Sexy Hair Concepts, LLC

Trademark Trial and Appeal Board

Apr 20, 2007

No. 91125739 (T.T.A.B. Apr. 20, 2007)

Hearing:
March 23, 2006
Mailed: April 20, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Sexy Hair Concepts, LLC.
v.
Victoria’s Secret Stores Brand Management, Inc.1
_______

Opposition No. 91125739
to Application No. 78094035
filed on November 19, 2001
_______

Roberta Jacobs-Meadway of Ballard Spahr Andrews & Ingersoll
for Sexy Hair Concepts, LLC.

Frank J. Colucci of Colucci & Umans for Victoria’s Secret
Stores Brand Management, Inc.
_______

Before Quinn, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Sexy Hair Concepts, LLC. filed its opposition to the
application of Victoria’s Secret Stores Brand Management,
Inc. to register the mark SO SEXY for “hair care products,

1 While the owner of record of the application when this opposition was
filed was V Secret Catalogue, Inc., the USPTO records show that the
current owner of this mark and application, via merger with V Secret
Catalogue, Inc., is Victoria’s Secret Stores Brand Management, Inc. The
caption has been changed to reflect the current ownership.
THIS 0PINION
IS NOT A CITABLE
PRECEDENT OF
THE TTAB
Opposition No. 91125739
2
namely, hair conditioner, hair dyes, hair glitter, hair
highlighter, hair mascara, hair pomade, hair rinses, hair
removing creams, hair shampoo, hair spray, hair
straightener, hair styling gel and hair styling mousse,” in
International Class 3.2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered mark SEXY
HAIR for “hair care products for men, women and children,
namely hair shampoos, hair conditioners, hair lotions, hair
cremes, hair gels, hair sprays, hair color, hair dyes, hair
rinses, hair mousse”3 as to be likely to cause confusion,
under Section 2(d) of the Trademark Act.
In particular, opposer asserts that it has used the
mark SEXY HAIR in connection with hair care products since
at least June 15, 1998, and so used this mark in commerce
since at least December 21, 1998; that this mark is the
subject of Registration No. 2403396, owned by opposer; that
opposer also owns additional registrations - No. 2486702 for
SEXY HAIR and design, and No. 2553996 for HOT SEXY
HIGHLIGHTS for hair care products; that it owns a family of

2 Application Serial No. 78094035, filed November 19, 2001, based upon
an allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.

3 Registration No. 2403396, issued November 14, 2000, in International
Class 3. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively.]
Opposition No. 91125739
3
SEXY marks for hair care products; that it has used the mark
and trade name SEXY HAIR CONCEPTS since prior to November
19, 2001, in connection with hair care, skin care and
cosmetic products; and that its marks and trade name are
inherently distinctive in connection with opposer’s
business.
Applicant, in its answer, denied the salient
allegations of the claim and asserted affirmatively, inter
alia, that no one company is entitled to the exclusive right
to use or register as a mark the word “sexy” for personal
care products; that opposer does not have a family of SEXY
marks; and that numerous third parties have registered or
used the word “sexy” as part of marks for personal care and
related products.
Both parties filed briefs on the case and submitted
evidence by notice of reliance and through testimony, with
exhibits. The Board has carefully reviewed the parties’
respective evidence and arguments, and the familiarity of
the parties therewith is presumed.
Factual Findings
Opposer has established its ownership and the validity
of the following six registrations4:

4 Although Registration Nos. 2472793 (FORMULAS BY ECOLY BIG SEXY HAIR),
2707751 (WILD SEXY HAIR), and 2757856 (SEXY HAIR CONCEPTS and design)
were not pled in the notice of opposition, we have considered them
because applicant has not objected to the unpleaded registrations and
moreover has treated them as of record. Therefore, the notice of
Opposition No. 91125739
4
• Registration No. 2403396 for the mark SEXY HAIR for
“Hair care products for men, women and children, namely
hair shampoos, hair conditioners, hair lotions, hair
cremes, hair gels, hair sprays, hair color, hair dyes,
hair rinses, hair mousse,” in International Class 3,
with a disclaimer of HAIR apart from the mark as a
whole. [Application filed February 5, 1999;
Registered November 14, 2000; Sections 8 (six-year) and
15 affidavits accepted and acknowledged, respectively.]

