Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggyv.TJX Companies, Inc.

Trademark Trial and Appeal Board

Apr 22, 2008

No. 92044369 (T.T.A.B. Apr. 22, 2008)

Hearing: Mailed:
March 4, 2008 April 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy

v.

TJX Companies, Inc.
_____

Cancellation No. 92044369
_____

Howard C. Miskin of Stoll, Miskin & Badie for Lesley Hornby
a/k/a Lesley Lawson a/k/a Twiggy.

Larry C. Jones, Jason M. Sneed, Anne J. Randall and Noelle
T. Valentine of Alston & Bird LLP for TJX Companies, Inc.
_____

Before Seeherman, Hohein and Rogers, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy, an
individual, (hereafter “petitioner”) has petitioned to
cancel a registration owned by TJX Companies, Inc.
(hereafter “respondent”) for the mark TWIGGY for “clothing,
namely, children’s pants, tops, slacks, skirts, vests,
THIS OPINION IS A
PRECEDENT OF THE TTAB
Cancellation No. 92044369
2
sweaters, shirts and blouses.”1 The grounds asserted in the
petition to cancel, as listed in paragraph 19, are
likelihood of confusion (one element of which, of course, is
priority of use), false suggestion of a connection, fraud,
and dilution.2
In connection with her likelihood of confusion claim
brought under Section 2(d) of the Lanham Act, 15 U.S.C.
§1052(d), petitioner alleges that she is an internationally-
known model and actress; that she began her career in the
mid-1960s, adopting the name Twiggy, and that under this
name she achieved wide recognition and popularity in Europe
and the United States; that petitioner “had developed and
still enjoys extensive goodwill and recognition throughout
the United States and the world with respect to this name
and mark”; that “the mark TWIGGY has been used by Petitioner
for many years prior to use by Respondent and is still being
used by Petitioner”; that petitioner has used and is using
the TWIGGY mark on clothing; and that respondent’s mark so
resembles petitioner’s mark, as previously used in the
United States, as to be likely to cause confusion, mistake
or to deceive.

1 Registration No. 2364842, issued on July 4, 2000, from an
application filed on January 29, 1997; Section 8 affidavit filed.
2 The paragraph also asserts that respondent’s registration
“tends to damage Petitioner’s goodwill in its [sic] trademark,”
but we do not regard this as a separate statutory ground, as it
relates more to petitioner’s standing, and to the likelihood of
confusion and dilution grounds.
Cancellation No. 92044369
3
With respect to the false suggestion of a connection
claim under Section 2(a) of the Trademark Act, 15 U.S.C.
§1052(a), petitioner alleges that the TWIGGY name is
unmistakably associated with petitioner, and that when used
on goods, it points uniquely and unmistakably to petitioner;
that petitioner is not connected in any way with respondent
or its activities; and that petitioner is of “sufficient
fame and name to the consumer” that a connection with
petitioner would be presumed when respondent’s mark is used
on respondent’s goods. Petitioner also alleges that
respondent had knowledge of the public recognition of the
name TWIGGY as referring to petitioner when it filed the
application for the registration that is now in issue, and
that respondent employs the mark TWIGGY with the intent to
appropriate the goodwill and recognition that have accrued
to petitioner.
As for the fraud claim, petitioner alleges that
respondent’s registration was obtained fraudulently in that
the declaration submitted as part of respondent’s
application is false with respect to the statement that “no
other person, firm, corporation or association has the right
to use said mark in commerce either in the identical form or
in such near resemblance thereto as may be likely, when
applied to the goods or services of such other person, to
cause confusion, to cause mistake or to deceive.”
Cancellation No. 92044369
4
Petitioner alleges that this statement is false because
respondent’s TWIGGY mark is a direct copy of petitioner’s
identical mark and respondent “was aware that it was
Petitioner’s mark at the time the application was sworn to
due to the Petitioner’s worldwide fame and recognition long
prior to the application date of Respondent’s mark.”
Petitioner further alleges that respondent made this
statement with the intent to induce the U.S. Patent and
Trademark Office (hereafter USPTO) to grant its
registration, and that the USPTO did rely on the truth of
the statement in granting respondent’s registration.
Although petitioner listed headings for the allegations
regarding certain of her grounds, e.g., “false suggestion of
connection with petitioner,” “fraud by respondent,”
petitioner did not create a separate heading for her claim
that respondent’s registration “is likely to dilute the
distinctive quality of Petitioner’s trademark,” and we
therefore regard the allegations made throughout her
petition as also relating to this ground.
In its answer respondent admits that petitioner is not
connected in any way with the activities performed by
respondent under its mark, and that when it filed its
application it was aware “of a former British model who had
used the name 'Twiggy' in conjunction with her modeling
services in the 1960s." Respondent has otherwise denied the
Cancellation No. 92044369
5
salient allegations in the petition to cancel. Respondent
has also asserted laches as an affirmative defense,3
alleging that it has used the mark on children’s clothing
since about September 30, 1997, that petitioner did not
oppose its application when it was published for opposition
on July 20, 1999; that petitioner had constructive notice of
respondent’s registration on July 4, 2000, when the
registration issued; that petitioner did not file the
instant petition for cancellation until March 28, 2005; that
petitioner’s delay in asserting her claim is unreasonable;
that during this period of delay respondent invested in and
built up goodwill in its mark, selling hundreds of thousands
of units of children’s clothing annually; and that if the
petition for cancellation is granted, respondent will incur
economic prejudice and other detriment.
The parties have briefed their respective positions,
and both were represented at an oral hearing before the
Board.
Procedural Issues
Preliminarily, we must discuss a number of procedural
issues and objections that were raised in the briefs and at
the oral hearing. The first is that we must determine what
grounds are properly before us.

3 Respondent, in a footnote to its brief, correctly acknowledges
that laches is not a defense to a claim of fraud, a point we
discuss infra.
Cancellation No. 92044369
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Petitioner asserted at p. 7 of her brief, under the
heading “Statement of the Issues,” that the issues include
the pleaded grounds of false suggestion of a connection,
likelihood of confusion, and dilution. Although fraud was
pleaded in the petition for cancellation and included in the
brief's "Statement of the Issues," petitioner has changed
the basis of this claim; specifically, in the brief
petitioner asserts that respondent committed fraud on the
USPTO by filing a declaration of use under Section 8 of the
Act because respondent never used the mark TWIGGY in
connection with the goods listed in the registration.
Petitioner has also listed two unpleaded grounds: that
respondent failed to obtain the written consent of
petitioner to registration of her name (Section 2(c) of the
Trademark Act, 15 U.S.C. § 1052(c)); and that respondent has
abandoned its mark because it discontinued use thereof with
the intent not to resume use (Section 45 of the Trademark
Act, 15 U.S.C. § 1127).
We must first determine whether these unpleaded
grounds, i.e., the altered fraud claim, the failure to
obtain petitioner's written consent to registration of her
name, and abandonment of the registered mark, were tried by
the express or implied consent of the parties, such that we
can treat the pleadings to be amended pursuant to Rule 15(b)
of the Federal Rules of Civil Procedure. We find that they
Cancellation No. 92044369
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have not been. Petitioner’s claims of fraud based on the
filing of a false declaration of use under Section 8, and of
abandonment, are based on responses to interrogatories that
were provided by respondent. These responses were submitted
as evidence by petitioner during its rebuttal testimony
period.4 It is obvious that grounds based on evidence that
was not submitted until rebuttal could not have been tried
by consent of the parties. Respondent could not have been
aware that these were grounds at the time it made its
evidence of record, since there was no evidence relating to
these grounds at that time.5 Accordingly, these grounds
have not been further considered. As for the ground that
respondent failed to obtain petitioner’s consent to the
registration of her name, the basis petitioner gave at the
oral hearing for her position that this ground was tried was
an interrogatory (not of record) that asked respondent
whether it had obtained petitioner’s consent. We further
note that during her testimony deposition petitioner stated
that respondent never asked her for permission to use the

