Blair Corporation and Blair LLCv.Tami T. Fassinger

Trademark Trial and Appeal Board

Oct 17, 2008

No. 91171088 (T.T.A.B. Oct. 17, 2008)

Mailed:
October 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Blair Corporation and Blair LLC
v.
Tami T. Fassinger
_____

Opposition Nos. 91166414 and 91171088
to application Serial No. 76541910
filed on August 21, 2003
_____

Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman LLP
for Blair Corporation and Blair LLC.

Melissa M. Allen of Melissa M. Allen, P.A. for Tami T.
Fassinger.
______

Before Quinn, Drost and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Tami T. Fassinger (“applicant”) filed an intent-to-use
application for the mark MALLORY VALERIE BLAIR, in standard
character form, for goods ultimately identified as follows:
Jewelry; plastic necklaces; plastic bracelets; plastic
rings, in Class 14;
Series of fictional books for children; stationery;
note pads; paper goods, namely, art paper, craft paper
and drawing paper; stickers, in Class 16;
Purses, in Class 18;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91166414 and 91171088
2
Clothing for children, namely, t-shirts, dresses,
pajamas, underwear, socks; children's halloween
costumes; fabric head bands; headbands, bandanas, in
Class 25;
Hair accessories, namely, twisters, claw clips, snap
clips, hair bands, plastic barrettes, hair bows, in
Class 26; and,

Dolls; stuffed dolls; rubber dolls; rag dolls; plastic
dolls; paper dolls; plush toys; doll clothing and doll
accessories sold as a unit therewith; puzzles, in Class
28.

Applicant identified MALLORY VALERIE BLAIR as a fictitious
name.
Blair LLC, fka Blair Holdings, Inc., and its exclusive
licensee Blair Corporation (“opposers”), a wholly-owned
subsidiary of Blair LLC, opposed the registration of
applicant’s mark on the grounds of priority and likelihood
of confusion and dilution.1 Specifically, opposers alleged
prior use and ownership of the federally-registered marks
BLAIR, BLAIR BOUTIQUE, BLAIR PLUS and JOHN BLAIR for a wide
variety of goods and services, including jewelry, clothing,
giftware and retail and mail order services in connection
with such products. In addition, opposers alleged that its
BLAIR marks became famous prior to the filing date of
applicant’s application and that therefore applicant’s mark

1 Blair Holdings, Inc., an original opposer, was converted to a
limited liability company from a corporation and changed its name
to Blair LLC. On May 21, 2008, opposers filed a motion, with
consent, to change the caption of the proceeding to substitute
Blair LLC for Blair Holdings, Inc. The motion is granted.

Opposition Nos. 91166414 and 91171088
3
MALLORY VALERIE BLAIR is likely to cause confusion and
dilution with opposers’ marks.2
Applicant denied the essential allegations in the
notices of opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties agreed to submit their
testimony and evidence through stipulations of facts and
exhibits filed by both parties. As part of their exhibits,
both parties included the discovery deposition of applicant
without any exhibits, except the Thomson & Thomson search
report, referenced in the deposition. Finally, opposers’
stipulation was missing Exhibits 8-47, 61-62, 66-84, 91, 96,
and 114. However, because of the description of the
exhibits in the stipulation of facts, the failure of
applicant to object to opposers’ characterization of their
exhibits, and the narrow parameters under which we consider
the goods and services at issue, the missing exhibits would
not have changed our decision in this case.

2 As discussed below, opposers claimed for the first time in
their brief that applicant did not have a bona fide intent to use
her mark at the time she filed her application. That issue was
tried by implied consent.
Opposition Nos. 91166414 and 91171088
4
Standing
Opposers introduced certified copies of their pleaded
registrations prepared by the U.S. Patent and Trademark
Office showing their current status and title. Because
opposers have properly made their pleaded registrations of
record, opposers have established their standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982).
Priority

Because opposers’ pleaded registrations are of record,
Section 2(d) priority is not an issue in this case. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). In instances where opposers relied on
their common law rights, we have discussed the evidence
establishing opposers’ priority.