• Registration No. 2472793 for the mark FORMULAS BY ECOLY
BIG SEXY HAIR for “hair care products for men, women
and children, namely hair shampoos, hair conditioners,
hair lotions, hair crèmes, hair gels, hair sprays, hair
color, hair dyes, hair rinses, hair mousse” with a
disclaimer of HAIR apart from the mark as a whole.
[Application filed June 17, 1999; Registered July 13,
2001.]

• Registration No. 2486702 for the mark shown below for
“hair care products for men, women and children, namely
shampoos, conditioners, hair lotions, hair conditioning
creams, hair gels, hair sprays, hair color, hair tint
and hair mousse.,” in International Class 3, with a
disclaimer of HAIR apart from the mark as a whole and a
statement that the trademark is lined for the color
red. [Application filed July 15, 1999; Registered
September 11, 2001.]

• Registration No. 2553996 for the mark HOT SEXY
HIGHLIGHTS for “hair care products for men, women and
children, namely, shampoos, conditioners, hair lotions,
hair conditioning creams, hair gels, hair sprays, hair
color, hair tint and hair mousse,” in International
Class 3, with a disclaimer of HIGHLIGHTS apart from the
mark as a whole. [Application filed March 27, 2001;
Registered March 26, 2002.]

opposition is deemed amended to conform to the evidence under FRCP
15(b).
Opposition No. 91125739
5
• Registration No. 2707751 for the mark WILD SEXY HAIR
for “hair care products for men, women, and children,
namely hair shampoos, hair conditioners, hair lotions,
hair cremes, hair gels, hair sprays, hair color, hair
dyes, hair rinses, hair mousse,” in International Class
3, with a disclaimer of HAIR apart from the mark as a
whole. [Application filed May 22, 2001; Registered
April 15, 2003.]

• Registration No. 2757856 for the mark shown below for
“hair care products for men, women and children, namely
hair shampoos, hair conditioners, hair lotions, hair
cremes, hair gels, hair sprays, hair color, hair dyes,
hair rinses, hair mousse,” in International Class 3,
with a disclaimer of HAIR apart from the mark as a
whole. [Application filed June 10, 2003; Registered
September 2, 2003.]

