Vanity Fair, Inc.

Trademark Trial and Appeal Board

Dec 17, 2007

No. 78515219 (T.T.A.B. Dec. 17, 2007)

Oral Hearing: Mailed:
June 14, 2007 December 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vanity Fair, Inc.
________

Serial No. 78515219
_______

Edward M. Prince of Alston & Bird LLP, for Vanity Fair, Inc.

Richard A. Straser, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Walters, Walsh, and Wellington, Administrative Trademark
Judges.

Opinion by Wellington, Administrative Trademark Judge:

Vanity Fair, Inc. has filed an application to register the mark
FRENCH & FLIRTY (in standard character form) on the Principal
Register for “lingerie, sleepwear and hosiery” in International Class
25.1 In the application, applicant claimed ownership of a prior

1 Application Serial No. 78515219, filed November 11, 2004, under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona fide intent
to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78515219
2
registration for the mark FRENCH FLIRTS for “brassieres, panties,
slips and camisoles.”2
The trademark examining attorney ultimately refused registration
of applicant's mark on the grounds that it is deceptive under
Trademark Act Section 2(a), 15 U.S.C. § 1052(a), and that it is
primarily geographically deceptively misdescriptive under Trademark
Act Section 2(e)(3), 15 U.S.C. § 1052(e)(3).3 A request for
reconsideration of the final refusal was denied and this appeal was
filed.
Applicant and the trademark examining attorney have filed main
appeal briefs. An oral hearing was held on June 14, 2007. After
careful consideration of the evidence of record and the arguments put
forth, we affirm the Section 2(e)(3) refusal to register.
Initially we note that, because applicant's mark involves an

2 Registration No. 1433981 issued March 24, 1987, with a disclaimer of the
term FRENCH. Sections 8 and 15 affidavits acknowledged and accepted. We do
not hesitate to state that while uniform treatment under the Trademark Act
is an administrative goal, our decision herein is based on the record before
us, and each case must be decided on its own merits. See, e.g., In re Best
Software Inc., 58 USPQ2d 1314 (TTAB 2001). Neither the current examining
attorney nor the Board is bound by the prior action of the examining
attorney who examined applicant's earlier-filed application which resulted
in the registration of record. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001).
3 The application’s prosecution history has been somewhat puzzling to say
the least. The application was approved for publication on three occasions
and, each time, said approval was withdrawn. At one point, the examining
attorney required a disclaimer of the term FRENCH but did not substantively
refuse registration of the mark. Applicant provided the disclaimer, but the
examining attorney then issued an Office Action refusing registration on
grounds cited in this order and stated that the disclaimer “should be
cancelled.”
Serial No. 78515219
3
allegedly deceptive geographic designation, the pertinent ground for
refusal in this case is that the mark is primarily geographically
deceptively misdescriptive under Section 2(e)(3), and not that the
mark is deceptive under Section 2(a). See In re California
Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In
re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007).
The elements of a Section 2(e)(3) refusal are as follows: (1)
the primary significance of the mark is a generally known geographic
location; (2) the consuming public is likely to believe the place
identified by the mark indicates the origin of the goods bearing the
mark (i.e., that a goods-place association exists), when in fact the
goods do not come from that place; and (3) the misrepresentation
would be a material factor in the consumer's decision to purchase the
goods. California Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at
1858.
Turning to the first factor, we find that the most commonly
understood connotation of the word “French” is geographic. Indeed,
the definitions of record offered by both applicant and the examining
attorney provide a primary meaning of the term “French,” as an
adjective, as: “of, relating to, or characteristic of France, its
people, or their language.”4 Certainly, the country of France is well

4 Webster’s New Collegiate Dictionary (no publication date or edition
information provided), cited by the examining attorney in the September 30,
Serial No. 78515219
4
known and the term does not refer to an obscure or remote geographic
place. And, it is this definition that the examining attorney relies
on in arguing that the primary significance of the mark FRENCH &
FLIRTY is as a generally known geographic location.
Applicant essentially argues that, depending on the context, the
word “French” may have a variety of meanings, including serving as a
euphemism for “sexy”; that “obviously, ‘sexy’ is the euphemism in
this case”; that “the primary significance of FRENCH & FLIRTY is a
reference to stylish, sexy or sassy”; and therefore, the mark has “no
geographic significance, much less a geographically deceptive
significance.” (Applicant’s Brief, p. 8-10).
In support of its contention that the term “French” is a
euphemism for “sexy,” applicant submitted the following entry from
the Wikipedia internet information website:5