Applicant’s Bona Fide Intent To Use Her Mark
Relying on statements made by applicant during her
deposition, opposers argue the unpleaded claim that
applicant’s application is void ab initio because applicant
did not have a bona fide intention to use her mark in
commerce on the products as of the filing date of her
application. Applicant did not object to opposer’s
Opposition Nos. 91166414 and 91171088
5
questions on this subject during her deposition and she did
not raise an objection in her brief to opposers’ argument on
this issue. Moreover, applicant addressed this issue on the
merits in her brief. Thus, we find that the issue of
applicant’s bona fide intent to use her mark was tried by
the parties with applicant’s implied consent. The notices
of opposition are deemed amended under Fed. R. Civ. P. 15(b)
to conform to the evidence and to assert the claim.
The parties stipulated to the following facts:
Applicant’s intention has been that, in
connection with getting her book
published, and the “Mallory Valerie
Blair” character and story known, that
she would then create a series of
products related to the character and
story;3

Applicant has a bona fide good faith
“intention” to use the Applicant’s mark
on all of the goods included in her
application;4 and,

Notwithstanding her efforts to obtain a
publishing deal as set forth above in
Paragraph No. 16 above, Applicant at
this time has a good faith bona fide
intention to use the mark in each class
and for each good for which she had
sought registration, but given the
prospective nature of the use, she has
not actually used the mark on the goods
identified in her application.5

3 Stipulation of facts filed by applicant, ¶10.
4 Stipulation of facts filed by applicant, ¶15.
5 Stipulation of facts filed by applicant, ¶17.
Opposition Nos. 91166414 and 91171088
6
Despite stipulating to applicant’s bona fide intention
to use her mark in commerce, opposers argue that applicant
did not have a bona fide intent to use the mark when she
filed her application.6 Opposers contend that applicant’s
core business objective is to publish a series of children’s
books entitled MALLORY VALERIE BLAIR and that “at best [she]
has a contingent secondary intent to use her mark for the
claimed goods.”7 (Emphasis in the original).
Q. Do you right now, sitting here
today, have a bona fide intent to
use everything in your trademark
application other than the series
of books?

A. I have an intent to use those
categories, assuming that the book
is launched successfully.

Q. And that’s all dependent upon the
successful launch of the book,
correct?

A. That line of products is all tied
to the successful launch of a book,
a character in a book.8

6 In their Reply Brief, opposers argue that because applicant had
made certain stipulations, she was estopped from contradicting
them. According to opposers, “You cannot stipulate to facts then
parse them to death or wish them away.” (Opposers’ Reply Brief,
pp. 1-2). For some unexplained reason, opposers contend that
even though they stipulated to applicant’s bona fide intent to
use her mark in commerce, that fact is not binding on opposers
and they may challenge the validity of the stipulation. Suffice
it to say, opposers are bound by the stipulation of facts. In
any event, because the parties have argued the issue on the
merits in their briefs, we will decide the issue on the merits.
7 Opposers’ Brief, p. 12.
8 Fassinger Dep., pp. 178-179.
Opposition Nos. 91166414 and 91171088
7
In addition, opposers point out that applicant has no
definite plan for marketing the other products because she
is concentrating on getting her book published and
therefore, she has no product mock-ups, no packaging or tags
featuring the mark, or any other documents corroborating
applicant’s intent to use the mark MALLORY VALERIE BLAIR.9
On the other hand, applicant asserts that opposers have
mischaracterized applicant’s testimony to mean that she has
no intention to use her MALLORY VALERIE BLAIR mark with any
products other than her literary work. Applicant contends
that she has clearly testified that her plan is to first
sell her series of books, and the literary character MALLORY
VALERIE BLAIR, followed by the marketing of the associated
products identified in her application.10
Q. And once they are published [the
MALLORY VALERIE BLAIR books], you
would hope that there would be
clothes for children with the
Mallory Valerie Blair character on
it, right?

A. That’s speculative, certainly, but
it would be my reasons behind
applying for the thorough (sic)
merchandising copyright.

