Hainline (“Hainline”) appeals a decision of the Trademark Trial and
Appeal Board sustaining the oppositions of Vanity Fair, Inc. (“Vanity Fair”) to the
registration of the marks VANITY N SANITY, VANITY & SANITY and VANITY
__________________
* Honorable Marilyn L. Huff, United States District Court for the Southern District
of California, sitting by designation.
INSANITY. Vanity Fair, Inc. v. Hainline, Oppositions Nos. 91163354, 91166973,
91166975 (T.T.A.B. Jan. 15, 2008) (hereinafter “Board Decision”). We affirm.
I.
Vanity Fair is one of the nation’s largest manufacturers of women’s apparel and
is the owner of several VANITY FAIR trademarks. It has used its VANITY FAIR mark
nationwide in connection with clothing since 1916. In 2003, Hainline filed intent to use
applications seeking to register the following marks: VANITY N SANITY, VANITY &
SANITY and VANITY INSANITY. Vanity Fair filed oppositions to each of the proposed
registrations. By an order dated April 27, 2006, the board consolidated the three
opposition proceedings.
On January 15, 2008, the board sustained Vanity Fair’s oppositions. It
concluded that the “VANITY FAIR mark is famous and entitled to a broad scope of
protection.” Board Decision, slip op. at 15. The board further determined that the
“parties’ goods, trade channels and classes of purchasers are legally identical” and that
there was a likelihood of confusion between the competing marks. Id.
Hainline timely appealed to this court. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(B).
II.
The board has authority to refuse to register a trademark that so resembles 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).
Likelihood of confusion is a question of law, based upon underlying factual
determinations. In re Chatam Int’l, Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004); On-Line
2008-1313 2
Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1084 (Fed. Cir. 2000). This court
reviews the board’s factual findings for substantial evidence. Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002).
In re E.I. DuPont DeNemours & Co. sets out numerous factors that are relevant
in determining whether there is a likelihood of confusion between competing marks:
In testing for likelihood of confusion . . . the following, when of record,
must be considered: (1) The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial
impression. (2) The similarity or dissimilarity and nature of the goods or
services as described in an application or registration or in connection with
which a prior mark is in use. (3) The similarity or dissimilarity of
established, 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 under 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 applicant 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 effect of use.
476 F.2d 1357, 1361 (C.C.P.A. 1973).
Although the likelihood of confusion analysis considers all of the relevant DuPont
factors, it “‘may focus . . . on dispositive factors, such as similarity of the marks and
relatedness of the goods.’’’ Hewlett Packard, 281 F.3d at 1265 (quoting Han Beauty,
Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)). In the present case,
the board correctly concluded that several DuPont factors weigh strongly in favor of a
likelihood of confusion between the VANITY FAIR mark and Hainline’s proposed marks.
These factors include: (1) the fame of the VANITY FAIR mark, (2) the similarity of the
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goods, (3) the similarity of the trade channels, and (4) the similarity of the competing
marks.
Fame of a prior mark can play a “dominant” role in the process of balancing the
DuPont factors. Recot, Inc. v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). “A
famous mark is one ‘with extensive public recognition and renown.’’’ Bose Corp. v.
QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002) (quoting Kenner Parker
Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353 (Fed. Cir. 1992)). The VANITY
FAIR mark has been in use nationwide since 1916. Sales of Vanity Fair clothing in the
United States have been very substantial and significant sums have been expended to
advertise the company’s apparel. * * Furthermore, Vanity Fair clothing has received
extensive unsolicited coverage in national magazines and other media. See id. (noting
that “the fame of a mark may be measured indirectly . . . by the volume of sales and
advertising expenditures of the goods traveling under the mark.”). “[F]amous marks are
more likely to be remembered and associated in the public mind than a weaker mark.”
Id. Thus, the fact that Vanity Fair products have achieved significant fame weighs
strongly in favor of a conclusion of likely confusion. See Recot, 214 F.3d at 1327(“Famous marks . . . enjoy a wide latitude of legal protection.”); Kenner Parker Toys,
963 F.2d at 354 (“In consonance with the purposes and origins of trademark protection,
the Lanham Act provides a broader range of protection as a mark’s fame grows.”).
**
Sales and advertising figures for Vanity Fair products have been provided to
this court in a confidential brief.
2008-1313 4
Another important factor weighing heavily in favor of a likelihood of confusion is
the similarity or “relatedness” of the goods. Recot, 214 F.3d 1327-30; DuPont, 476 F.2d
at 1361. Where “goods are related, ‘the degree of similarity necessary to support a
conclusion of likely confusion declines.’” Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d
1238, 1242 (Fed. Cir. 2004) (quoting Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 877 (Fed. Cir. 1992)). Here, the goods identified in Vanity Fair’s
registration include lingerie, loungewear, sleepwear and underwear. These same items
are also included in Hainline’s applications. Because of the striking similarity of the
goods sold, it is much more likely that consumers will be confused by the competing
marks. See Chatam, 380 F.3d at 1344 (Likelihood of confusion exists where both
parties sell alcoholic beverages.); Hewlett-Packard Co., 281 F.3d at 1268 (Likelihood of
confusion exists where both parties provide computer-related products.).