4 Respondent has objected to this evidence as being improper
rebuttal, an objection which we discuss infra.
5 The discovery responses on which petitioner bases her claim
were served on her on July 13, 2005, well before the close of
discovery and the opening of the testimony periods. If
petitioner believed that the interrogatory responses provided her
with additional grounds for cancelling respondent’s registration,
she could have filed a motion for leave to amend her pleading at
that time. Petitioner has given no reason why she failed to file
such a motion, and instead waited until her rebuttal testimony
period in order to submit evidence in support of unpleaded
claims.
Cancellation No. 92044369
8
mark TWIGGY, nor did she ever authorize or consent to such
use. p. 49. However, because one of the elements of the
pleaded Section 2(a) false suggestion of a connection ground
is that the defendant is not connected with the plaintiff,
respondent could reasonably have viewed this interrogatory
and/or testimony as going to the Section 2(a) claim, rather
than a separate Section 2(c) ground. Because we cannot say
that respondent was on notice that petitioner was asserting
a Section 2(c) ground, we find that this claim was not
tried.
As noted above, petitioner changed the nature of her
fraud claim in her list of the issues set forth in her
brief. However, elsewhere in her brief she has continued to
argue that respondent committed fraud by making false
statements in the declaration of its underlying application.
Respondent has responded to these arguments in its brief.
Accordingly, the issue of fraud with respect to allegedly
false statements in the declaration of the original
application remains part of this proceeding.
Turning from the pleadings to the evidence, respondent
has raised a number of objections to petitioner’s testimony.
First, asserting that they are improper rebuttal, respondent
has objected to the interrogatory responses, discussed
above, which petitioner submitted during her rebuttal
testimony period. To the extent that petitioner seeks to
Cancellation No. 92044369
9
use this evidence to support the newly raised grounds for
cancellation of abandonment and of fraud due to a false
Section 8 filing, we have already stated that these grounds
will not be further considered. However, respondent has
asserted the affirmative defense of laches. The burden of
demonstrating laches is on the respondent, and therefore it
was appropriate for petitioner to submit evidence during her
rebuttal testimony period with respect to this defense. The
evidence submitted by petitioner concerning respondent’s use
or nonuse of its mark goes to the “prejudice” element of the
laches defense. Therefore, respondent’s objection is
overruled, and the interrogatory responses have been
considered solely in regard to respondent's laches defense.
Respondent has also made a number of objections to the
testimony of Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy
and the exhibits submitted therewith. See pages 8-15 of
respondent’s brief. Respondent has grouped its objections
into categories, and we will therefore address each group.
As one category of objections, respondent asserts,
relying on Consorzio del Prosciutto di Parma v. Parma
Sausage Products Inc., 23 USPQ2d 1894 (TTAB 1992), that any
activities or events pertaining to petitioner and occurring
subsequent to the issuance of respondent’s registration
cannot be considered. With respect to the Section 2(a)
claim, respondent is correct that we must determine the
Cancellation No. 92044369
10
extent of petitioner’s fame or reputation as of the time
respondent’s registration issued. However, we may still
consider activities that occurred subsequent to that
registration date in order to make a determination as to
petitioner’s fame or reputation as of the issuance of the
registration. In other words, evidence of petitioner's fame
or reputation after the date of issuance of respondent's
registration may tell us something about the fame or
reputation as of that date. Of course, the more time that
has passed since the registration date, the less probative
the activities are with respect to the plaintiff’s fame or
reputation at the time the registration issued. Activities
occurring many years after the registration date would
obviously be too distant in time to inform a determination
about fame or reputation as of the registration date.
However, in the present case respondent’s registration
issued in 2000, so petitioner’s activities in the few years
that passed between that date and the date of trial may
still have probative value. Further, with respect to
petitioner’s likelihood of confusion claim, our
determination is based on the factual situation as of the
time of trial, not at the time the registration issued.
See, for example, Teledyne Technologies Inc. v. Western
Skyways Inc., 78 USPQ2d 1203 (TTAB 2006) (in a cancellation
action involving a claim under Section 2(d), the Board
Cancellation No. 92044369
11
considered lack of actual confusion through time of trial).
Respondent’s comments at the oral hearing that this would be
unfair to a registrant who had invested money in its
registration are addressed by the affirmative defense of
laches, which can be asserted against a Section 2(d) claim,
and by the statute itself, which limits such a ground to
registrations that are less than five years old. This group
of objections is therefore overruled.
The second group of objections relates to petitioner’s
activities in other countries. Because evidence of fame or
reputation in other countries may have relevance to the
extent that consumers in the United States would be aware of
her as a result of these activities, we will not exclude
this evidence, but will give it only the probative weight to
which it is entitled.
The third group of objections is that certain exhibits
are hearsay or unauthenticated and testimony based thereon
is equally unreliable. Our first problem with these
objections is that they were not timely raised. At
petitioner’s testimony deposition she identified several
exhibits, and during the deposition respondent raised no
objection to them at all. Therefore, petitioner did not
have an opportunity to provide testimony that might have
authenticated them. Further, the fact that petitioner was
not a sponsor of the websites, excerpts from which were
Cancellation No. 92044369
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submitted as Exhibits 4 and 5, is irrelevant. Petitioner
testified that the statements made in the website excerpts
about her were correct and, therefore, although statements
made in websites might otherwise be considered hearsay, here
we may consider the exhibits for the truth of the statements
made therein.6
The fourth objection is to Exhibit 12, which is a copy
of petitioner’s U.S. Registration No. 2757883 for TWIGGY for
perfumes and personal care products in Class 3, and the
testimony related thereto. Respondent claims that because
this registration issued, and the underlying application was
filed, after respondent’s registration, it is irrelevant.
The fact that petitioner has obtained a registration is not
irrelevant, and respondent’s objection really goes to the
probative value of the registration, which we discuss infra.
Accordingly, we will consider the exhibit and the testimony
regarding it.
The final group of objections concerns petitioner’s
redirect testimony, which respondent asserts was outside the

6 In her reply brief petitioner says that the exhibits “are not
offered for the truth of the statements of the websites
discussing these events [her movies, television films, television
and talk show appearances, etc.], but for the factual events
themselves.” p. 11. It is not clear to us what distinction
there is between “the truth of the statements of the websites”
and “the factual events themselves,” but the next sentence points
out that petitioner testified that the factual information
contained in the websites was accurate. Accordingly, we treat
the testimony and accompanying exhibits as stating that the
factual information in the websites is accurate.