Q. Trademark?

A. Trademark, thank you.

Q. And you would expect that, if
successful, you would have the

9 Opposers’ Brief, pp. 12-13.
10 Applicant’s Brief, pp. 11-14
Opposition Nos. 91166414 and 91171088
8
Mallory Valerie Blair name on
clothes, correct?

A. My intention would be to have some
Mallory Valerie Blair products
which might include clothes. It
would be, I guess, speculative or
undetermined whether her whole name
would appear on such items or not.

Q. But the character would be known as
Mallory Valerie Blair?

A. The character. And the character’s
(sic) definitely Mallory Valerie
Blair, and the products tie into
the character very much.

Q. And tie into the name, correct?

A. To the name Mallory Valerie Blair.

Q. So could you envision the tag on
the T-shirt or sweat shirt saying
Mallory Valerie Blair Collection?

A. Could I envision that, Yes. Is
that a definite plan? No.

Q. What’s the definite plan with
regard to the clothes that you’ve
applied for on your trademark
application?

A. There is no definite plan at this
stage. And I want to reiterate,
I’m concentrating on getting a book
deal to create the character. And
until the character’s known, these
other categories [of products]
don’t make logical sense.11

* * *

Q. Based on your trademark
application, what would you hope
would happen?

11 Fassinger Dep., pp. 60-62.
Opposition Nos. 91166414 and 91171088
9
A. My hope and my wildest dreams would
be that that first book goes into a
second printing very quickly, that
they quickly ask me to put my
finishing touches on the other
books in that series . . . and that
if I was able to get their brand
out about the Mallory Valerie Blair
character, that I would figure out
a channel to go into these other
categories. And that may be
something that was done through the
book publisher, so I can only
speculate based on what that
contract might be or not be.12

* * *

Q. But you’ve also filed a trademark
application based on the name
Mallory Valerie Blair, and that’s
for clothes, right? Your trademark
application?

A. The trademark would include
clothing related to the character
in the story that would appeal to
people who like the character.

Q. And the clothes would relate to the
trademark Mallory Valerie Blair,
right?

A. The clothes would relate to the
trademark and to the character
Mallory Valerie Blair.

Q. Right now it seems fairly
speculative, so let me ask you this
question: Do you have a bona fide
intent, besides the children’s
books, to market and offer these
other goods, besides the books in
your trademark application?

Q. I intend to use all of these or I
would not have gone through the

12 Fassinger Dep., pp. 77-78.
Opposition Nos. 91166414 and 91171088
10
trouble to do what I’ve done, but
it’s all intent at this point.

A. But you’ve certainly tried to sell
your book and the name and the idea
to at least four publishers, right?

Q. And that is what I intend to
continue to do, is to start with
trying to get this character known
through a book.13

* * *

Q. So until you have a book deal you
don’t have any plans to use a
Mallory Valerie Blair trademark for
jewelry and the other classes that
you have applied for, correct?

A. I don’t currently have any plans to
do anything without first trying to
get a book deal because, again, the
products are tied to a character
and a story.14

* * *

Q. So you’ve never put the Mallory
Valerie Blair name on any type of
clothing or accessories, right?

A. I have not. That’s just an intent
to use that category because this
is all based on getting a story and
a character known for children.