2006 Office Action. The primary definition of the term “French” submitted
by applicant is as follows: “of or pertaining to the country of France in
Western Europe, its Romance language, or its people“ (from The New Shorter
Oxford English Dictionary on Historical Principles (Clarendon Press,
Oxford)).
5 In a recent Board decision involving internet evidence, specifically
Wikipedia entries, we held that such evidence will be considered “so long as
the non-offering party has an opportunity to rebut that evidence by
submitting other evidence that may call into question the accuracy of the
particular Wikipedia information.” See In re IP Carrier Consulting Group, 84
USPQ2d 1028 (TTAB 2007). Here, applicant submitted the Wikipedia entry with
its request for reconsideration thus giving the examining attorney an
opportunity to rebut or question the accuracy of the entry. We have
therefore given consideration to the Wikipedia entry, but with “the
recognition of the limitations inherent with Wikipedia (e.g., that anyone
can edit it and submit intentionally false or erroneous information).” Id.
at 1032.
Serial No. 78515219
5

[Exhibit A, Request for Reconsideration]
Applicant also submitted a secondary definition entry of the
term “French” in The New Oxford English Dictionary on Historical
Principles (Clarendon Press, Oxford).6 This definition entry
provides: “2. Having a quality or qualities attributed to French
things, esp. (a) refinement, (b) impropriety.”
Applicant otherwise puts forth several reasons why it believes
“French” connotes “sexy” in the context of its mark. First,
applicant makes reference to the examining attorney’s internet
evidence displaying advertisements for “French lingerie” and argues
that the “sexy nature of the goods was emphasized by picture and
written description.” (Applicant’s Brief, p. 9). Applicant also
submitted a copy of a website printout of an advertisement for
“French Lingerie Lip Balm” with “all natural ingredients in three
sexy flavors.” (Request for Reconsideration, Exhibit C). Third,
applicant argues the additional word in the mark, “flirty,” has no
Serial No. 78515219
6
geographic significance and “it only makes sense when one attributes
[the “sexy”] meaning to the word “French.” (Applicant’s Brief, p.
10).
Viewing the mark as a whole, as we must, and in connection with
the identified goods, we are not persuaded that purchasers of
lingerie would perceive the mark FRENCH & FLIRTY as having any
meaning other than geographic significance.7 While we acknowledge
that the other word in the mark, “flirty,” has no geographic
significance and may, itself, suggest sexually flirtatious behavior,
the addition of this word does not negate the geographic significance
of FRENCH or of applicant’s mark as a whole. Instead, we agree with
the examining attorney that the overall commercial impression created
by the mark FRENCH & FLIRTY is more along the lines of “French origin

6 No information was provided as to the date of publication of the
dictionary or the edition referenced.
7 Most, if not all, of the evidence and arguments presented by the examining
attorney pertain to lingerie and the other goods identified in the
application, i.e., sleepwear and hosiery, are essentially ignored. Indeed,
applicant makes this point in its brief. Therefore, we address only the
lingerie goods in our analysis of whether the mark is primarily
geographically deceptively misdescriptive; we are not making any
determination with respect to sleepwear and hosiery. Nonetheless, we note
that is unnecessary for the examining attorney to establish that the mark
should be refused registration based on all of the identified goods in the
application. So long as the refusal of registration under Section 2(e)(3)
is proper as to lingerie, the application may be refused registration as to
sleepwear and hosiery because they are in the same class. Cf. In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975)(if mark is merely
descriptive of any of the goods in a particular class, refusal as to all of
the identified goods in that class is proper). Accord, In re Quik-Print
Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980); In re Harry N.
Abrams, Inc., 223 USPQ 832 (TTAB 1984).