Cancellation No. 92044369
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scope of cross-examination. Although we agree that
respondent did not ask any questions about petitioner’s
appearances in a television film and an off-Broadway
production, and therefore her testimony during redirect
about these activities was beyond the scope of cross-
examination, we note that there was testimony about these
activities during direct testimony, with respect to Exhibits
3 and 4. Therefore, although we sustain the objection with
respect to this particular portion of the redirect
testimony, it does not have any bearing on our determination
in this proceeding. The other objected-to redirect
testimony concerns petitioner’s appearances on the Conan
O’Brien and Jay Leno programs in the 1990s. During direct
examination petitioner was asked whether any U.S.
entertainment shows had interviews with her or segments
about her. Her response was that there were “so many,” and
she identified “The Johnny Carson Show,” “The Merv Griffin
Show,” “Mike Douglas,” and then she testified that in more
recent years she was on celebrity magazine shows, and in
particular stated that when she did a sitcom in the 1990s,
she did “all those shows.” p. 42. During cross-
examination, respondent asked her specifically about her
appearances on the Johnny Carson, Mike Douglas and Merv
Griffin television programs. On redirect, petitioner was
asked about, and testified to, appearances on the Conan
Cancellation No. 92044369
14
O’Brien show in the early or mid-90s, and on the “Tonight
Show” with Jay Leno. We do not regard this testimony
regarding appearances on particular programs as beyond the
scope of cross-examination. The questions asked during
cross-examination elicited the information that petitioner
made appearances on national talk shows only in the 1970s
and 1980s, and the redirect testimony corrected the
impression that these were the only times that she gave such
interviews. Therefore, we overrule the objection regarding
this particular testimony.7
The Record
The record includes the pleadings; the file of the
registration sought to be cancelled; and the testimony, with
exhibits, of petitioner Lesley Hornby a/k/a Lesley Lawson
a/k/a Twiggy. Petitioner has submitted, under notice of
reliance, a status and title copy of a registration for
TWIGGY for various skin care products, cosmetics, toiletries
and hair care preparations.8 Respondent has submitted,
under notice of reliance, copies of three third-party
registrations for TWIGGY marks, and petitioner’s responses
to two of respondent’s interrogatories. Petitioner has

7 Even if the testimony were not considered, it would not affect
the decision in this case, since during her direct testimony
petitioner testified to appearances on talk shows and celebrity
magazine programs during the 1990s.
8 Registration No. 2757883, issued on September 2, 2003, owned
by Twiggy Limited.
Cancellation No. 92044369
15
submitted, as rebuttal testimony, respondent’s responses to
four of petitioner’s interrogatories.
Findings of Fact
Petitioner was given the nickname of “Twiggy” when a
teenager, and she has been known by that name both
personally and professionally since 1966. She became a
professional model in 1966, at the age of 16, when she was
discovered and literally became an overnight sensation. In
February 1966, “The Daily Express,” at that time Britain’s
biggest selling national newspaper, ran her photograph on
the entire center page, with the headline, “Twiggy, the Face
of ’66.” Within the first months after the feature appeared
she had worked for most of the teenage magazines in England,
and the top high couture magazines as well. In the summer
of 1966 she modeled at the Paris collections. Because of
her celebrity, she was also invited to view the couture
fashion shows, which led to an article about her in “Women’s
Wear Daily.” As a result of this article, Diana Vreeland,
the editor of “Vogue,” booked petitioner to come to the
United States in early 1967.
Petitioner was met at the airport in New York with a
large press conference which went out on “national
newsreels.” Her arrival in the United States followed the
“British invasion,” and she was given celebrity treatment
similar to what The Beatles had experienced, with people
Cancellation No. 92044369
16
chasing her and girls screaming. She could not go out on
the street because of the mayhem her appearance caused. In
short, she was not merely a model, but a celebrity as well.
She appeared on the top television talk shows, including
“The Johnny Carson Show.”
Because of her celebrity in the United States, a number
of companies entered into merchandising arrangements with
her to use her name and likeness on products. The products
included Twiggy lunch boxes, a Twiggy doll, Twiggy dress up
paper dolls, a Twiggy board game (“Become Twiggy, The Queen
of Models”), and various cosmetics products such as Twiggy
eyelashes and eye shadow. The cosmetics started in 1967 and
continued until 1969 or 70, while the game was sold from
about 1967 or 1968 until 1969 or 1970. After 1970 there is
no indication that the mark TWIGGY was used on any products
until 1998, when the mark was used for a skin care line in
the United Kingdom. There were also other uses of the mark
abroad. In the United Kingdom petitioner’s line of TWIGGY
women’s clothing was launched in 2005 by a mail order house
called Little Woods Shop Direct. In the same year,
petitioner’s TWIGGY dresses and accessories for mid-teens
and upwards began to be sold in Japan in TWIGGY stores or in
TWIGGY boutiques within stores. In the United States, in
1997 or 1998, petitioner was approached by the Franklin Mint
to license her name and likeness for a collectible doll.
Cancellation No. 92044369
17
This doll was first offered for sale sometime around or
after April 30, 2001, which was the target date for
beginning advertising. Over one million dolls were sold
during the limited run, and the doll won the doll of the
year award.
Petitioner became an actress in 1970, starring in a
movie called “The Boyfriend,” for which she won two Golden
Globe awards in 1971. She also starred in a U.S. film
called “W,” and appeared on various television shows that
were broadcast nationally in the United States, including
“The Sonny and Cher Show” and the “Mike Douglas Show,” on
which she was a co-host for a week. In 1983-84 she starred
on Broadway in a Tony-award-winning musical, “My One and
Only,” which got rave reviews and was a major hit. She was
nominated for a Tony award for best actress in a musical.
During the 18-month run of this show she did many television
appearances, including appearing on the “Johnny Carson” and
“Merv Griffin” shows. She was a presenter of an Oscar at
the 1984 Academy Award telecast, and she also performed on
that program. She starred opposite Robin Williams in an
American movie, “Club Paradise,” and co-starred with Shirley
Maclaine in the film “Madame Sousatzka.” In connection with
this film, she did a publicity tour of U.S. cities in 1988.
In the 1990s petitioner performed on television and in
the theater in the United States. She starred for one year
Cancellation No. 92044369
18
(1991) in a CBS television series called “Princesses.” She
also made a guest appearance on the television show “The
Nanny,” and in 1996 co-starred with Connie Sellica in the
CBS TV movie “Something Borrowed Something Blue.” In 1997
she starred in “Blithe Spirit” in a summer theater in Sag
Harbor, Long Island. This theater draws many vacationing
New Yorkers. Her performance was reviewed in “The New York
Times.” In 1999 she also starred in an off-Broadway
production of “If Love Were All,” which was critically
acclaimed, and which ran for five months in New York City.
She did interviews through the years, for example, when she
had a show coming out. In connection with the sitcom
“Princesses,” she had interviews in “People,” “Vogue” and
“US” magazine.
Petitioner has also recorded various albums through the
years, either as a member of the cast of shows she’s been
in, or as an individual recording artist, starting with the
cast album for “The Boyfriend” in the early 1970s and most
recently for “Midnight Blue” in 2003. Petitioner also wrote
her autobiography in 1997, called In Black and White.
In 2005 she became a judge on the American television
series “American’s Next Top Model.”
Grounds/Defenses
The issues which we must decide are the pleaded grounds
of fraud based on false statements made by respondent in the
Cancellation No. 92044369
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declaration of its underlying application; false suggestion
of a connection; priority of use and likelihood of
confusion; and dilution; and the affirmative defense of
laches.
Laches
As the parties have recognized, laches will not lie
against the ground of fraud. However, it will lie against
the other pleaded grounds. The distinction lies in the fact
that it is in the public interest to prohibit registrations
procured or maintained by fraud, but the defense of laches
is available when the rights asserted by a petitioner are
personal in nature. See Treadwell's Drifters Inc. v.
Marshak, 18 USPQ2d 1318 (TTAB 1990). Thus, laches is
available against a false suggestion claim, see
Bridgestone/Firestone Research Inc. v. Automobile Club de
l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed.
Cir. 2001). It is also generally available against a
Section 2(d) claim of likelihood of confusion.9 See
National Cable Television Association Inc. v. American
Cinema Editors Inc., 973 F.2d 1572, 19 USPQ2d 1424 (Fed.
Cir. 1991), in which the defense of laches was considered in
connection with a cancellation proceeding brought under