Q. So right now everything, other than
the series of books, is a
speculative intent and not an
actual intent, correct?

A. I intend to be able to use these
categories once I get success with
the book, and I do intend to that,
yes.15

13 Fassinger Dep., p. 89-90
14 Fassinger Dep., p. 115.
15 Fassinger Dep. 118-119.
Opposition Nos. 91166414 and 91171088
11
Applicant further explained that MALLORY VALERIE BLAIR
is a character in applicant’s story whose hair changes color
with her moods.16 Applicant envisions that girls would use
their MALLORY VALERIE BLAIR stationery, clothes, jewelry,
etc. to reflect their moods (e.g., “If they’re happy, they
would use their yellow stationery; if they’re sad, they’d
use their blue stationery; if they’re angry, they’d use
their red, and so forth”).17
“As the various reports and other legislative history
regarding the Trademark Law Revision Act of 1988 make clear,
it was the intent of Congress in enacting Section 1(b) that
the bona fide requirement thereof focus on an objective
good-faith test to establish that an applicant’s intent is
genuine.” Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503, 1506 (TTAB 1993). An applicant’s
bona fide intention to use a mark must reflect an intention
that is firm, though it may be contingent on the outcome of
an event (that is, market research or product testing).”
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26
USPQ2d at 1506 n.7.
Trademark Rule 2.89, 37 CFR §2.89, provides several
specific examples of efforts to make use of a mark
sufficient to support a request for an extension of time to

16 Stipulation of facts filed by applicant, ¶4.
17 Fassinger Dep., pp. 63-71.
Opposition Nos. 91166414 and 91171088
12
file a statement of use. These examples are illustrative of
efforts that support an applicant’s bona fide intention to
use a mark and are applicable in this case. “Those efforts
may include product or service research or development,
market research, manufacturing activities, promotional
activities, steps to acquire distributors, steps to obtain
governmental approval or other similar activities.” In this
case, applicant has undertaken steps to acquire
manufacturing capabilities and promotional activities (i.e.,
publishing her book) so that the MALLORY VALERIE BLAIR
character becomes a desirable “brand” or character that can
be marketed on jewelry, clothing, hair accessories and toys.
In view of the foregoing, we find that applicant’s
testimony pertaining to the formulation and implementation
of her plan to market the products listed in her application
is credible. We are further persuaded that, despite the
lack of a corroborating business plan or other documents,
applicant has a real and legitimate intention to use the
mark MALLORY VALERIE BLAIR on all of the products listed in
her application.18

18 The fact that opposers have stipulated to applicant’s bona fide
intent to use the mark MALLORY VALERIE BLAIR in connection with
all the goods listed in the application is further support for
our finding.
Opposition Nos. 91166414 and 91171088
13
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).
A. Whether opposers’ BLAIR marks are famous?
This du Pont factor requires us to consider the fame of
opposers’ marks. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the mark at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and notice by independent
sources of the products identified by the mark, as well as
Opposition Nos. 91166414 and 91171088
14
the general reputation of the products and services. Bose
Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and
1309. Although raw numbers of product sales and advertising
expenses may have sufficed in the past to prove fame of a
mark, raw numbers alone may be misleading. Some context in
which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for
comparable types of products or services). Bose Corp. v.
QSC Audio Products Inc., 63 USPQ2d at 1309.
Opposers have been rendering retail and mail order
services under the BLAIR mark and selling products bearing
the BLAIR mark since the 1920’s.19 Those products include
clothing, clothing accessories, including purses, giftwares,
including dolls, and home furnishings.20 From 2000 – 2005,
sales of goods and services attributable to opposers’ BLAIR
trademarks have ranged from a low of $457,000,000 to a high
of $582,000,000.21
Opposers advertise and promote their products and
services through the mail, the Internet, and magazines and
newspapers.22 Opposers’ website at www.blair.com has had
millions of visitors each year (e.g., 7,131,000 in 2002,
11,461,000 in 2003, 11,975,000 in 2004, 14,086,000 in 2005,

19 Stipulation of facts filed by opposer, ¶26.
20 Stipulation of facts filed by opposer, ¶7.
21 Stipulation of facts filed by opposer, ¶7.
22 Stipulation of facts filed by opposer, ¶14.
Opposition Nos. 91166414 and 91171088
15
and 13,718,000 through October in 2006).23 Opposers
“distribute[s], via mail or ad placements, on average
approximately One Hundred Million BLAIR catalogs, mailers,
and print media inserts each month, for an annual total
since 2000 of about 1.3 Billion separate mailings per year.”
(Emphasis in the original).24 Opposers’ “apparel is also
regularly advertised in widely circulated periodical
publications such as Woman’s Day, National Enquirer,
NewsAmerica National Examiner, Modern Maturity, Valassis and
others. . . . Weekly and monthly circulations of these
publications are in the millions.”25 As a result, opposers’
advertising and marketing expenses between 2000 and 2006 for
goods and services featuring opposers’ BLAIR marks have
exceeded $100,000,000 per year.
Although opposers have not placed their sales and
advertising figures in context, the sheer numbers alone
display consumer awareness of opposers’ retail and mail
order sales services in two ways: the extensive sales
illustrate the vast number of purchases that have been made
by consumers and the extensive advertising demonstrates that
the public has been bombarded with opposers’ advertising and
marketing efforts. Accordingly for purposes of determining
likelihood of confusion, we find that opposers’ BLAIR mark

