Wednesday, January 30, 2008

The TTAB’s insane decision to uphold Vanity Fair’s opposition against Vanity Insanity

John Welch’s write-up on The TTABlog reminds us that when it comes to dealing with the TTAB, “We're not dealing with the real world here.”

He summarizes the "insanity" behind the decision by the Trademark Trial and Appeal Board ("TTAB") to sustain oppositions filed by Vanity Fair magazine against pro se applicant Kelly C. Hainline seeking to register the marks VANITY & SANITY, VANITY INSANITY, and VANITY N SANITY (for various clothing items) on the basis of Section 2(d). See Vanity Fair, Inc. v. Hainline, Oppositions Nos. 91163354, 91166973, and 91166975 (TTAB January 15, 2008).

I think the decision highlights the importance of hiring experienced trademark counsel who might have been able to fashion a more persuasive argument that there is no likelihood of confusion between Vanity Fair (as used on some clothing items) and her proposed marks. The Board seemed so blinded by the fame of the Vanity Fair mark that all reason went out the window – or at least the part where the marks are not to be dissected, but rather are to be considered as whole in a likelihood of confusion analysis or the part about commercial impressions of the marks, especially given the common definition of the word “Vanity” as it relates to the world of fashion.

It’s a shame too because Ms. Hainline had a difficult prosecution even before reaching the TTAB – apparently even filing petition to revive in two of her applications after she failed to respond to office action that she never recieved. Not that it carries any weight, but the trademark examining attorney did not find her marks to be similar to any registered or pending mark which would bar registration under Section 2(d).

If there was any registrant that might wish to oppose registration of this mark, it would be Vanity Shop of Grand Forks, Inc., which holds registrations for the mark VANITY (word mark and stylized) for women’s and juniors clothing. I can see a much better case for likelihood of confusion with this mark then VANITY FAIR.

I think John has his first contender for his famed "Ten Worst TTAB Decisions of 2008".

1 comment:

Anonymous said...

Famous marks have a great deal of leeway.