9 The only exception is when confusion is inevitable, because
any injury to the defendant caused by the plaintiff's delay is
outweighed by the public's interest in preventing confusion.
Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310 (TTAB 1999).

Cancellation No. 92044369
20
Section 2(d); Christian Broadcasting Network Inc. v. ABS-CBN
International, 84 USPQ2d 1560 (TTAB 2007) (because defense
of laches found to apply, petition to cancel brought under
Section 2(d) dismissed). As for the applicability of the
laches defense to a claim of dilution, neither this Board
nor our principal reviewing court has had occasion to
specifically address this question with respect to the
current federal dilution statute. However, as long ago as
1963, in Seven-Up Company v. Bubble Up Corp., 312 F.2d 472,
136 USPQ 210, 214 (CCPA 1963), the Court of Customs and
Patent Appeals, a predecessor to the Federal Circuit,
appeared to comment favorably on a finding of laches in a
district court suit brought on the grounds of infringement
and dilution (“the long delay of appellants which was held
to constitute laches barring its recovery in a suit for
trademark infringement, dilution and unfair competition is
equally a bar to the present cancellation proceeding”). In
any event, because the claim of dilution relates to a
personal right of the petitioner, rather than being in the
interest of the general public, we hold that the affirmative
defense of laches is applicable to such ground. In order to
prevail on the affirmative defense of laches, a defendant
must establish that there was undue or unreasonable delay by
the plaintiff in asserting its rights, and prejudice to the
defendant resulting from the delay. Bridgestone/Firestone
Cancellation No. 92044369
21
Research Inc. v. Automobile Club de l'Ouest de la France,
supra. Mere delay in asserting a trademark-related right
does not necessarily result in changed conditions sufficient
to support the defense of laches. There must also have
been some detriment due to the delay. Id., 58 USPQ2d at
1463. Respondent claims that detriment is shown by the file
of its registration, which it asserts shows that respondent
“continued using the TWIGGY children’s clothing mark at
least through the September 19, 2005 filing of its Section 8
declaration.” Respondent argues that “the investment made
by [respondent] in that mark during the period of time
through and including the March 2005 filing of
[petitioner’s] petition, constitutes detrimental reliance
by, and economic prejudice to [respondent].” Brief, p. 29.
We do not find this argument persuasive. The fact that
a Section 8 declaration was submitted in connection with a
registration is not evidence of the truth of the statements
made in the declaration. The mere fact that such a post
registration filing can be found to have contained false
statements illustrates this. Cf. Torres v. Cantine
Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir.
1986). Accordingly, respondent cannot rely on its
declaration to prove it suffered detriment. Moreover, the
statement in its brief that respondent made an investment in
the mark up to and through the filing of the Section 8
Cancellation No. 92044369
22
declaration is not supported by any evidence whatsoever.
Accordingly, we find that respondent’s affirmative defense
fails for lack of proof.
At this point, we must comment on respondent’s
responses to petitioner’s interrogatories, submitted by
petitioner during her rebuttal testimony period. Petitioner
asked respondent several interrogatories regarding use of
the “trademark-in-suit,” asking respondent to state the
“date of first use of the Trademark-in-Suit” (Interrogatory
No. 5); the “the type of goods and/or products including the
general age group, bearing the Trademark-in-Suit that the
Registrant has ever promoted, marketed, advertised, supplied
or sold” (Interrogatory No. 6); whether “there has ever been
a period during which the use of the Trademark-in-Suit has
been discontinued for longer than two (2) months on any of
the products identified in Interrogatory No. 6”
(Interrogatory No. 7); and to “identify the annual volume of
sales and profits made of the goods and/or products
identified in Interrogatory No. 6 from the date of the first
use as identified in Interrogatory No. 5 to the present”
(Interrogatory No. 8). The preamble to the interrogatories
contained the following definition: “As used herein,
‘Trademark-in-Suit’ means U.S. Registration No. 2,364,842
issued to the Registrant on July 4, 2004 for the mark
TWIGGY.” ¶K.
Cancellation No. 92044369
23
Respondent answered these interrogatories by saying
“Registrant has not used Registration No. 2,364,842
(identified by Petitioner in Paragraph K as the ‘Trademark-
in-Suit’)” (No. 5); “there are no known products or
packaging bearing Registration No. 2,364,842 (identified by
Petitioner in Paragraph K as the ‘Trademark-in-Suit’)” (No.
6); “Registrant has not used the Registration No. 2,364,842
(identified by Petitioner in Paragraph K as the ‘Trademark-
in-Suit’) on products” (No. 7); and “inasmuch as is
indicated in the Response to Interrogatory No. 6, no such
products bearing Registration No. 2,364,842 have been sold
in this country, such that Registrant does not have annual
sales figures and profits data for such products” (No. 8).
It appears that respondent has interpreted the
references to “trademark-in-suit” in the interrogatories as
meaning, literally, the words “Registration No. 2,364,842”
or perhaps “the entire certificate of registration No.
2,364,842.” Thus, respondent has answered these
interrogatories by saying it has not used the trademark-in-
suit or has no products bearing the trademark-in-suit
because the words “Registration No. 2,364,842” or the
registration certificate itself is not used or does not
appear on the goods or their packaging.
Although respondent claims not to have engaged in
gamesmanship in interpreting the interrogatories as it has,
Cancellation No. 92044369
24
and asserts that drawing a distinction between a mark and a
registration is not only acceptable but necessary, the Board
takes a contrary view of respondent’s actions. Even if we
accept that the definition of “trademark-in-suit” is subject
to interpretation, respondent has chosen an interpretation
that does not make sense, rather than the one reasonable
interpretation it could have made. However, although we
disapprove of what respondent has done, its improper
responses have no effect on our decision. As noted,
respondent’s responses are not critical to our finding that
respondent has not proved its defense of laches. Nor are
these responses relevant to any other issues before us
because petitioner did not, upon receiving these responses,
move to amend her pleading to assert the grounds of
abandonment or fraud through false post registration
declarations of use, and as stated previously, these issues
were not tried by consent.
We turn now to petitioner’s pleaded grounds.
Likelihood of Confusion
In order to prevail on her claim of likelihood of
confusion (Section 2(d) of the Trademark Act), petitioner
must prove both the elements of priority of use and
likelihood of confusion. In her petition petitioner alleges
that she has resided in the United Kingdom since earlier
than the claimed date of first use by respondent. Although
Cancellation No. 92044369
25
the petition goes on to allege that petitioner enjoys
extensive goodwill with respect to “this name and mark,” the
only reference to the goods and/or services with which
petitioner is using the mark, and for which she claims prior
rights, is clothing:
8. The mark TWIGGY has been used by
Petitioner for many years prior to use
by Respondent and is still being used by
Petitioner. Petitioner never abandoned
the mark. Petitioner has used and is
using the TWIGGY mark on clothing.

