Thursday, July 07, 2016

Precedential No. 20: TTAB Dismisses 2(d) Opposition, Opposer Fails to Prove Rights in SEXSTROLOGY

The Board dismissed this Section 2(d) opposition to registration of the mark SEXY ASTROLOGY for “astrology consultation” because Opposer Terry Nazon failed to prove proprietary rights in her mark SEXSTROLOGY, registered on the Supplemental Register for services in the nature of "astrology horoscopes." Terry Nazon, d/b/a Terry Nazon Inc. v. Charlotte Ghiorse, 119 USPQ2d 1178 (TTAB 2016) [precedential].

Because Opposer Nazon owns a Supplemental Registration for her mark, priority was not an issue. However, a registration on the Supplemental Register is not entitled to the presumptions of Section 7(b) of the Trademark Act, and is not evidence that Nazon owns proprietary rights in her mark. A mark so registered is presumed to be merely descriptive and Nazon had the burden to establish acquired distinctiveness.

The good news for Nazon was this: since priority was not an issue, Nazon was not required to establish acquired distinctiveness prior to any date on which Applicant Ghiorse might rely. The question was whether Nazon “has now established proprietary rights in SEXSTROLOGY.”

Nazon claimed that she coined the term SEXSTROLOGY in 2004 for an article she was writing, combining the words SEX and ASTROLOGY. [Doh! - ed.]. She uses the word "to define astrology as it pertains to men and woman [sic], as it pertains to relationships, and as it pertains to the interaction between men and women." The Board perceptively pointed out, however, that using the term SEXSTROLOGY in various materials did not constitute use as a service mark for astrology horoscopes.

Nazon provided vague testimony about use of SEXSTROLOGY on her Facebook page, at the website, and in her blog. She uses @SEXSTROLOGY as her Twitter handle, but "using a term as part of a Twitter handle to identify oneself does not necessarily evidence trademark use for particular services," The Board found that this evidence as a whole did not show trademark rights in SEXSTROLOGY for astrology horoscopes.

Applicant Ghiorse submitted several examples of third-party use of "SEXSTROLOGY" or "SEXTROLOGY," including several books, a Twitter page, Tumblr postings, and several websites, all with reference to astrology and relationships. A dictionary definition from "Definition Of," a "community dictionary," defined "sextrology" as "a contraction of sex + astrology; the stars to study the influence of one's sex life and sexual relationships." [sic]. Indeed, Opposer Nazon admitted that there is voluminous third party use of "sexstrology," and in her testimony she treated SEXSTROLOGY as "the name of the subject matter."

This evidence of multiple third-party and mainstream uses demonstrated the highly descriptive meaning of SEXSTROLOGY/SEXTROLOGY. The Board concluded that Nazon's evidence regarding her use of SEXSTROLOGY was insufficient to overcome Applicant Ghiorse's evidence of descriptiveness. Much of Nazon's evidence was flawed, and in some of the evidence "Sexstrology" may have been viewed as the subject matter rather than as a source indicator. Furthermore, the number of third-party descriptive uses indicate that Opposer has not been the substantially exclusive user as required under Section 2(f).

The Board concluded that Opposer Nazon failed to demonstrate that she has acquired proprietary rights in the term SEXSTROLOGY as a trademark for astrological horoscopes, and so the Board dismissed the opposition on that basis.

The Board also addressed, in the alternative, Nazon's likelihood of confusion claim, assuming arguendo that the term had acquired distinctiveness. Treating Nazon's mark as highly suggestive and entitled to a narrow scope of protection, the Board found the involved marks, when considered in their entireties, different in meaning and commercial impression.

[T]he words SEXY and SEX have different meanings. When each is combined with the other element in the respective marks, the result is that Opposer’s mark (again, treating it as suggestive rather than descriptive) conveys that her “astrology horoscopes” services are concerned with the effect of the stars on one’s romantic life or the romantic compatibility of various astrological signs. Applicant’s mark, SEXY ASTROLOGY, on the other hand, does not convey such a meaning. It clearly references ASTROLOGY, and directly tells consumers that this is the subject of Applicant’s “astrology consultation” services. However, the term SEXY, as used with ASTROLOGY, does not have a clear meaning. What is SEXY ASTROLOGY?

The Board concluded that confusion is not likely, and so even if Opposer Nazon had established trademark rights in the mark SEXSTROLOGY, she did not prove a likelihood of confusion.

Read comments and post your comment here.

TTABlog comment: How about SEXY ASTRONOMY? Would that be confusable?

Text Copyright John L. Welch 2016.


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