Likewise, the fact that the goods are likely to travel in similar trade channels
increases the likelihood of confusion. See In re Majestic Distilling Co., 315 F.3d 1311,
1316 (Fed. Cir. 2003) (Likelihood of confusion established where competing products
were “marketed in many of the same channels of trade to many of the same
consumers.”). As the board correctly noted, “[t]o the extent that [Hainline’s] goods are
legally identical to [Vanity Fair’s] goods . . . the trade channels and classes of
purchasers for the respective goods likewise must be deemed to be identical.” Board
Decision, slip op. at 10; see Hewlett-Packard, 281 F.3d at 1268 (“[A]bsent restrictions in
the application and registration, goods and services are presumed to travel in the same
channels of trade to the same class of purchasers.”).
2008-1313 5
Another significant factor weighing in favor of a likelihood of confusion is the
similarity of the marks. When evaluating marks, the board must compare “the two
marks in their entireties and [give] each individual term in the respective marks more or
less weight depending on its effect on the overall commercial impression.” Chatam, 380
F.3d at 1345. Analysis of the marks must include consideration of similarities in
appearance, sound, and connotation. Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 1371 (Fed. Cir. 2005).
As the board correctly concluded, “[i]n terms of overall commercial impression,
. . . the marks are similar due to the fact that they all begin with the word VANITY.”
Board Decision, slip op. at 14. Purchasers who are familiar with Vanity Fair products
are likely, when encountering similar products bearing a mark beginning with the word
“vanity,” to be confused as to whether such products are manufactured or distributed by
Vanity Fair. See Hewlett-Packard Co., 281 F.3d at 1266-68 (Confusion between
products bearing the mark PACKARD TECHNOLOGIES and products bearing the mark
HEWLETT-PACKARD is likely because the marks share the common word “Packard”
and the goods and services of the parties are related).
Hainline argues that there are significant differences between her marks and the
VANITY FAIR mark. She contends that her marks “have more visual presence and
persistence” and are “more visually cutting edge and progressive” than the VANITY
FAIR mark. Even accepting this as true, however, substantial evidence supports the
board’s determination that “the dominant feature in the commercial impressions created
by [Hainline’s] marks and [Vanity Fair’s] mark is the word VANITY.” Board Decision,
slip op. at 12. “Vanity” appears as the first word in each of the marks, and is therefore
2008-1313 6
more likely to be perceived by purchasers as indicating the source of the goods. See
Palm Bay Imps., 396 F.3d at 1372 (VEUVE held to be the prominent feature in a mark
where the term appeared as the first word in two different champagnes); Century 21,
970 F.2d at 876 (finding CENTURY 21 and CENTURY OF LIFE OF AMERICA
confusingly similar); Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d
561, 562 (C.C.P.A. 1976) (concluding that RAINFRESH is confusingly similar to RAIN
BARREL given the “similarity of commercial impressions”). Furthermore, because the
word “vanity” is distinctive or arbitrary, as applied to clothing, it is “conceptually strong
as a trademark.” Palm Bay Imps., 396 F.3d at 1372; see Nautilus Group, Inc. v. Icon
Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed. Cir. 2004) (defining an “arbitrary
mark” as “a known word used in an unexpected or uncommon way” and noting that
such marks are usually strong).
Hainline also challenges the board’s determination that the VANITY FAIR mark is
famous and thus entitled to a broad scope of protection. She asserts that Vanity Fair
has failed to provide “direct evidence that consumers view ‘Vanity Fair’ as a distinctive
source indicator” and that it has failed to provide “any direct evidence of ‘market share’,
recognition surveys, or consumer recognition of the fame of the marks.” As this court
has previously made clear, however, there is no obligation to demonstrate the fame of a
mark by direct evidence. Bose, 293 F.3d at 1371. “Direct evidence of fame, for
example from widespread consumer polls, rarely appears in contests over likelihood of
confusion. Instead, our 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 traveling under the mark, and by the length of time those indicia of
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commercial awareness have been evident.” Id. As noted above, Vanity Fair submitted
persuasive evidence demonstrating its high volume of sales and significant advertising
expenditures.
Hainline also contends that the board “erred in not taking into consideration the
third party registrations of the mark ‘Vanity Fair.’” We disagree. The board did, in fact,
consider the fact that there had been third party VANITY FAIR registrations, but noted
that these registrations did not cover clothing. See Board Decision, slip op. at 8.
Furthermore, while Hainline submitted a table of third party registered marks, she did
not establish that these marks were in use. “[T]he probative value of third-party
trademarks depends entirely upon their usage.” Palm Bay Imps., 396 F.3d at 1373; see
Han Beauty, 236 F.3d at 1338 (Evidence of third party registration of a mark, without
evidence of use of that mark, has only “minimal” probative value.).
We have considered Hainline’s remaining arguments but find them unpersuasive.
We therefore affirm the board decision sustaining Vanity Fair’s oppositions to the
registration of Hainline’s marks.
2008-1313 8