Further, in her discussion of the various du Pont factors,10
she indicates that it is her use of the mark TWIGGY for
clothing on which she relies.11

10 These factors were set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), and are followed
by both the Board and its primary reviewing court in determining
likelihood of confusion.
11 As noted previously, petitioner submitted a status and title
copy of a registration for TWIGGY for various items in Class 3.
This registration was never pleaded, and we cannot say that the
issue of likelihood of confusion with respect to this
registration was clearly tried, such that we could treat the
pleading to be amended pursuant to Fed. R. Civ. P. 15(b).
Moreover, the registration is in the name of Twiggy Limited, and
therefore we cannot conclude that it is owned by petitioner. In
any event, even if the registration were clearly owned by
petitioner, and the issue of likelihood of confusion based on the
registration had been tried, the registration would not be
sufficient to establish petitioner’s priority. Because this is a
cancellation proceeding, as opposed to an opposition proceeding,
petitioner may not merely rely on her registration alone.
Compare, King Candy Company v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974) with Brewski Beer Co. v.
Brewski Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (when
both parties in a cancellation proceeding have registrations, the
petitioner must prove its priority). Thus, assuming petitioner’s
ownership of the registration, both petitioner and respondent
could rely on the filing dates of the applications which issued
into the registrations: the priority filing date of petitioner’s
application is January 5, 2000 since this application was based
on Section 44(d) of the Trademark Act, while the filing date of
Cancellation No. 92044369
26
The record shows that petitioner used, through
licensees, the mark TWIGGY for a variety of goods sold in
the United States, including clothing. These goods were
sold between 1967 and 1970. There is no evidence of any use
of TWIGGY as a trademark for clothing between 1970 and
January 29, 1997, the filing date of the application which
matured into respondent’s registration, and the earliest
date on which respondent can rely in view of the fact that
respondent has not submitted evidence of its use of the
mark. Petitioner started using the mark again in 2005 for
clothing that is sold abroad. In the United Kingdom TWIGGY
clothing is sold by a mail order house called Little Woods
Shop Direct, while TWIGGY clothing is also sold in Japan in
TWIGGY shops.
Petitioner testified that the clothing sold by the UK
and Japanese companies is available to be ordered through
the Internet, and therefore could be purchased by consumers
in the United States. However, petitioner provided no
evidence of the number or amount of such sales, making only
the general statement that these products did get to the
United States. We cannot conclude from this testimony that
any appreciable amount of clothing bearing the mark TWIGGY
reached consumers in the United States, such that we can say

respondent’s application is January 29, 1997. Obviously
respondent’s filing date is earlier than petitioner’s.
Cancellation No. 92044369
27
that petitioner has established common law rights based on
such use.
The real question, though, is not whether the post-2000
sales of TWIGGY products are sufficient to establish common
law trademark rights, since in any event they are subsequent
to the filing date of respondent’s underlying application.
Rather, the question is whether petitioner can rely on her
1967-70 trademark use in order to demonstrate her priority.
The Trademark Act provides that “[n]onuse for 3
consecutive years shall be prima facie evidence of
abandonment.” 15 U.S.C. § 1127. The statutory presumption
of abandonment applies to a party’s unregistered common law
mark. See Miller Brewing Co. v. Oland's Breweries [1971]
Ltd., 548 F.2d 349, 192 USPQ 266, 267 (CCPA 1976); L. & J.G.
Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1967 (TTAB 2007).
Here, as noted, there is no evidence that petitioner used
TWIGGY as a trademark for clothing between 1970 and the time
respondent filed its trademark application in 1997 and, as
far as this record is concerned, there is no clear evidence
that she has used the mark TWIGGY on clothing sold in the
United States even now. The present case, thus, is very
similar to the situation in L. & J.G. Stickley Inc. v.
Cosser, supra, where a 28-year period of nonuse was found to
establish abandonment.
Cancellation No. 92044369
28
Accordingly, we must consider whether petitioner has
shown, during this period of nonuse, an intent to resume use
of the mark on clothing that would disprove the presumed
fact of no intent to resume use. See Imperial Tobacco Ltd.
v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393
(Fed. Cir. 1990); Rivard v. Linville, 133 F.3d 1446, 45
USPQ2d 1374 (Fed. Cir. 1998). Petitioner has not provided
any excuse or indeed any reason at all for this long period
of nonuse, nor has she provided any evidence about her plans
to resume use of the mark TWIGGY on clothing in the United
States. “Use” of a mark means “the bona fide use of such
mark made in the ordinary course of trade, and not made
merely to reserve a right in a mark.” 15 U.S.C. § 1127.
Merely because a party used a mark a long time ago and it
could use the mark in the future is not sufficient to avoid
abandonment. Silverman v. CBS Inc., 870 F.2d 40, 9 USPQ2d
1778, 1783 (2d Cir. 1989) (citations omitted):
A proprietor who temporarily suspends
use of mark can rebut the presumption of
abandonment by showing reasonable
grounds for the suspension and plans to
resume use in the reasonably foreseeable
future when the conditions requiring
suspension abate. But a proprietor may
not protect a mark if he discontinues
using it for more than 20 years and has
no plans to use or permit its use in the
reasonably foreseeable future. A bare
assertion of possible future use is not
enough.

Cancellation No. 92044369
29
In short, at the time respondent filed its underlying
application on January 29, 1997, we find that petitioner had
abandoned her common law trademark rights in TWIGGY for
clothing.12 Moreover, petitioner’s subsequent use of the
mark, even if she had shown more than possible token sales
in the United States, would not retroactively cure her past
abandonment. See AmBRIT Inc. v. Kraft Inc., 812 F.2d 1531,
1 USPQ2d 1161, 1170 (11th Cir. 1986). See also, Stromgren
Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100, 1112
(TTAB 1997):13
We agree with petitioner that respondent
misses the point with its arguments
about its own use and Great American's
later intention to use -- the point
being that, by 1990, the registered mark
… was abandoned. And, the earliest
evidence of any intent to resume use
occurred after the mark was abandoned
due to a period of over two years of
nonuse. That being the case, these
later efforts, had actual use ever
commenced, would represent a new and
separate use which cannot serve to cure
the abandonment.

