                     NOTE: This disposition is nonprecedential.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                      NOTE: This disposition is nonprecedential.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




 2008-1313                                  3
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




2008-1313                                    7
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