23 Stipulation of facts filed by opposer, ¶13.
24 Stipulation of facts filed by opposer, ¶15.
25 Stipulation of facts filed by opposer, ¶20.
Opposition Nos. 91166414 and 91171088
16
is famous for opposers’ retail and mail order services.
However, the evidence is not sufficient to establish that
any particular BLAIR mark is famous for any particular
product.
B. The similarity or dissimilarity and nature of the goods
and services as described in the application and
registrations at issue.

The issue in an opposition is the right of the
applicant to register the mark for the goods identified in
the application. “The authority is legion that the question
of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 UPSQ2d
1001, 1004 (Fed. Cir. 2002).
As the Court of Customs and Patent Appeals, the
predecessor of our reviewing court, explained in Tuxedo
Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in its
actual use which it argues on this
Opposition Nos. 91166414 and 91171088
17
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

Likewise, we must consider the goods as set forth in
applicant’s application without considering her testimony
that these products are intended to be sold in connection
with a children’s story. Because there are no restrictions
or limitations in applicant’s description of goods, we must
presume that the listed products include all types of
jewelry, children’s clothing, hair accessories, and dolls
and puzzles, not just the type that applicant intends to
market. Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1661 (TTAB 2002).
1. Class 14.
Applicant is seeking to register the mark MALLORY
VALERIE BLAIR for jewelry, plastic necklaces, plastic
bracelets, and plastic rings. Opposers have registered the
mark BLAIR for jewelry.26 In addition the parties have
stipulated that opposers sell costume jewelry.27 The goods
of the parties are in part identical and applicant’s plastic
bracelets, necklaces and rings are otherwise related to
opposer’s jewelry.

26 Registration No. 2008690, issued October 15, 1996; Sections 8
and 15 affidavits accepted and acknowledged; renewed.
27 Stipulation of facts filed by opposers, ¶27.
Opposition Nos. 91166414 and 91171088
18
2. Class 16.
Applicant is seeking to register the mark MALLORY
VALERIE BLAIR for a series of fictional books for children,
stationery, note pads, paper goods, namely, art paper, craft
paper and drawing paper, and stickers. Opposers’ BLAIR
retail stores sell books, office items, gift wrap, and craft
items.28 In addition, opposers have registered the mark
BLAIR for “mail order and retail store services in the field
of giftwares.”29 “Giftware” is defined as “wares or goods
suitable for gifts,” and therefore applicant’s products in
Class 16 falls within the definition of giftware.30
However, the books, office items, gift wrap, and craft items
that opposers sell are third-party merchandise.31 In this
regard, opposers argue that “the services of selling a
product is closely related to the product itself.”32 In
other words, opposers contend that because they sell books,
office items, gift wrap and craft items, their mail order