12 Although we have confined our extended discussion of
petitioner’s common law rights to her trademark for clothing, we
add that she cannot rely on her common law rights to show
priority with respect to other goods. As far as the record
shows, her activities with respect to trademark use for such
goods ceased in 1970, and did not recommence until after
January 29, 1997. Moreover, besides not commencing until 1998,
her use of TWIGGY for a line of skin care products was in the
United Kingdom, with no evidence of sales in the United States.
13 At the time this decision issued, the statute provided that a
period of two years of nonuse created a presumption of
abandonment. The statute was subsequently amended, and three
years is now the relevant period.
Cancellation No. 92044369
30
Accordingly, petitioner cannot rely on her use of the
mark TWIGGY for clothing between 1967 and 1970 to establish
her priority over respondent, and her later use was
subsequent to respondent’s filing date, and was also abroad
and insufficient to establish trademark rights in the United
States. Because petitioner cannot prove priority of use of
the mark TWIGGY, her likelihood of confusion claim must
fail.
Dilution
In order to succeed on a claim of dilution, a plaintiff
must prove that its mark is famous and distinctive, and that
its mark became famous prior to the first use or
constructive first use of the defendant’s mark. In the
present case, therefore, petitioner must establish that her
mark (as opposed to her persona) became famous prior to
January 29, 1997, the filing date of respondent’s intent-to-
use application that resulted in issuance of the
registration that is the subject of this proceeding. In her
brief petitioner conflates arguments about the fame of her
person with the fame of her mark, but the ground of
dilution, as set forth in the statute, specifically pertains
to a mark:
Dilution by Blurring; Dilution by
Tarnishment.—

Injunctive relief.--Subject to the
principles of equity, the owner of a
famous mark that is distinctive,
Cancellation No. 92044369
31
inherently or through acquired
distinctiveness, shall be entitled to an
injunction against another person who,
at any time after the owner's mark has
become famous, commences use of a mark
or trade name in commerce that is likely
to cause dilution by blurring or
dilution by tarnishment of the famous
mark, regardless of the presence or
absence of actual or likely confusion,
of competition, or of actual economic
injury.

Section 43(c) of the Trademark Act, 15 U.S.C. §1125(c).

In view of our finding that petitioner had abandoned
her mark prior to the January 29, 1997 filing date of
respondent’s underlying application, she cannot prove that
her mark was famous at that time. Accordingly, her ground
of dilution fails.14
Fraud
The pleaded ground of fraud is based on petitioner’s
assertion that when respondent signed the application which
matured into the registration sought to be cancelled,
respondent knowingly made false statements in the
declaration of that application, namely:
To the best of his/her knowledge and
belief no other person, firm,
corporation, or association has the
right to use the mark in commerce,
either in the identical form thereof or

14 Again, although we have concentrated our discussion on
petitioner’s use of her mark on clothing, and the subsequent
abandonment of her rights in the mark for such goods, the record
shows that she had not used her mark for any goods sold in the
United States between 1971 and 1997, and that she had abandoned
her rights in the mark TWIGGY for all of the goods on which she
had used the mark in the period of 1967-1970.
Cancellation No. 92044369
32
in such near resemblance thereto as to
be likely, when used on or in connection
with the goods/services of such other
person, to cause confusion, or to cause
mistake, or to deceive.

Fraud in procuring a trademark registration or renewal
occurs when an applicant knowingly makes false, material
representations of fact in connection with his application.
Torres v. Cantine Torresella S.r.l., supra. Petitioner
claims that respondent “was fully aware that Twiggy had and
has the right to use the mark TWIGGY,” and that respondent
“was fully aware that applying a celebrity’s name to
clothing may be likely to cause confusion, to cause mistake
or to deceive.” Brief, p. 15. It does not appear from
petitioner’s argument that she is claiming that respondent
knew that she was using the trademark TWIGGY for clothing or
related goods or services. It appears instead that the real
basis for petitioner’s claim of fraud relates to her claim
of a false suggestion of a connection. Petitioner, based on
an Office action sent to respondent in connection with the
examination of respondent's underlying application, and the
argument advanced by the examining attorney in that Office
action, asserts that: “As the Examining Attorney correctly
stated, ‘[a]s celebrities often use their names in
connection with lines of fashion and apparel, use of the
applicant’s mark TWIGGY on clothing articles would likely
Cancellation No. 92044369
33
and falsely suggest a connection with the aforementioned
celebrity.’” Brief, p. 16.
The language in the declaration of an application,
quoted above, tracks the language of the statute relating to
likelihood of confusion. It refers to the declarant’s
knowledge and belief as to another’s right to use the mark
in commerce with its goods or services and whether such
other's use is likely to cause confusion or mistake or to
deceive. There is no evidence that respondent knew that
petitioner had the right to use TWIGGY as a trademark for
any goods or services with which the respondent’s use would
be likely to cause confusion. As the record shows,
petitioner had stopped making trademark use of TWIGGY for
any goods sold in the United States in 1970, and respondent
signed the declaration in its application in 1997.
Petitioner has not pointed to any cases which have held
that the language in the declaration of the application
requires an applicant to reveal third-party use other than
trademark use, such as a person having a particular name.
Nor do we know of any such decisions. Because of the
apparent absence of case law support for petitioner's
position, we cannot say, even if respondent knew there was
an individual named Twiggy and that respondent's use of the
mark TWIGGY could falsely suggest a connection with her,
Cancellation No. 92044369
34
that its statement in the declaration was an intentionally
false statement.
Finally, a third requirement of a fraud claim is that
the false statement is material, that is, that it led the
Office to issue a registration that it would not have if it
had been aware that the statement was false. Here,
respondent’s registration file shows that in the first
Office action, dated July 7, 1997, the Examining Attorney
refused registration pursuant to Section 2(a) of the
Trademark Act on the basis that the mark “may falsely
suggest a connection with well-known British actress and
personality Twiggy.”15 The Examining Attorney was well
aware that “Twiggy” was the name of a British actress and
personality, also referred to by the Examining Attorney in
the June 19, 1998 Office action as “a well known former
supermodel who also sings and acts.” In view thereof,
respondent’s failure to identify petitioner when it signed
the declaration in its application can hardly be considered
material to the Examining Attorney’s decision to allow the
application.
Petitioner’s ground of fraud is dismissed.

