Thursday, October 18, 2018

TTAB Test: Is "S&M" Merely Descriptive of Sex Therapy Services?

[This is a family blog, but perhaps your children shouldn't read this one. Nor should you read it to them. Unless you're prepared to answer a lot of questions.] The USPTO refused to register the mark S&M, in standard character form, for "sex therapy services," finding the mark to be merely descriptive under Section 2(e)(1). Applicant maintained that it has never provided services that involve sadomasochism. How do you think this came out? In re Therapy by Amanda LLC, Serial No. 87771775 (September 21, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board relied on, inter alia, a dictionary definition of sex therapy ("treatment of sexual disorders that have psychological causes, employing psychiatric counseling, behavior modification and education") and on applicant's own website ("Sex Therapy: Let’s address any concerns you might have about pleasure, sexual functioning, intimacy, or bedroom activities. We embody a sex-positive philosophy and are fully welcoming to all lifestyles, genders, kinks, and more.").

S&M is an abbreviation for "sadism and masochism or "sadomasochism," defined as: "1. Interaction, especially sexual activity, in which one person enjoys inflicting physical or mental suffering on another person, who derives pleasure from experiencing pain. 2. Gratification, especially sexual, gained through inflicting or receiving pain; sadism and masochism combined."

S&M is synonymous with sadism and masochism or sadomasochism which is an approach to sexual interaction that may be treated through, or otherwise discussed in, sex therapy and, therefore, S&M is merely descriptive of a subject treated by Applicant’s services.

Applicant argued that "there is no evidence that the services at issue are ever associated in any way with 'sadism and masochism,'" but the Board pointed to several websites, including applicant's own website stating that Applicant addresses any concerns potential patients have about "pleasure, sexual functioning, intimacy, or bedroom activities," including all lifestyles and "kinks." Noting the definition of "kink" as "a bizarre or unconventional sexual preference or behavior," the Board concluded that "kinks" could include S&M. [I thought "kinks" was a British rock band - ed.].

Finally, as to applicant's assertion that it has never provided services that involve sadomasochism, the Board pointed out that, even if that is true, the determination of whether Applicant’s mark is merely descriptive must be based on the recitation of services set forth in the application.

Because the services at issue are sex therapy services and sex therapy services may include counseling about S&M, the mark S&M used in connection with those services merely describes an approach to sexual interaction that Applicant might treat or otherwise discuss.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Perhaps applicant intended S&M to stand for "Sex and Magic." But an applicant's intent is irrelevant to consumer perception, isn't it?

Text Copyright John L. Welch 2018.


At 9:12 AM, Anonymous Anonymous said...

Seems like the applicant made some naughty counterarguments and was disciplined accordingly.

Sorry...couldn't resist cracking a little joke here.

At 9:51 AM, Anonymous Anonymous said...

Perhaps it is misdescriptive if not offering S&M therapy.

At 2:17 PM, Anonymous Anonymous said...

Applicant got whipped.

At 4:50 PM, Anonymous Anonymous said...

Ouch, that one hurt.


Post a Comment

<< Home