28 Stipulation of facts filed by opposers, ¶27.
29 Registration No. 2134847, issued February 3, 1998, Sections 8
and 15 affidavits accepted and acknowledged. Subsequent to the
close of their testimony period, opposers renewed the
registration. In case there is any question regarding opposers’
priority with respect to the goods in Class 16, opposers’ Exhibit
97 establishes their sales of books, office items, gift wrap and
craft items as early as 2002. Applicant filed its application on
August 21, 2003.
30 Webster’s Third New International Dictionary of the English
Language (Unabridged), p. 956 (1993). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
31 Stipulation of facts filed by opposers, Exhibit 97.
32 Opposers’ Brief, p. 29.
Opposition Nos. 91166414 and 91171088
19
and retail store services are related to applicant’s series
of fictional books, stationery, note pads, paper goods,
namely, art paper, craft paper and drawing paper, and
stickers.
Retail store and mail order services and the goods that
may be sold through those services are related goods and
services for the purpose of determining likelihood of
confusion. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,
6 USPQ2d 1025, 1026 (Fed. Cir. 1983); In re Thomas, 79
USPQ2d 1021, 1023 (TTAB 2006); Steelcase, Inc. v. Steelcare,
Inc., 219 USPQ 433, 435. (TTAB 1983). Consumers are apt to
assume that a well-known retail store and mail order house
bearing the same or a confusingly similar name as applied to
the products sold therein emanate from a single source.
However, the mere fact that an applicant's goods are of a
type sold in opposers’ outlet is, in itself, insufficient to
support a holding of likelihood of confusion if we
ultimately find that the marks are dissimilar.
3. Class 18.
Applicant is seeking to register the mark MALLORY
VALERIE BLAIR for purses. Opposers sell purses through
their BLAIR retail store services and mail order services.33

33 Stipulation of facts filed by opposers, ¶¶7, 11, 16, 22, and
47.
Opposition Nos. 91166414 and 91171088
20
Because opposers do not have a registration for purses
or the retail sale of purses, they must rely on their common
law use of the BLAIR mark to prove priority. In this
regard, the excerpts from opposers catalogs, bearing the
mark BLAIR, from 2000-200334 prove that opposers were
offering to sell purses prior to the filing date of
applicant’s application (August 21, 2003).
Opposers argue that because they place the BLAIR mark
on every box and package they ship, opposers make trademark
use, as well as service mark use of BLAIR in connection with
purses. We do not agree. Opposers’ exhibits show that
opposers sell the purses of other manufacturers (e.g., Easy
Street and 220 Hickory). Accordingly, consumers are not
going to perceive opposers as the source of the product
bearing third-party trademarks because the products are
placed in a shipping box or package displaying the BLAIR
mark after purchase. Consumers will, however, perceive
opposers as the source of the retail store or mail order
services. In other words, consumers will view the purse as
one bought from BLAIR, but not a BLAIR brand purse. See In
re The Pennsylvania Fashion Factory, Inc., 588 F.2d 1343,
200 USPQ 140,142 (CCPA 1978), aff’g 198 USPQ 568 (TTAB 1978)
(“the mere fact that appellant’s goods are placed in bags
(bearing the words sought to be registered) during a

34 Stipulation of facts filed opposers, Exhibits 105-108.
Opposition Nos. 91166414 and 91171088
21
particular phase of the transportation process does not,
ipso facto, establish trademark usage of those words”).
Nevertheless, as indicated above, for purposes of
determining likelihood of confusion, consumers are apt to
believe that there is some sort of association or
affiliation between a well-known retail store and mail order
house bearing the same or a confusingly similar name as
applied to the products sold therein.
4. Class 25.
Applicant is seeking to register the mark MALLORY
VALERIE BLAIR for children’s clothing, namely, t-shirts,
dresses, pajamas, underwear, socks, children's halloween
costumes, fabric headbands, headbands, and bandanas. The
parties have stipulated that opposers’ sell children’s
clothes35 and that “[a]dults routinely shop for and purchase
clothing for children from the same sources and stores that
sell clothing for adults.36 In addition, opposers have
registered the following marks:
a. JOHN BLAIR for men’s and boys’ outer shirts;37

b. JOHN BLAIR for men’s and boys’ outer shirts,
sweaters, sport jackets, casual jackets and
blazers;38

