Hachette Filipacchi Pressev.Ev International, LLC

Trademark Trial and Appeal Board

Sep 5, 2008

No. 91174433 (T.T.A.B. Sep. 5, 2008)

Mailed: September 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Hachette Filipacchi Presse
v.
Ev International, LLC
_____

Opposition No. 91174433
to application Serial No. 78545895
filed on January 11, 2005
_____

Perla M. Kuhn of Hughes Hubbard & Reed LLP for Hachette
Filipacchi Presse.

Karla C. Shippey of Law offices of Karla Shippey for Ev
International, LLC.
______

Before Kuhlke, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Ev International, LLC, seeks registration of
the mark shown below for goods identified in the application
as “clothing, namely, bras, underwear, thong underwear,
nightgowns, pajamas, camisoles, robes, maternity support
underwear, maternity support belts, breast-feeding bras,
breast-feeding night gowns, maternity swimwear, maternity
pantyhose, maternity camisoles, maternity pajamas, maternity
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91174433
2
robes, and maternity thong underwear” in International Class
25.1 The word LINGERIE is disclaimed and the application
includes the translation statement that “the foreign
wording, CHEZ ELLE in the mark translates into English as
‘House of the Women.’”

Opposer, Hachette Filipacchi Presse, opposed
registration of applicant’s mark on the grounds that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used and registered ELLE and ELLE
formative marks for “including, among others, goods and
services in the magazine, apparel, footwear, jewelry,
cosmetics, food, home décor, publishing, news, advertising
and multimedia fields” as to be likely to cause confusion,
to cause mistake, or to deceive under Trademark Act Section
2(d), 15 U.S.C. §1052(d).2

1 Serial No. 78545895, filed January 11, 2005. The application
is based on an allegation of a bona fide intention to use the
mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

2 Opposer’s assertion of dilution under Section 43(c) in the
pleading is deficient inasmuch as opposer did not plead that its
mark became famous prior to the filing date of the involved
application. Polaris Industries Inc. v. DC Comics, 59 USPQ2d
1798 (TTAB 2000). In any event, in its brief opposer stated that
it is not pursuing the dilution claim.
Opposition No. 91174433
3
Applicant filed an answer by which it admitted the
allegations in paragraphs 4 and 5 of the notice of
opposition concerning the status and title of opposer’s
pleaded registrations and otherwise denied the salient
allegations. Applicant’s answer also included “Affirmative
Defenses” that are more in the nature of amplifications of
applicant’s general defense that there is no likelihood of
confusion.
The evidence of record consists of the pleadings
herein; the file of the opposed application; and the “Joint
Stipulated Facts and Submissions of Evidence.” The parties
also filed main briefs and opposer filed a reply brief.
We begin by noting the efficient and cooperative manner
in which the parties and their attorneys have litigated this
case, resolving discovery issues without the need for Board
interference and presenting the case on stipulated facts.
PRIORITY/STANDING
Priority is not in dispute. With respect to the
opposer’s pleaded registrations, as noted above applicant
admitted “the existence of the registrations.” In addition,
the registrations are stipulated into the record by the
joint stipulation and the attached printouts from the
Trademark Applications and Registrations Retrieval (TARR)
database. Opposer’s registrations as well as the stipulated
facts regarding both the registrations and opposer’s common
Opposition No. 91174433
4
law use, establish opposer’s priority of use of the ELLE and
ELLE formative marks for all of the various goods and
services listed in the registrations and the stipulations.
In view thereof, opposer has also established its standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000).
Accordingly, we turn to the question of likelihood of
confusion.
LIKELIHOOD OF CONFUSION
We begin by noting that while opposer has made sixteen
registrations of record, for our analysis of the other du
Pont factors we focus our attention on the following most
relevant registrations:
Reg. No. 758137 for the mark ELLE (in typed form)
for a “magazine,” renewed;

Reg. No. 862001 for the mark ELLE (in typed form)
for “dresses, cloaks, capes, skirts, jackets,
suits, two-piece costumes or suits, coats,
sweaters, bathing suits, jodphurs, knickers, ties,
scarves, square shawls, hats, caps, gloves, and
slippers,” renewed; and

Reg. No. 2242315 for the mark ELLE (in typed form)
for, inter alia, “entertainment services in the
nature of a cable television variety show
featuring fashion and beauty,” Sections 8 and 15
affidavits accepted and acknowledged.

Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
Opposition No. 91174433
5
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Another key factor, is the fame of the prior mark. We
begin with this factor, because fame “plays a ‘dominant’
role in the process of balancing the du Pont factors.”
Recot Inc. v. Benton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000). See also, Palm Bay Imports, Inc. v. Veuve
Clicquot, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir.
2005). In addition, fame “varies along a spectrum from very
strong to very weak.” In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059 (Fed. Cir. 2003).
It is stipulated that the mark ELLE is used in
connection with “the world-famous women’s magazine.” Stip.
¶3. It is further stipulated that the French language
magazine has been distributed in the United States since
1945 and the United States edition was first published in
1985, Stip. ¶4; ELLE magazine is read by over four million
readers each month, id.; 24 % of women aged 18 to 49 have
read one or more issues of ELLE in the past six months, id.;
ELLE’s online magazine receives 26 million page views per
Opposition No. 91174433
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month and 600,000 unique user’s per month, id.; since 1965
opposer has sold women’s clothing, Stip. ¶5; it advertises
its clothing line in various publications, Stip. ¶7; and
opposer uses its ELLE mark in connection with “the fashion
and clothing featured in the popular television series
Project Runway,” where one of the judges on the show is the
fashion director for ELLE magazine and approximately 5.6
million viewers watched the third season’s finale, Stip. ¶9.
As shown through the stipulated facts and evidence,
opposer has extensive sales and readership in connection
with the magazine under the ELLE mark. In addition, the
ELLE mark is broadly connected generally with the fashion
industry, in particular for women’s clothing, as evidenced
by its high profile position in sponsoring the extremely
popular cable show Project Runway. Moreover, the mark is
used with a wide variety of goods and services, including
magazines, umbrellas, luggage, hand bags, swimwear, dresses,
watches, promoting the sale of women’s apparel by others by
staging style shows and by preparation of various types of
advertising, technical assistance services for fashion shows
and fashion wear boutiques, and entertainment services in
the nature of a cable television variety show featuring
fashion and beauty. On this record, we find that opposer’s
ELLE mark is famous in connection with its magazine and
within the fashion industry generally, and is entitled to
Opposition No. 91174433
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broad protection. Bose Corp. v. QSC Audio Products, Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Applicant argues that:
The mere fact that Opposer’s mark has a strong
reputation in the field of women’s fashion and
designer clothing and magazines does not
automatically mean that there would be likelihood
of confusion with Applicant’s mark used in
connection with the limited field of maternity
lingerie.

Br. p. 20.

The cases cited by applicant do not support its
position. In Hard Rock Cafe Licensing Corp. v. Elsea, 48
USPQ2d 1400 (TTAB 1998), the Board found there was
insufficient evidence upon which to support a finding of
fame. Here, applicant has conceded that opposer “has
submitted significant evidence of the strength of its mark.”
Br. p. 20. In the ex parte decision In re Comexa Ltda., 60
USPQ2d 1118 (TTAB 2001), the Board found a likelihood of
confusion. Finally, in the ex parte decision In re General
Motors Corp., 23 USPQ2d 1465, 1471 (TTAB 1992), the Board
found no confusion based on an evidentiary showing that the
term Grand Prix was highly suggestive in the field of
automobiles and auto parts, and that given 30 years of
coexistence there was no incidence of actual confusion
despite the fame of applicant’s mark. Here, there is no
evidence that ELLE is diluted by third-party use nor has
there been an opportunity for actual confusion inasmuch as
Opposition No. 91174433
8
there has been little coexistence in the United States
marketplace. Stip. ¶¶32-33.
Applicant further argues that the term ELLE is weak in
connection with opposer’s goods and services because it
translates to “she” in English and thus “actually labels the
market for Opposer’s goods and would be considered a
descriptive mark without sufficient evidence of acquired
distinctiveness.” Br. p. 15. First, other than the
translation “she,” there is nothing in the record to support
applicant’s argument that ELLE is weak, such as, for
example, third-party use. See In re Broadway Chicken, Inc.,
38 USPQ2d 1559, 1565-1566 (TTAB 1996). Second, there is no
counterclaim challenging the registrations and we must
accord them all the presumptions afforded by Section 7(b).
Thus, to the extent applicant argues that ELLE is
descriptive, in the absence of a counterclaim, it is an
improper collateral attack. Finally, in view of our finding
of fame, even considering the term ELLE to be suggestive
rather than completely arbitrary when used in connection
with opposer’s goods and services, it is a strong mark.
We turn next to a consideration of the similarities
between opposer’s and applicant’s goods and services,
channels of trade and class of purchasers. We must make our
determinations under these factors based on the goods and
services as they are recited in the application and
Opposition No. 91174433
9
registrations, respectively. See In re Elbaum, 211 USPQ 636
(TTAB 1981).
As a preliminary matter, in the stipulated facts,
paragraph 30 lists the goods identified in the application.
However, paragraph 31 provides as follows:
31. Applicant has sold or intends to sell women’s
maternity underwear, namely maternity bras,
maternity support underwear, maternity support
belts, breast-feeding bras, breast-feeding night
gowns, maternity swimwear, maternity pantyhose,
maternity camisoles, maternity pajamas, and
maternity robes. Applicant has agreed to modify
its specification of goods to limit the coverage
to maternity goods only and this opposition
proceeding will continue against such modified
identification of goods.