Serial No. 78515219
7
and playful.”
The evidence of record demonstrates use of the word “French” in
a geographic manner in connection with lingerie. This is exemplified
in the following Nexis excerpts that were attached by the examining
attorney to his final Office Action8:
...Vanity Fair, Triumph and Lovable have jumped into the market
with considerable success. Textile manufacturer Gokaldas Images
has tied up with a French lingerie company to produce and market
Enamor, a brand exclusively for the Indian market. Nonetheless,
70 per cent of the lingerie...
[Financial Times Information, September 5, 2006]
-----------
...doubled to 3.6 mln sfr, from 1.4 mln, driven by a sharp
increase in sales following inclusion of French luxury lingerie
producer Aubade for the first time.
[AFX News Limited, July 27, 2006]
-----------
Kristine Cole, owner of Remembrance, a lingerie shop in Hanover,
N.H., said, "Lingerie Americas and the French brands have become
an important part of my business, which continues to provide
more than basics for my customers. Wacoal is...
[Gale Group, Inc., August 14, 2006]
-----------
A plan to shed 450 jobs at Dim, the French lingerie company,
without making any staff unemployed has the support of the CGT,
FO, CFDT, CFE-CGC and Unsa unions, Unsa ...
[Financial Times Information, August 1, 2006]

8 The bold lettering was supplied by the examining attorney in his
submission of evidence for purposes of highlighting key words.
Serial No. 78515219
8
-----------
...US$53.2 million). Groupe Chantelle SA was set up in 1996 and
operates a network of 64 lingerie stores across France. Groupe
Chantelle SA is renowned for the Chantelle, Passionata and
Darjeeling brands. In 2005, Groupe Chantelle SA generated...
[Mergerstat Review, July 18, 2006]

Applicant, on the other hand, has not demonstrated any third
party use where we may find the word “French” being used as a
euphemism or otherwise synonymous with or connoting “sexy.”
Applicant’s reliance on the “French lingerie Lip Balm” advertisement
is misplaced because there is no indication that the term “French” is
being used in a non-geographic manner to create any sexual
suggestiveness of the lip balm.
We would also be remiss if we did not acknowledge that lingerie,
by definition9 and its very nature, may be considered as “sexy” or
“sexually enticing.” Thus, the fact that several of the Internet
lingerie advertisements submitted by the examining attorney are
sexually suggestive, as noted by applicant, appears to be normal for
such goods. We disagree with applicant to the extent that it argues
the sexually suggestive nature of advertisements somehow changes or
gives new meaning to the word “French.” All lingerie, whether it’s

9 Defined as “women's intimate apparel,” Merriam-Webster's Collegiate
Dictionary (Eleventh Edition). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Serial No. 78515219
9
Italian, American or French, may be considered sexually enticing.
Likewise, applicant’s argument that “French” is being used
euphemistically in the mark to connote “sexy” is not persuasive or
well supported. First, the references relied on by applicant
indicate that this connotation appears to be generally limited to
native speakers in the United Kingdom. The New Shorter Oxford
English Dictionary on Historical Principles, where applicant finds
the secondary dictionary definition of “impropriety,” is published in
the United Kingdom and we take judicial notice there is no similar
alternative definition entry found in two prominent American
dictionaries.10 And, as noted in the Wikipedia entry itself, the
euphemistic use of the term “French” to connote “sexy or dirty”
derives from a rivalry between the people of France and England.
In view thereof, we are not convinced that purchasers in the
United States, upon viewing the mark in connection with the goods
would perceive the word “French” in the manner suggested by
applicant. Instead, we find that the word FRENCH in applicant's mark