35 Stipulation of facts filed by opposers, ¶27.
36 Stipulation of facts filed by opposers, ¶47.
37 Registration No. 0790047, issued May 25, 1965; Sections 8 and
15 affidavits accepted and acknowledged; second renewal.
38 Registration No. 0910968, issued April 6, 1971; Sections 8 and
15 affidavits accepted and acknowledged; second renewal.
Opposition Nos. 91166414 and 91171088
22
c. BLAIR for mail order services in the field of
men’s and women’s apparel;39

d. BLAIR for retail store services in the field of
men’s and women’s apparel;40

e. BLAIR BOUTIQUE for women’s apparel, namely,
jackets, skirts, pants, blouses and tops;41 and,

f. BLAIR for mail order services in the field of
apparel.42

In view of the foregoing, we find that the parties use
their marks to identify identical items of clothing.
5. Class 26.
Applicant is seeking to register its mark MALLORY
VALERIE BLAIR for hair accessories, namely, twisters, claw
clips, snap clips, hair bands, plastic barrettes, and hair
bows. Opposers sell hair accessory kits comprising
barrettes and bobby pins.43 Opposers assert that hair
accessories may be characterized as jewelry, and therefore
we can rely on opposers’ registration for the mark BLAIR for
jewelry to establish its priority.44

39 Registration No. 1563972, issued October 31, 1989; Sections 8
and 15 affidavits accepted and acknowledged.
40 Registration No. 1624256, issued November 20, 1990; Sections 8
and 15 accepted and acknowledged; renewed.
41 Registration No. 1626066, issued December 4, 1990; Sections 8
and 15 affidavits accepted and acknowledged; renewed.
42 Registration No. 2061091, issued May 13, 1997; Sections 8 and
15 affidavits accepted and acknowledged; renewed.
43 Stipulation of facts filed by opposers, Exhibit 63 (excerpts
from opposers website dated February 21, 2007).
44 See footnote 26. As explained more fully below, we agree with
opposers to the extent that applicant’s hair accessories and
opposers’ jewelry may be related products, but because they are
in different international classes, we will not consider them to
be identical. See In re RSI Systems, LLC, ___ USPQ2d ___ (TTAB
September 29, 2008).
Opposition Nos. 91166414 and 91171088
23
To support its contention that hair accessories may be
characterized as jewelry, opposers reference excerpts from
the Amazon.com website that offers the sale of gold and
sterling silver hair combs, crystal hair clips and ponytail
holders, onyx barrettes, and topaz hair clips.45 These
products were identified as jewelry by Amazon.com even
though they performed the same function as hair accessories.
In addition, “jewelry” is defined as “ornamental pieces
(as rings, necklaces, bracelets) made of materials that may
or may not be precious (gold, silver, glass, plastic) often
set with genuine or imitation gems and worn for personal for
personal adornment.”46 Applicant’s description of goods
comprising hair accessories would include items that are
very similar to items of jewelry that are worn in a person’s
hair for personal adornment. Accordingly, we find that
applicant’s hair accessories and opposers’ jewelry are
related and that opposers’ may rely on their jewelry
registration to establish their priority.
6. Class 28.
Applicant is seeking to register its mark for dolls,
stuffed dolls, rubber dolls, rag dolls, plastic dolls, paper

45 Stipulation of facts filed by opposers, Exhibit 113. Opposers
failed to include Exhibit 114, excerpts from the Alibaba.com
website purporting to show hair accessories sold as jewelry
items.
46 Webster’s Third New International Dictionary of the English
Language(Unabridged), p. 1215 (1993).
Opposition Nos. 91166414 and 91171088
24
dolls, plush toys, doll clothing and doll accessories sold
as a unit therewith and puzzles. The parties have
stipulated that opposers sell dolls through their retail
store and mail order services47 since at least as early as
2002.48 As indicated above, consumers are apt to believe
that there is some sort of association or affiliation
between a well-known retail store and mail order house
bearing the same or a confusingly similar name as applied to
the products sold therein.
C. The similarity or dissimilarity of likely-to-continue
trade channels.