However, opposer continues to refer to the applicant’s
identification of goods as listed in the application which
includes items that are not restricted to maternity wear.
In view of the stipulation, we make our determination based
on the maternity wear alone. We further note that
considering only applicant’s maternity wear does not change
our analysis, inasmuch as opposer’s registrations do not
exclude this subset of clothing and we must presume they
encompass these goods.
Applicant argues that its goods are distinguished from
opposer’s goods because applicant’s “focus is on maternity
lingerie and all goods in its amended specification are for
maternity use” and “opposer has been in business since 1945
but has not in more than 50 years extended its business to
Opposition No. 91174433
10
cover maternity underwear or lingerie. Its registered marks
do not constitute constructive notice of exclusive rights in
this field.” Br. p. 17.
While applicant is correct that “if a cited
registration contains a limitation as to the nature, type,
channels of trade, or class of purchasers, an applicant’s
narrow identification of unrelated goods can avoid
likelihood of confusion,” there is no such limitation in
opposer’s registration. The designation “bathing suits” in
Reg. No. 862001 is not limited and, therefore, encompasses
all types of bathing suits including maternity bathing
suits. Thus, applicant’s identified “maternity swimwear” is
encompassed by opposer’s “bathing suits” in Reg. No. 862001
and, as such, are legally identical.
Moreover, even taking into account the differences in
maternity versus nonmaternity clothing items, as opposer
argues:
There is no limitation in the registration
excluding maternity wear from these items of
clothing. Pregnant women wear dresses, skirts,
bathing suits, and slippers, as well as lingerie
and underwear. Further, as women go through the
different stages of life, including before,
during, and after pregnancy, they will purchase
different articles and lines of clothing under the
same brand. These consumers, seeing Hachette’s
ELLE mark along with other terms on Applicant’s
women’s clothing, will think that the clothing
originates from the same source, namely Hachette.
Moreover, the fact that Hachette, which is well
known as a magazine that contains features and
articles on clothing, also licenses the sale of
clothing and other items of apparel (jewelry,
Opposition No. 91174433
11
footwear, and spectacles) under the ELLE Marks,
reinforces to consumers the relatedness of the
goods and the likelihood that clothing bearing a
mark containing the term “elle” originates from
Hachette.

Reply Br. pp. 9-10.

As to the magazine in Reg. No. 758137 and the
entertainment services in the fashion field in Reg. No.
2242315, we find that these goods and services are related
to applicant’s maternity clothing to the extent that
consumers have already seen opposer expand its use of the
famous mark ELLE from the magazine and cable show to its own
line of clothing.
With regard to the channels of trade and class of
purchasers, inasmuch as there are no restrictions in the
registrations and the application, we must presume
that applicant’s goods would be sold in all appropriate
channels of trade, including those in which opposer’s goods
are sold and to the same relevant purchasers. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1987). These channels of trade for the clothing items
would include retail clothing stores. Applicant’s argument
that it only sells its clothing through a specific website
is unavailing inasmuch as we must make our determination on
the unrestricted goods as identified in the application.
Opposition No. 91174433
12
In view of the above, the du Pont factors of the
similarity of the goods, channels of trade and class of
purchasers favor a finding of likelihood of confusion.
As to the level of care in the purchasing decision,
clothing generally is an ordinary consumer item which would
not be purchased with the same level of care as, for
example, computer equipment. Potential purchasers are from
the general public and it is also the case that clothing
includes a wide range of products and pricing. Applicant’s
goods range in price from $9.99 to $38.99 retail. Stip.
¶32. Opposers pricing is also moderate.3 Although it may
be that consumers would exercise some higher level of care
with regard to at least maternity clothing, the parties’
goods are not priced so high to find that this factor would
offset the other du Pont factors, in particular with regard
to clothing in the lower price range of applicant’s goods.
In addition, given that these goods are ordinary consumer
items and potential purchasers would not necessarily know
the price range of products of the parties, they are not
likely to assume different sources for the goods based on a
perceived price difference. See In re Decombe, 9 USPQ2d
1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983). Therefore, to the extent there is some