15 Obviously, the refusal was subsequently withdrawn, the
application was published for opposition, and a registration
ultimately issued.
Cancellation No. 92044369
35
False Suggestion of a Connection
The final ground which we must decide is whether
respondent’s use of the mark TWIGGY for children’s clothing
may falsely suggest a connection with petitioner. The
Federal Circuit explained in University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217
USPQ 505, 508 (Fed. Cir. 1983), that the purpose of the
false suggestion of a connection language of Section 2(a)
was to protect “the name of an individual or institution
which was not a ‘technical’ trademark or ‘trade name’ upon
which an objection could be made under Section 2(d),” and
that this statutory section embraces the concepts of the
right of privacy and the related right of publicity. See In
re White, 80 USPQ2d 1654 (TTAB 2006). The Federal Circuit
further stated that to succeed on such a ground the
plaintiff must demonstrate that the name or equivalent
thereof claimed to be appropriated by another must be
unmistakably associated with a particular personality or
“persona” and must point uniquely to the plaintiff. The
Board, in Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB
1985), in accordance with the principles set forth in Notre
Dame, required that a plaintiff asserting a claim of a false
suggestion of a connection demonstrate 1) that the
defendant’s mark is the same or a close approximation of
plaintiff’s previously used name or identity; 2) that the
Cancellation No. 92044369
36
mark would be recognized as such; 3) that the plaintiff is
not connected with the activities performed by the defendant
under the mark; and 4) that the plaintiff’s name or identity
is of sufficient fame or reputation that when the
defendant’s mark is used on its goods or services, a
connection with the plaintiff would be presumed. This
Buffett test has been followed by the Board in subsequent
decisions. See In re North American Free Trade Association,
43 USPQ2d 1282 (TTAB 1997); In re Nuclear Research Corp., 16
USPQ2d 1316 (TTAB 1990). However, in some of the decisions
involving the false suggestion of a connection ground the
language of the second factor has been modified somewhat, to
state “that the marks would be recognized as [the same as,
or a close approximation of, the name or identity previously
used by the other person], in that they point uniquely and
unmistakably to that person.” See L. & J.G. Stickley Inc.
v. Cosser, supra at 1972; In re White, supra; In re Urbano,
51 USPQ2d 1776 (TTAB 1999); In re Wielinski, 49 USPQ2d 1754
(TTAB 1998). This modified language recognizes the
requirement set forth by the Federal Circuit that the name
claimed to be appropriated by the defendant must point
uniquely to the plaintiff.
There is no real dispute in this case as to factors one
and three. The evidence clearly shows that petitioner is
known, both personally and professionally, as “Twiggy,” and
Cancellation No. 92044369
37
that respondent’s mark TWIGGY is identical to petitioner’s
name. It is also clear that she is not connected with
respondent, and did not give respondent permission to use
her name as a trademark for its goods.
With respect to the fourth factor, respondent asserts
that its mark TWIGGY would not be recognized as petitioner’s
name because petitioner’s name or identity is not of
sufficient fame or reputation that consumers seeing it on
children’s clothing would presume a connection with
petitioner. Petitioner, obviously, takes the opposite
position.
As previously discussed, the fame or reputation of
petitioner must be determined as of the time respondent’s
registration for TWIGGY issued. Thus, although petitioner
may have been a major celebrity in the late 1960s, the
burden on petitioner is to show that she had sufficient fame
and/or reputation as of July 4, 2000.
There is no question that petitioner was a huge
sensation in the late 1960s, a model who was also a
celebrity. Certainly if her fame and reputation were
considered during the period of 1967-1970, that fame would
easily satisfy the prong of the Buffett test requiring that
the plaintiff’s name or identity be of sufficient fame or
reputation that when the defendant’s mark is used on its
goods or services, a connection with the plaintiff would be
Cancellation No. 92044369
38
presumed. What we must consider, then, is whether since
that time she has retained a sufficient degree of fame or
reputation that, as of July 4, 2000, a connection with her
would still be presumed by consumers seeing the mark TWIGGY
on children’s clothing. We find that she has.
Petitioner is not simply a model who made a name for
herself more than 30 years ago and then disappeared from
public view. On the contrary, through the years she has
continued to play a public role, and has appeared before the
public in vehicles which gave her significant national
exposure. As noted previously, during the 1970s she starred
in a U.S. film called “The Boyfriend,” for which she won two
Golden Globe awards, and appeared on various television
shows that were broadcast nationally in the United States,
including “The Sonny and Cher Show” and the “Mike Douglas
Show,” on which she was a co-host for a week. In the 1980s
she starred in a major Broadway hit and Tony-award winning
show for 18 months, and was herself nominated for a Tony
award. She performed on one of the Academy Award telecasts,
and was also a presenter. She also made many appearances on
nationally seen television interview shows, including
“Johnny Carson” and “Merv Griffin.” She starred in movies
opposite such “name” actors as Robin Williams and Shirley
Maclaine. In the 1990s she had a presence on U.S.
television, starring for one year (1991) in a U.S.
Cancellation No. 92044369
39
television series, and in a TV movie in 1996. She also
performed in theatrical productions in the United States,
starring in a 1997 summer theater production that was
reviewed in “The New York Times” (a newspaper with national
circulation), and starring for five months in 1999 in an
off-Broadway production that was positively reviewed.
She did interviews through the years, for example, when
she had a show coming out, and she also did a publicity tour
of U.S. cities to publicize her film “Madame Sousatzka.” In
connection with the sitcom “Princesses,” she had interviews
in “People,” “Vogue” and “US” magazine.
These various entertainment activities, and the
promotional efforts surrounding them, have successfully kept
her name before the U.S. public, and have built on the
extraordinary initial reputation and celebrity that was
created in the period from 1967-1970. We do not say that
her post-1970 activities would, on their own, be sufficient
to demonstrate the requisite recognition, but they are
sufficient when taken together with the phenomenal amount of
publicity and recognition she received in that initial
period. As further evidence of her reputation and
recognition in 2000, the year that respondent’s registration
issued, we take judicial notice16 that the fourth edition of

16 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Cancellation No. 92044369
40
The American Heritage Dictionary of the English Language,
published in 2000, listed “Twiggy” as an entry, as follows:
Originally Lesley Hornby. British model
who epitomized the ultrathin look popular
from 1966 to 1976.

In addition, we think it is significant that in 1999 the
Franklin Mint asked petitioner to license her name and
likeness for a collectible doll. The other dolls in this
collection were Jackie Kennedy, Princess Diana, Marilyn
Monroe and Elvis Presley. Although the doll did not go on
the market until after respondent’s mark was registered, the
fact that the Franklin Mint asked petitioner to be part of
its doll collection, and the stature of the other dolls in
the collection, indicates that her fame was considerable and
still ongoing during 1999, the year prior to the issuance of
respondent's registration, and that consumers would, at that
time, recognize her name. The subsequent sale of a million
TWIGGY dolls confirms this. Although the sales of the dolls
occurred shortly after the issuance of respondent’s
registration, they are still indicative of her reputation in
2000.17

Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
17 At footnote 3 of its brief, p. 20, respondent states that
there is no evidence as to how many TWIGGY dolls were sold in the
United States. However, The Franklin Mint, the licensee that
sold the dolls, is a United States company. Because respondent
did not raise this question during cross-examination, we have
assumed that the sales of a United States company were in the
United States. However, even if not all of the million dolls
were sold in the United States, it would not affect our decision
Cancellation No. 92044369
41
In sum, we find that petitioner and her name, Twiggy,
had sufficient fame and reputation in 1999 and 2000, both
prior to and at the time respondent’s mark was registered,
that purchasers of children’s clothing would, upon seeing
the mark TWIGGY on such goods, presume an association with
her. In reaching this conclusion, we have not considered
petitioner’s appearances on “America’s Next Top Model” in
2005 and thereafter, and the publicity generated as a result
of these appearances. Nor have we considered her activities
in countries outside the United States; there is no evidence
in the record that information about such activities reached
or had an impact on U.S. consumers.
Respondent has argued that purchasers of children’s
clothing would not be aware of petitioner’s activities in
1967-1970, when she was a phenomenon. Essentially
respondent is asserting that people who knew of petitioner
in that time period are now too old to buy children’s
clothing, and that there is no evidence that “a new
generation of adult consumers” would be aware of the 1960s
model Twiggy. Brief, p. 19. We accept that purchasers who
were too young to have been exposed to the “Twiggy
phenomenon,” or were born after 1970, would not necessarily
be aware of petitioner or her name through her various

herein inasmuch as a substantial portion of such number
undoubtedly were sold in this country.