Opposer produces and distributes its own brands of hair
care products (Mark Stiller discovery deposition “Stiller”
at 9). Opposer’s founder and CEO is Michael O’Rourke, a
celebrity hair stylist. Mr. O’Rourke has an artistic team
of about twenty people that assist him in putting out two
haircut collections per year. He appears with opposer’s
hair care products at various celebrity events and in
various media, including on television programs such as Good
Morning America (Donna Federici testimonial deposition
“Federici” at 17, 73). He also arranges for product
placement of opposer’s hair care products in movies and on
Opposition No. 91125739
6
television shows such as The Tonight Show with Jay Leno and
Queer Eye for the Straight Guy (Stiller at 36-37).
Opposer first developed the SEXY HAIR mark in 1998 and
shipped its first product, a root pump, under the mark BIG
SEXY HAIR in December 1998. In 1999, it expanded the BIG
SEXY HAIR line to include additional products, and added
additional brands, STRAIGHT SEXY HAIR and SHORT SEXY HAIR,
each including approximately four to six different products.
Additional brands, all featuring a number of products that
have been added include CURLY SEXY HAIR (2000), HEALTHY SEXY
HAIR (2001), WILD SEXY HAIR (2002), SILKY SEXY HAIR (2003),
and HOT SEXY HAIR (2003). (Stiller at 11-16, 68.) For
example, products under opposer’s STRAIGHT SEXY HAIR line
include Arrow Straight, Smooth and Seal, and Straight
Shampoo and Conditioner (Federici at 33). While opposer has
a few other hair care product lines that do not use SEXY as
part of their marks, the product lines that use SEXY as part
of their marks make up 90% of opposer’s business, and this
percentage increases each year (Stiller at 20). At the time
of trial, opposer had sixty products identified by marks
that include the term SEXY (Federici at 45).
Opposer sells its hair care products through
distributors to professional salons and directly to
professional salon chains. Opposer sells approximately 20-
30% of its products directly to salon chains including
Opposition No. 91125739
7
Regis, Ulta, Beauty Brands, JC Penney, Dollar Cuts and
Beauty First. (Stiller at 40-41, 87.) Salons usually offer
and sell a variety of hair care products from different
manufacturers to their clients, the general consumer (id. at
40); and the salons use a small percentage of the hair care
products they buy at wholesale in rendering hair care
services to their clients (id. at 43). Opposer does not
have data concerning the percentage of its products used by
salons in rendering their services and the percentage sold
directly to the salon’s customers; nor does opposer have
data pertaining to consumers’ awareness of the brand of hair
care products used by a salon in rendering its services.
Opposer’s shampoos sell at retail for approximately $6-
7; and its styling products sell at retail for approximately
$18-19 (id. at 46). Opposer’s products are mid-priced among
professional brands. Opposer’s principal competition
consists of hair care products sold through salons, such as
TG, Redken and Sebastian, as well as the professional salon
lines of L’Oreal and Wella hair care products. (Id. at 47.)
There is a small and regular, but unapproved, diversion of
opposer’s products to mass retailers such as Target, Wal-
Mart and CVS for sale directly to consumers (id. at 31).
Opposer’s sales of its hair care products identified by
marks including the term SEXY to its professional clients
are substantial, increasing from $15 million in 2001 to
Opposition No. 91125739
8
anticipated sales of $34 million in 2004. International
sales comprise less than 15% of these totals. For the ten
months ending October 2003, opposer’s net sales were
approximately $27 million, which translates into
approximately $50 million in sales by distributors to
salons, which is approximately $100 million in sales by
salons to consumers. (Id. at 41-44).
Opposer conducts substantial advertising and promotion
directed to salons, hair stylists and general consumers.
Its promotional activities include distributing point-of-
purchase displays and bi-monthly promotional materials for
display by, as well as giving samples to, its professional
clients; advertising in professional magazines such as
Modern Salon and American Salon, and in consumer magazines
such as Seventeen; personal and television appearances with
the products by Michael O’Rourke; maintaining an
informational website; providing booths at trade shows;
holding regular educational seminars and demonstrations for
professional hair stylists; and sponsoring a variety of
events and donating to charities (See Stiller at 22-37;
Federici at 65-80).
The packaging for opposer’s products identified by
marks including the term SEXY is consistent among the
aforementioned brands. The containers are generally uniform
in appearance. Most containers for the various products
Opposition No. 91125739
9
include a small depiction of the mark shown in Registration
No. 2757856, SEXY HAIR CONCEPTS and star design. All marks
appear in the same lower-case font with SEXY appearing in a
different color from other wording in the mark, the marks
appear vertically down the side of the packaging (originally
the marks appeared horizontally), and each brand has
distinctive package coloring. (Stiller at 17-19.) For
example, STRAIGHT SEXY HAIR products are in silver packaging
and BIG SEXY HAIR products are in red packaging (Federici at
36).
The record includes print advertisements and promotions
by opposer that show its various brands of products
identified by marks including the term SEXY together and
also as a business name or mark SEXY HAIR CONCEPTS.
(Stiller exhibits 5-10; Federici exhibits 36-43, 56-59 and
101-106.) For example, Stiller exhibits, consisting of
promotional materials directed to professionals and salons,
include the following:
2001 promotional material consisting of several
pages directed to professionals. It includes the
following copy on the first page: “Sexy Hair
Concepts presents Sexy Package Deals for 2001!”
and “Carry your SEXY with Style!” One of the
products listed in the promotional package is “The
Sexy Stylist Kit,” which includes products from
the BIG SEXY HAIR, STRAIGHT SEXY HAIR, SHORT SEXY
HAIR, CURLY SEXY HAIR, and HOT SEXY HIGHLIGHTS
lines, as well as a “Sexy Hair Concepts Stylist
Bag.” (Exhibit 5)

