Fame Plays a Dominant Part of Likelihood of Confusion Analysis

Hainline v. Vanity Fair, Inc., [2008-1313 (Opposition Nos. 91/163,354; 91/166,973; and 91/166,975)] (December 5, 2008) [MAYER, DYK, HUFF] NON-PRECEDENTIAL The Federal Circuit affirmed the TTAB sustaining Vanity Fair’s oppositions.
DISCUSSION: The Federal Circuit held fame of a prior mark can play a “dominant” role in the process of balancing the DuPont factors. The Federal Circuit noted that “[a] famous mark is one ‘with extensive public recognition and renown.’’’ The Federal Circuit said “[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. The Federal Circuit examined other factors, including the similarity of the goods, channels of trade, and the similarity of the marks and affirmed the TTAB that VANITY AND SANITY was confusingly similar to VANITY FAIR.