Cancellation No. 92044369
42
entertainment activities subsequent to 1970. We also accept
that in 2000, the year respondent’s mark was registered, and
therefore the date as of which we must determine whether the
mark falsely suggested a connection with petitioner, some of
these people would be purchasers of children’s clothing.
For example, a girl born in 1970 would have been 30 in 2000,
and could have a child age 6-10 for whom she would buy
children’s clothing. However, girls who were 8-17 years old
in 1970 would have been aware of petitioner at that time,
and, at least at the younger age range, would have been the
purchasers of the board game Twiggy the Queen of Models, the
dress-up paper dolls and the other licensed products. These
same girls would have been 38-47 years old in 2000, and are
likely to have had children at that time who would wear
“children’s clothing,” since such clothing can be worn by
12-13 year olds. See Twiggy dep., p. 29. In other words,
these women could have given birth when they were in the age
range of 25 to 34 and, therefore, have been purchasers of
children’s clothing in 2000. And not to belabor the point,
but it is not unusual for women to continue to have children
when in their late 30s or early 40s, and therefore even
women who were in their late teens or early 20s in 1967-1970
could have been consumers of respondent’s goods in 2000.
Further, even if their own children were too old in 2000 to
wear children’s clothing, the people who knew of petitioner
Cancellation No. 92044369
43
in 1967-1970 are still potential purchasers of children’s
clothing, for their friends’ children or even for their own
grandchildren. Moreover, while we have addressed our
comments to women as the purchasers of children’s clothing,
we must also recognize that fathers may purchase clothing
for their children, and they do not have the biological
issues that women do. Because of petitioner’s great
celebrity during 1967-1970, men as well as women, and boys
as well as girls, would have been very aware of her, and
may, in 2000, have been purchasing clothing for their
children.
Accordingly, petitioner has satisfied the fourth factor
set forth in Buffett, that petitioner’s name is of
sufficient fame or reputation that when the respondent’s
mark is used on children’s clothing, a connection with
petitioner would be presumed.
Finally, we consider the second factor, whether
respondent’s mark would be recognized as pointing uniquely
and unmistakably to the petitioner. As we have discussed at
length, “Twiggy” had been the personal and professional name
of petitioner for more than 30 years at the time
respondent’s registration issued, and her name was of
sufficient fame or reputation that consumers would make a
connection between children’s clothing sold under the mark
TWIGGY and petitioner. The evidence supporting our finding
Cancellation No. 92044369
44
that her name has fame and/or reputation also demonstrates
that the name “Twiggy” is unmistakably associated with
petitioner. Further, on this record, we find that TWIGGY
points uniquely to petitioner. Respondent has pointed out
that “twiggy” has a dictionary meaning and, although it has
not submitted a copy of it, we take judicial notice that
“twiggy” means “1. Resembling a twig or twigs, as in
slenderness or fragility. 2. Abounding in twigs: a twiggy
branch.”18 Respondent has also submitted three third-party
registrations, two for the mark TWIGGY for bicycles and for
entertainment services presenting a live squirrel water
skiing behind a boat, and one for the mark TWIGGY STARDOM
for entertainment services consisting of live musical
performances and a web site featuring musical performances,
etc.
The requirement that a respondent’s mark point
“uniquely” to petitioner does not mean that TWIGGY must be a
unique term. Rather, in the context of the respondent’s
goods, we must determine whether consumers would view the
mark as pointing only to petitioner, or whether they would
perceive it to have a different meaning. Thus, if the
respondent’s goods were a plant food or a plant, the mark
TWIGGY used on them could very well be understood as having

18 The American Heritage Dictionary of the English Language, 4th
ed. © 2000.

Cancellation No. 92044369
45
the dictionary meaning quoted above. However, there is
nothing in the record from which we can conclude that TWIGGY
for children’s clothing would have such a meaning. Although
it is not respondent’s burden to explain why it adopted its
mark, respondent’s choice not to do so means we do not have
any explanation which might show that the term has another
significance when used for children’s clothing. In fact,
the obvious connection between models and clothing is
further support for our conclusion that respondent’s mark
for children’s clothing points uniquely to petitioner.19
As for the third-party registrations submitted by
respondent, we repeat the Board’s statements in In re White,
supra at 1659-60 (citations omitted):
Further, the actual copies of third-
party registrations and applications are
not evidence that the marks which are
the subjects thereof are in use and that
the public is familiar with the use of
those marks. In this regard, we note
that applicant has pointed to no case
law holding that third-party
registrations and/or applications should
be accorded significant weight in our
analysis of a Section 2(a) false
suggestion refusal. In this case, we
are unable to conclude from the third-
party MOHAWK registrations and

19 In saying this, we want to be clear that it is not necessary,
in order to succeed on a Section 2(a) false suggestion of a
connection ground, that the plaintiff show that consumers would
believe the defendant’s goods emanate from the plaintiff. That
is a requirement for a Section 2(d) likelihood of confusion
claim, but not a Section 2(a) claim. We point to petitioner’s
fame as a model not to show that consumers would expect her to be
associated with the sale of clothing, but because consumers are
likely to associate clothing and models, and therefore to view
the mark TWIGGY as pointing to petitioner.
Cancellation No. 92044369
46
applications that the public is aware of
the marks shown therein such that the
term “Mohawk” does not point uniquely to
the Mohawk tribe.

At the oral hearing respondent’s attorney explained
that respondent was aware that third-party registrations do
not prove that the marks are in use or that the public is
aware of them, and they were being submitted only to show
that others had adopted the mark TWIGGY, and therefore the
term was not unique. Again, the question is not whether the
term is unique but whether, as used on the respondent’s
goods, it would point uniquely to petitioner. Third-party
registrations can, of course, be used to show that a term
has a particular significance within an industry, in the
same way that dictionaries are used. See Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976).
However, the three registrations submitted by respondent are
not for goods or services even remotely related to clothing,
so they are of no value in showing that TWIGGY for
children’s clothing would have a meaning that does not point
to petitioner. In short, the three third-party
registrations have no probative value in showing that the
name “Twiggy” does not point uniquely to petitioner.
After considering all of the evidence of record in
connection with the Section 2(a) false suggestion of a
connection factors, we find that respondent’s mark TWIGGY
Cancellation No. 92044369
47
for children’s clothing may falsely suggest a connection
with petitioner.
Conclusion
We find that petitioner has proven her Section 2(a)
ground of false suggestion of a connection, but has failed
to prove her pleaded grounds of likelihood of confusion,
dilution, and fraud. We also find that respondent has
failed to prove its affirmative defense of laches.
Decision: The petition to cancel is granted on the
ground that respondent’s mark may falsely suggest a
connection with petitioner.