10 The Board takes judicial notice of references in The American Heritage
Dictionary of the English Language (Fourth Edition copyright 2000) and
Merriam-Webster's Collegiate Dictionary (Eleventh Edition). The former
provides the following definition:
ADJECTIVE: 1. Of, relating to, or characteristic of France or
its people or culture. 2. Of or relating to the
French language.
The latter provides:
Serial No. 78515219
10
would be directly and immediately perceived by purchasers in its
primary geographic sense, namely, “of, relating to, or characteristic
of France.”
Accordingly, the first element under Section 2(e)(3) has been
met and we find that the primary significance of the mark, FRENCH &
FLIRTY, is a reference to a generally known geographic location.
Again, even though the other element of the mark, “flirty,” has no
geographic significance, it does not detract from or obviate the
overall geographic connotation created by the word “French.”
The second element of the Section 2(e)(3) refusal requires a
showing that the consuming public is likely to believe that the place
identified by the mark indicates the origin of the goods bearing the
mark (i.e., that a goods-place association exists), when in fact the
goods do not come from that place.
The examining attorney has asserted on numerous occasions in
Office Actions and in his brief that applicant’s goods do not come
from France but instead emanate from Delaware. Applicant, a Delaware
corporation, has not denied this assertion and the issue is not
raised in applicant’s appeal brief. Therefore, the question for
determination under the second element of the Section 2(e)(3) refusal
in this case is whether consumers are likely to believe that France

ADJECTIVE: 1 : of, relating to, or characteristic of France, its
people, or their language 2 : of or relating to the
Serial No. 78515219
11
is the origin of applicant's goods. We find that the requisite
goods-place association has been established by the evidence of
record.
“In a case involving goods, the goods-place association often
requires little more than a showing that the consumer identifies the
place as a known source of the product.” In re Les Halles De Paris
J.V., 334 F.3d 1371, 1373-74, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003).
The evidence of record in this case clearly establishes that
consumers would identify France as a known source for at least some
of the goods identified in applicant's application, lingerie.
In addition to the Nexis article excerpts already identified
above, the examining attorney has provided an article entitled
“Shopper’s World: In Paris, Lace and Luxe” [dated January 21, 1990]
published in the New York Times. In this article, the writer
discusses several high-end boutiques in Paris selling lingerie and
other intimate apparel. The following are excerpts from the article:
For many women, French lingerie is the ultimate in beautiful
underwear. Feminine but rarely frilly, French lingerie differs
in style from Italian, which is more elaborate. French
lingerie, on the other hand, blurs the distinction between can-
can and muse, femme fatale and woman on a pedestal. Yet it is
actually quite understated, its style more dependent on superb
fabrics and workmanship than adornment. As Miss Cadolle is fond
of saying, “Good taste is enough.”

The lingerie departments at Au Printemps and Galeries Lafayette
offer enormous variety at all prices. At Galeries Lafayette,

overseas descendants of the French people.
Serial No. 78515219
12
you'll find beautiful paisley, polka-dot and floral silk bras,
bustiers and panties by Jeune Europe, a 16-year-old Lyons company
whose signature is bold patterns (bras for about $140, panties
about the same; bustiers from $250 to $700). There are ruby
velours bodysuits by Scandale, as well as matching bras and
panties with panels of red and black silk (most items under
$100). Au Printemps carries Pascale Madonna, known for full-cut
panties in spotted damask with buttons down the front (briefs
around $100, bras about $150).