Because there are no limitations as to channels of
trade or classes of purchasers in either the application or
the registrations, it is presumed that the registrations and
the application encompass all of the goods and services of
the type described in the description of goods and services,
that the goods and services so identified move in all
channels of trade normal for those goods and services, and
that the products are available to all classes of purchasers
for the listed products and services. See In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Even the products
of opposers that are not directly listed in federal
registrations would be sold in retail stores and through

47 Stipulation of facts filed by opposers, ¶7
48 Stipulation of facts filed by opposers, ¶97. See also Exhibits
98 and 99 (advertisements for dolls and toys from 1997 and 1998).
Opposition Nos. 91166414 and 91171088
25
mail order services available to applicant’s potential
customers.
D. The similarity of the marks in their entireties in
terms of appearance, sound, meaning, and connotation.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Opposition Nos. 91166414 and 91171088
26
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Finally, we must keep in mind that when, as here, the
opposers’ BLAIR trademark is famous for retail and mail
order services, it is entitled to a broad scope of
protection or exclusivity of use.
When an opposer’s trademark is a strong
famous mark, it can never be “of little
consequence”. The fame of a trademark
may affect the likelihood purchasers
will be confused inasmuch as less care
may be taken in purchasing a product
under a famous name.

Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748
F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984).
In terms of appearance and sound, we find that the
marks are similar to the extent that the marks of the
parties share the surname BLAIR. The given name MALLORY
VALERIE modifies the name BLAIR and reinforces the
impression that BLAIR is a surname. Thus, in accord with
considerable case law, the given name MALLORY VALERIE does
not alter the commercial impression of the mark. In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1946 (Fed. Cir. 2004) (JOSE GASPAR GOLD is similar to
GASPAR’S ALE); Nina Ricci, S.A.R.L. v. E.T.F. Enterprises,
Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989)
(VITTORIO RICCI is similar to NINA RICCI); Somerset
Distilling Inc. v. Speymelt Whiskey Distributors Ltd., 14
Opposition Nos. 91166414 and 91171088
27
UPSQ2d 1539, 1542 (TTAB 1989) (JAS. GORDON and design is
similar is GORDON’S); In re Leslie Hennessy, Jr., 226 USPQ
274, 276 (TTAB 1985) (LESLIE HENNESSY SELECTION is similar
to HENNESSY); Seligman & Latz, Inc. v. Merit Mercantile
Corporation, 222 USPQ 720, 722 (TTAB 1984) (ARPEL is similar
to ADRIEN ARPEL); Monocraft, Inc. v. Leading Jewelers Guild,
173 USPQ 506, 508 (TTAB 1972) (PAUL MONET and design is
similar to MONET).
In light of the fame of opposers’ BLAIR mark,
applicant’s use of the full name MALLORY VALERIE BLAIR may
be perceived as a more specific identification of an
individual named “Blair.” Therefore, the addition of the
given name MALLORY VALERIE is not sufficient to distinguish
the marks.
E. Balancing the factors.
As indicated above, when the opposers’ BLAIR trademark
is strong and famous, it can never be of “little
consequence”. Specialty Brands v. Coffee Bean Distributors,
223 USPQ at 1284 (“The fame of a trademark may affect the
likelihood purchasers will be confused inasmuch as less care
may be taken in purchasing a product under a famous name”).
Therefore, famous trademarks are entitled to a broad scope
of protection or exclusivity of use. In view of the facts
that the marks of the parties are similar, that applicant’s
goods and opposers’ goods and services are related, and that
Opposition Nos. 91166414 and 91171088
28
we must presume that the goods and services of the parties
move in similar channels of trade and are offered to the
same consumers, opposers have shown that there is a
likelihood of confusion. In reaching this decision, we note
that there is “no excuse for even approaching the well-known
trademark of a competitor . . . and that all doubt as to
whether confusion, mistake, or deception is likely is to be
resolved against the newcomer, especially where the
established mark is one which is famous.” Nina Ricci
S.A.R.L. v. E.T.F. Enterprises Inc., 12 USPQ2d at 1904,
quoting Planter’s Nut & Chocolate Co. v. Crown Nut Co.,
Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962).
Because we have found that there is a likelihood of
confusion, we do not reach the issue of dilution.
Decision: The opposition is sustained and
registration to applicant is refused.