3 Although it is not clear why retail prices are confidential,
opposer’s prices were submitted under seal.

Opposition No. 91174433
13
discretion in purchasing applicant’s maternity wear, we find
it is not sufficient to offset the other du Pont factors in
this case.
We turn then to the first du Pont factor, i.e., whether
applicant’s mark CHEZ ELLE LINGERIE and design and opposer’s
mark ELLE are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. We make this determination in
accordance with the following principles. The test, under
this du Pont factor, 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 impressions that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the recollection
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
As discussed above, opposer’s ELLE mark is famous.
Thus, to the extent the mark is suggestive of goods and
services directed towards women, in that ELLE translates to
“she,” opposer’s mark nonetheless is a very strong mark due
to its fame and entitled to broad protection.
Applicant’s mark incorporates the entirety of opposer’s
famous mark. The disclaimed term LINGERIE is the generic
Opposition No. 91174433
14
name of some of the identified goods. With regard to the
design of the woman, we first note that in general words
will dominate over a design element inasmuch as it is the
words by which consumers call for the goods. In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
Moreover, this design of a woman in either lingerie or a
bathing suit is suggestive of the goods.
The last element, CHEZ, is merely a preposition. CHEZ
is defined as, “prep. At, to, in (the house, family or
country of) ... je viens de chez ma mere I have come from my
mother’s.” See Cassell’s New French Dictionary (5th ed.
1951).4 As noted by opposer, “the addition of the pronoun
‘chez’ in Applicant’s Mark adds meaning to the mark –
namely, it conveys location – but it does not change the
meaning of the word ‘elle,’ which is still a female
pronoun.” Reply Br. 7. Thus, although the translation in
the application is “House of the Women,” “chez elle” could
also translate to “her house,” or, given the fame of the
ELLE mark in the fashion industry, could be perceived as
ELLE’S house or House of ELLE for those consumers who would
translate CHEZ. For those consumers who do not speak
French, “CHEZ ELLE” would have no meaning other than the

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Opposition No. 91174433
15
instantly recognizable ELLE mark when viewed in connection
with women’s clothing. In general, ELLE stands out in
applicant’s mark as the more memorable element. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
With regard to sound, applicant argues that in its mark
“the word ‘elle’ does not stand alone in pronunciation, but
is slurred into ‘chez’ so that the second syllable actually
becomes ‘zel.’ Thus, the first word of Applicant’s mark is
‘shayzel,” and “elle” is not said separately. Again, there
is no added emphasis on the word “elle”; it is does not
dominate the sound of the mark.” Br. p. 13. However,
“[t]here is no correct pronunciation of a trademark, and it
obviously is not possible for a trademark owner to control
how purchasers will vocalize its mark.” Centraz Industries
Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB
2006). Moreover, it is impossible to know how consumers who
do not speak French will pronounce “chez” and “elle.”
In view of the above, the marks as a whole are similar,
and even though there are some differences in appearance due
to the design component and additional wording in
applicant’s mark, these differences are not sufficient to
distinguish applicant’s mark from opposer’s mark, in
particular given the fame of opposer’s mark; overall they
convey similar commercial impressions. Thus, we find that
Opposition No. 91174433
16
the similarities in the parties’ marks outweigh the
differences and the similarity of the marks weighs in favor
of a finding of likelihood of confusion.
Finally, opposer argues that “consumers are accustomed
to seeing marks containing the term ‘elle’ as well as an
additional term, such as Hachette’s marks ELU PAR ELLE, ELLE
ACCESSORIES, and ELLE GIRL, for clothing and related goods,
and understanding those marks as conveying that the goods
originate from Hachette. The additional terms in
Applicant’s Mark do not function differently.” Reply Br.
pp. 7-8. However, opposer did not plead a family of marks.
Moreover, although opposer submitted its registrations,
there is no evidence of use of these specific ELLE formative
marks to support a finding that “the pattern of usage of the
common element is sufficient to be indicative of the origin
of the family.” The Black & Decker Corp. v. Emerson
Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) citing J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991).
Considering the respective marks in their entireties,
we conclude that the evidence of record as it pertains to
the relevant du Pont factors supports a finding of
likelihood of confusion as to opposer’s ELLE mark, and that
registration of applicant’s mark, CHEZ ELLE LINGERIE and
design, therefore, is barred under Trademark Act Section
Opposition No. 91174433
17
2(d). To the extent we have any doubt, we resolve it, as we
must, in favor of opposer, the prior user and registrant.
Hewlett-Packard Co. v Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1003 (Fed. Cir. 2002) (“This court resolves
doubts about the likelihood of confusion against the
newcomer because the newcomer has the opportunity and
obligation to avoid confusion with existing marks”).
Decision: The opposition is sustained.