Finding Family of "SEXY" Marks, TTAB Sustains 2(d) Opposition to "SO SEXY" for Hair Care Products
Opposer Sexy Hair Concepts convinced the Board that it (Opposer, not the Board) owns a family of "SEXY" marks for various hair care products, leading to victory in its opposition to registration of the mark SO SEXY for essentially identical hair care products. Crucial to the decision was the Board's conclusion that the word "sexy" is neither descriptive nor laudatory for these products. Sexy Hair Concepts, LLC v. Victoria's Secret Stores Brand Management, Inc., Opposition No. 91125739 (April 20, 2007) [not precedential].
The Board took judicial notice of dictionary definitions of "sexy" as "sexually suggestive or stimulating: erotic" and as "generally attractive or interesting: appealing." However, the record did not establish "a direct connection between the term 'sexy' and any specific quality, characteristic, function, ingredient, attribute or feature of the identified hair care products or of hair after the use of the products." [TTABlog comment: I may not be able to describe "sexy" hair precisely, but I know it when I see it.]
The Board next looked at the family-of-marks issue, and found that the evidence "clearly established that opposer promotes a group of marks for which the common characteristic is the term 'sexy.'"
"Except for the mark SEXY HAIR, opposer's family of marks is characterized by the term SEXY preceded by a word that suggests an intended result of the product and followed by a generic noun in the hair care field (e.g., SEXY HAIR, BIG SEXY HAIR, STRAIGHT SEXY HAIR, HEALTHY SEXY HAIR, HOT SEXY HAIR, WILD SEXY HAIR, HOT SEXY HIGHLIGHTS)."
The marks are shown together on television, at trade shows, and in promotional brochures. The SEXY element is emphasized by the use of different fonts and colors for the SEXY or SEXY HAIR portion of the marks. Several periodicals referred to various brands as the SEXY HAIR or SEXY HAIR CONCEPTS "collection" or "line" of products.
The existence of a few third-party registrations for marks containing the term "sexy" for hair care products does not "defeat or limit opposer's family of marks characterized by the term SEXY preceded by a word that suggest an intended result of the product and followed by a generic noun in the hair care field."
"Thus, opposer's family of marks is entitled to the scope of protection normally accorded a family of mark for whom the common element is a suggestive, rather than an arbitrary, term, i.e., a more limited scope of protection than for an arbitrary mark."
Turning to an assessment of Applicant's mark, the Board observed that SO SEXY may be "described as the term SEXY preceded by a word that suggests an intended result of the product, i.e., that the user's hair will be 'so,' or 'very' SEXY."
"This is the same pattern as used in opposer's family of marks. Although all but one of opposer's marks include the term HAIR following sexy, neither party disagrees that 'hair' is a generic term in connection with the identified hair care products. Thus even though applicant's mark does not include the term HAIR, it is the only possible object of the phrase SO SEXY."
The Board therefore concluded that confusion is likely, and it sustained the opposition.
TTABlog comment: I think the Board may have gone off the track in failing to recognize the laudatory nature of the word "sexy." Moreover, its comparison of the mark SO SEXY with Opposer's family of marks was a bit strained, don't you think? I just do not find SO SEXY to be similar enough to be likely to confuse.
Text Copyright John L. Welch 2007.