Christian Dior lingerie can be found throughout Paris but it
isn't the same Dior underwear in American department stores. The
French product, for example, is predominantly silk, compared with
only 10 to 15 percent of the Dior lingerie produced for the
American market by Carole Hochman, a New York manufacturer, under
a licensing agreement. For the French Dior, you have to go to
Paris.
[Underlines, as emphasis, supplied]
The New York Times article also contains several comments from
purchasers or those involved in the industry testifying to the higher
quality of European lingerie and expensive nature of such goods.
The following article excerpt of record further establishes that
there are retail stores that feature expensive or luxury French
lingerie:
...fashion, accessory and gift retailer formerly located in The
Woodlands Mall; Dolce Bella, a luxury boutique offering French
and Italian lingerie lines; and The Woodlands Home Theater. The
announcement of these new retail leases follows the recent
openings of Houston's first Lilly Pulitzer...
[Houston Business Journal, July 24, 2006]
Based on the evidence of record, we find that France is
associated with lingerie, and that the requisite goods-place
association for these goods therefore exists.
Serial No. 78515219
13
Applicant argues that there is no goods-place association
because the “realities of the marketplace” are such that “the idea
that a purchaser will buy applicant’s lingerie because the goods are
thought to originate in France is not believable.” Applicant posits
“[I]t is not the geographic origin of the goods that is significant;
rather it is the look and feel of the lingerie that is significant.”
Applicant also argues that if a purchaser has any question as to the
origin of the goods, there are “country-of-origin” tags on the goods.
(Applicant’s Brief, p. 10-11).
The evidence of record and caselaw do not support applicant's
arguments. To the contrary, the evidence demonstrates that lingerie
is specifically touted as being from France or as “French lingerie.”
In addition to the article excerpts already identified, the examining
attorney made of record third-party Internet websites advertising
“French lingerie” for sale. (Attached to Office Action dated
September 23, 2005). One website, “Pampered Passions,” has a “French
Lingerie” category of goods. Other categories (with links thereto)
are: “Fine lingerie”, “Italian Lingerie”, “Wedding lingerie”, etc..
Another retail website, “Azzuma, Fine Imported Lingerie”,
encourages potential customers to “[p]amper yourself in luxurious
French lingerie. Experience the elegance and distinctive beauty of
our designer collections.” The website identifies many collections
of lingerie that it sells, several of which say “of Paris” or simply
Serial No. 78515219
14
contain the capital of France at the bottom of the collection name.
The advertisements, and the previous article excerpts, show that
customers actually are accustomed to seeing lingerie advertised as
coming from France. The fact that lingerie is categorized on the
website as coming from France (or Italy) suggests that customers may
specifically seek such goods because they originate from France (or
Italy). Thus applicant’s argument that it is the “look and feel of
the lingerie that is significant” is not only contradicted by the
examining attorney’s evidence, but similar arguments that a
geographic term creates a “look and feel” or “ambience” have
previously been rejected by the Board and our principal reviewing
court. See In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir.
1999)(NEW YORK in NEW YORK WAYS GALLERY mark denotes geographic
location, not a hypothetical “New York Style” of the goods at issue);
In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997)(HAVANA in
various marks denotes geographic location, not hypothetical “free-
wheeling lifestyle” of pre-Castro Cuba).
Likewise, the Board has previously rejected the argument that
“country of origin” labels on clothing may somehow obviate a
geographically deceptive mark. See In re Juleigh Jeans Sportswear
Inc., 24 USPQ2d 1694, 1699 (TTAB 1992) (“fact that clothing may
include labels specifying country of origin does not alter finding
that mark is geographically deceptive”).
Serial No. 78515219
15
Based on the evidence of record, and for the reasons discussed
above, we find that France is associated with and is a known source
of lingerie, and that a goods-place association therefore exists as
between lingerie and France. Because applicant's lingerie does not
originate from France, the second element of the Section 2(e)(3)
refusal is established.
The third and final element of the Section 2(e)(3) refusal
requires a showing that the misrepresentation as to the geographic
origin of applicant's goods which is created by applicant's mark
(i.e., that the goods would be believed to come from France, when
they do not) would be material to the consumer's decision to purchase
the goods. We find that the evidence of record in this case, much of
which has already been highlighted or discussed, establishes the
materiality element of the refusal.
“For goods, the PTO may raise an inference in favor of
materiality with evidence that the place is famous as a source of the
goods at issue.” In re Les Halles De Paris J.V., supra, 334 F.3d at
1374, 67 USPQ2d at 1542. The evidence of record in this case
establishes that France is associated with lingerie.
The evidence of record establishes that the materiality to the
purchasing decision of French lingerie is not only based on France
being touted as a source of lingerie, but the materiality in the
decision is further established by the evidence of record showing
Serial No. 78515219
16
that French lingerie is carried in “luxury” or “boutique” retail
establishments and, thus, is presumably thought to be of a higher
quality. For these reasons, lingerie from France may be considered
by purchasers to be more desirable, i.e., the fact of its origin is
material to the purchasing decision.
For these reasons, we find that the third element of the Section
2(e)(3) refusal, materiality, is established in this case.
Based on all of the evidence of record11 and for the reasons
discussed above, we find that applicant's mark is primarily
geographically deceptively misdescriptive, at least as applied to the
lingerie, and that the Section 2(e)(3) refusal therefore is proper.

11 Though we have not specifically discussed all of the evidence submitted by
applicant, we have carefully considered it in determining that applicant's
mark is primarily geographically deceptively misdescriptive.
Decision: The Section 2(e)(3) refusal to register is affirmed.