Wednesday, July 30, 2008

"SEXY 'N SASSY" Confusingly Similar to "SEXY HAIR" for Hair Care Products, Says TTAB, Unconvincingly

In a less than convincing decision, the Board found that a "non-de minimums" [sic!] number of consumers would likely be confused, and so it sustained a Section 2(d) opposition to registration of the the mark SEXY N' SASSY in view of the registered mark SEXY HAIR [HAIR disclaimed], both for for various hair care products. Sexy Hair Concepts, LLC v. Perfect Plus, Inc., Opposition No. 91170863 (July 3, 2008) [not precedential].

Because the goods were in part identical, the Board assumed that the channels of trade and purchasers are also identical. Of course, when the goods are identical, a lesser degree of similarity in the marks is necessary to support a finding of likely confusion.

As to the marks, the Board acutely observed that both marks begin with the same word SEXY, "a factor that supports a conclusion that confusion is likely here." [In other words, the first word in a mark is often the one that will be most remembered]. Moreover, the Board assigned little weight to the disclaimed word "HAIR."

As to the additional term 'N SASSY in Applicant's mark, the Board did not find that its presence results in dissimilar marks.

"Customers familiar with opposer's mark SEXY HAIR for hair care products are likely to assume that applicant's SEXY 'N SASSY mark for the same products are in some way related or associated with opposer. The term ''N SASSY' builds on the SEXY HAIR meaning of opposer's mark and adds an additional element 'Sassy.' Customers are likely to believe that applicant's shampoo is a refinement of opposer's SEXY HAIR shampoo."

In support of that assertion, the Board noted that Opposer uses its SEXY HAIR mark with additional words such as STRAIGHT SEXY HAIR, SHORT SEXY HAIR, BIG SEXY HAIR, CURLY SEXY HAIR, HOT SEXY HAIR, WILD SEXY HAIR, and SILKY SEXY HAIR. According to the Board, this shows that "consumers are accustomed to numerous products with a variation of opposer's SEXY HAIR mark originating from Opposer. [TTABlog comment: I see the pattern here, but I also see that Applicant's mark doesn't include SEXY HAIR.]

The Board took into consideration that fact that the term "Sexy" is "hardly an arbitrary term." [TTABlog comment: another instance of litotes?!]. However, because the mark is registered, the Board must assume it is inherently distinctive. [TTABlog comment: That's not the issue. The issue is the strength of the mark. SEXY HAIR could be distinctive but weak, and not entitled to a broad scope of protection vis-a-vis other marks containing the highly suggestive or laudatory term SEXY.]

The Board next found that the mark SEXY HAIR has achieved some renown, based on various exposures of Opposer's mark on television and in Internet advertising. Sales reached $51 million in 2006 and advertising expenditures exceeded $6.2 million. "While opposer's mark may be highly suggestive, opposer's evidence is not so weak that it is entitled to only a very narrow scope of protection." [TTABlog note: Litotes again?!]

In sum, the Board found the marks "more similar than they are dissimilar," and that favored Opposer. [TTABlog note: Maybe the Board have said "not that dissimilar," to keep the litotes going?]

Resolving any doubtin favor of the prior registrant, as it must, the Board sustained the opposition.

TTABlog final comment: I guess this Opposer owns the word SEXY as a formative for hair care products.[See its prior victory TTABlogged here.] I just don't think SEXY N' SASSY is sufficiently similar to the SEXY HAIR mark or its variations, given the weakness of the word SEXY as a formative, to support a 2(d) finding.

Text Copyright John L. Welch 2008.


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