It’s said that imitation is the sincerest form of flattery. But vanity flatters no one. Certainly that’s so in an interesting trademark spat that pitted music-loving fans on one hand and a maker of intimate and bedroom apparel on the other.

The seminal case relating to the principle of likelihood of confusion in trademark use is the 1973 decision by the Court of Customs and Patent Appeals (CCPA) in In re E.I. du Pont de Nemours & Co.

In that touchstone case, the CCPA outlined a multi-factor test for proving likelihood of confusion, including:

  1. The similarity of the parties’ marks as to appearance, sound, connotation, and commercial impression
  2. The similarity and nature of the parties’ goods
  3. The similarity 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 opposer’s mark
  6. The number of third-party marks in use on similar goods
  7. Any actual confusion

The multi-factor test established in du Pont is not a rigid scorecard, but is merely a balancing test used by the Board. No single factor is dispositive, and varying weight may be given to each factor based on the circumstances.

Now to the case at hand. Ilyil Entertainment, a record label and recording studio in Los Angeles, applied to register the trademark INDIGO VANITY for short-sleeved or long-sleeved t-shirts.

Vanity Fair, Inc., owner of the VANITY FAIR trademark for intimate apparel and sleepwear (not to be confused with the owner of the popular magazine Vanity Fair), opposed Ilyil Entertainment’s application based on a likelihood of confusion as well as trademark dilution.

Perhaps because Vanity Fair pleaded trademark dilution, the Trademark Trial and Appeal Board (TTAB, or the Board) began its analysis of Vanity Fair’s likelihood of confusion claim with the fifth du Pont factor, i.e., the fame of the Vanity Fair’s mark. The Board began by noting that the fame of Vanity’s Fair’s VANITY FAIR mark could be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by its mark.

Unfortunately for Vanity Fair, however, while the Board noted that its advertising and sales figures were impressive, the plaintiff and its attorneys failed to place them in a meaningful context. In its opinion, the TTAB explained that raw numbers alone are not necessarily sufficient to prove a mark is famous, because figures can be (famously) misleading.

The Board stated, for example, that without context, Vanity Fair’s sales figures showing that it is the market leader for intimate apparel in the mid-tier department store market segment could represent a somewhat limited market share. In another example, the TTAB explained that while Vanity Fair’s advertising figures on their own appear impressive, the Board could not tell for certain whether Vanity Fair’s efforts translated into widespread consumer recognition of its mark among the general public — something that would strongly favor a finding that Vanity Fair’s mark was famous.

In defense of Vanity Fair’s claims, the company’s attorneys pointed to a decision in a prior case in which its VANITY FAIR mark had been found famous. But the Board was not convinced. The TTAB did find that Vanity Fair’s mark strong and deserved a broad scope of protection, however, and it held that factors 2, 3, 4 and 6 in du Pont favored Vanity Fair’s claim of a likelihood of confusion.

But the Board also explained that because it was not privy to the evidence made of record in the earlier proceeding, not to mention the fact that Ilyil was not a party to that prior proceeding, that it could not and would not be bound by the factual finding made therein. The Board felt that it could not hold that Vanity Fair’s VANITY FAIR mark was famous.

The final straw in convincing the Board that confusion was not likely may have been that the Board did not believe VANITY FAIR and INDIGO VANITY were similar. The Board felt that not only were VANITY FAIR and INDIGO VANITY different in appearance and sound, but that they also differed in meaning and overall commercial impression.

Vanity Fair argued that indigo is a shade of blue and therefore the mark it opposed connoted “blue vanity.” Vanity Fair maintained that the color blue is prominently featured in its packaging, trade dress and advertising. The Board, however, was not persuaded. The Board explained that even if it assumed that Vanity Fair 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 Vanity Fair’s mark, and Vanity Fair is free to change its trade dress or abandon its trade dress at any time. Moreover, there was no evidence that the public would associate the word indigo in Ilyil’s mark with the color blue, rather than with the recording artist Indigo Marie Ford, who is affiliated with Ilyil.

The Board went on to explain that “Vanity Fair” is a unitary phrase with literary connotations, that Ilyil’s INDIGO VANITY mark does not share that connotation, and that overall the parties’ marks create different commercial impressions. Moreover, the Board found that INDIGO was the dominant element in Ilyil’s mark because it appears as the first word in the mark.

Thus, while more of the individual du Pont factors favored Vanity Fair than Ilyil, their cumulative weight did not overcome the first du Pont factor about the similarity of the marks. This factor was pivotal and outweighed all the others, and the Board dismissed Vanity Fair’s opposition based on a likelihood of confusion.

In addition, since the Board had already found during its likelihood of confusion analysis that Vanity Fair’s mark was not famous, Vanity Fair’s dilution claim died a quick death as well.

This case raises several interesting follow-up questions for in-house counsel to consider.

First, might a consumer survey have helped bolster Vanity Fair’s arguments for trademark dilution and/or likelihood of confusion? In discounting the significance of Vanity Fair’s advertising and sales figures, for example, the Board commented on how raw numbers alone, without context, could be misleading. Perhaps if Vanity Fair had conducted a secondary meaning consumer survey to show how many consumers associate its mark with its products, it could have created that missing context for the Board.

Later in its opinion, the Board argued that it did not find Vanity Fair’s and Ilyil’s marks confusingly similar. If Vanity Fair had conducted a survey seeking to gauge likelihood of confusion, and were able to demonstrate that a good percentage of consumers found the parties’ marks confusingly similar, that would have made it more difficult for the Board to simply dismiss their argument.

Second, Vanity Fair did not oppose all of the goods in Ilyil’s INDIGO VANITY application. Vanity Fair allowed Ilyil’s application for INDIGO VANITY for audio recordings featuring music to proceed unopposed. Perhaps this created a perception problem for the TTAB. Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. Instead, all that is required is that use of a “famous” mark by a third party causes the dilution of the “distinctive quality” of the opposer’s mark. Thus, one line of reasoning could follow that if your mark is famous, anyone using a similar mark for any good is likely to dilute your mark. For example, a truly famous mark, like Coca-Cola, would most likely oppose the use of a similar trademark for guitars, chain saws, telephones and desk chairs. It would not argue that guitars and chain saws are dilutive, on one hand, but on the other that telephones and desk chairs are not. Thus, it might have hurt Vanity Fair’s dilution argument that it argued that clothing was dilutive of its VANITY FAIR mark but that music recordings were not.

Third, Vanity Fair’s decision not to oppose all of Ilyil Entertainment’s INDIGO VANITY branded products also might have undermined the former’s argument that its mark is famous. My guess is that if you asked anyone what they associate with the VANITY FAIR trademark, most would say the popular monthly magazine — and not Vanity Fair’s clothing. In other words, Vanity Fair’s argument that its mark is famous might have been hurt, at the outset, because its VANITY FAIR mark may not be the first VANITY FAIR mark the Board’s judges thought of.

So, for Vanity Fair, Inc., an opposition in vain. But a useful lesson for others who might find themselves in a similar position.