July/August 2002 promotional sheet directed to
professionals advertises and pictures together the
Opposition No. 91125739
10
BIG SEXY HAIR, STRAIGHT SEXY HAIR, HEALTHY SEXY
HAIR, and CURLY SEXY HAIR shampoos and
conditioners under the heading “STOCK UP NOW ON
SEXY HAIR LITERS.” (Exhibit 6)

January 2003 promotional material consisting of
several pages, with the block lettering SEXY HAIR
CONCEPTS (SEXY HAIR is one color and CONCEPTS is
another) appearing vertically on the left-hand
side of each page. There are separate entries
advertising WILD SEXY HAIR, SHORT SEXY HAIR,
STRAIGHT SEXY HAIR and HEALTHY SEXY HAIR products,
as well as an entry advertising together “liter
duos” of shampoo and conditioner of all of the
preceding brands. (Exhibit 9)

Magazine advertisement featuring a photograph of
Michael O’Rourke showcasing three of the brands
that include SEXY as part of the mark, showing
several products from each product line – SHORT
SEXY HAIR, BIG SEXY HAIR, and STRAIGHT SEXY HAIR.
The advertisement includes the copy “IT’S ALL SO
SEXY!” (Exhibit 10)

Numerous articles in various publications ranging from
newspapers and magazines to trade publications refer to
opposer using the terms SEXY HAIR CONCEPTS and SEXY HAIR,
and refer to opposer’s line of products as the SEXY HAIR
line (opposer’s notice of reliance, September 17, 2004;
Federici exhibits 60-65).
The record also includes articles in consumer and
professional magazines that use the word “sexy” to discuss
various types of haircuts, hair styles and products
unrelated to opposer (Stiller exhibits A-L).
Opposer submitted excerpts of articles retrieved from
the Lexis-Nexis database (notice of reliance September 17,
2004). Some of the excerpts refer to opposer as “Sexy Hair
Opposition No. 91125739
11
Concepts,” and refer to its various hair care lines using
the trademarks, such as SHORT SEXY HAIR. Some of these
excerpts use the word “sexy” in a non-trademark manner
unrelated to opposer. Some excerpts include both trademark
and non-trademark uses of “sexy.” The following are several
examples:
“Michael O’Rourke formed Sexy Hair in 1999…” “The
trendy edge led JCPenney to stock his wares, adding the
Big, Short and Healthy Sexy Hair lines.” [Los Angeles
Daily News, June 28, 2003.]

“You won’t pass for a true Maui maid without a glass-
like sheen to your hair, so we suggest Sexy Hair
Concepts’ Straight Sexy Hair.” [The Express, May 17,
2003.]

“Sexy Hair Concepts launched the Disruptive Texture
Collection of haircuts …” “John Paul Mitchell Systems
features sexy looks this spring such as Tousled
Texture…” [Household and Personal Products Industry,
May 1, 2003.]

Article about the Chicago Midwest Beauty Show includes
the following statements: “The booth of Italian
company Dawa was doing a brisk business in flat irons
with interchangeable patterned inserts, including some
with the word ‘sexy,’ and had none left by the end of
the show’s second day.” and “At Sexy Hair Concepts, a
new product line called Wild Sexy Hair was being
promoted ….” [Chicago Tribune, March 12, 2003.]

Article about Catherine Zeta-Jones’ role in the movie
“Chicago” includes reference to a Sexy Hair Concepts
product used to style her wig, and a reference to her
garters worn as part of her costume. The costume
designer is quoted as saying, “I made the ones in the
film, but Victoria’s Secret has a very sexy line of
them right now.” [CNN.com, December 27, 2002.]

An article entitled “The hair care market: Hundreds of
competing hair care brands answer increasingly diverse
needs” includes the following: “This month Sebastian
launched three new Raw hair products under the Xtah
Opposition No. 91125739
12
line …. Xtah Loose Locks separates the hair with a
flexible, sexy and ‘undone’ look.” and “Sexy Hair
Concepts … introduced its new Healthy Sexy Hair
Moisture Collection ….” [Household and Personal
Products Industry, December 1, 2002.]

An article entitled “Hair Styling Update” includes the
following statement about a study: “According to a
study conducted by Yale University … hair style can
communicate a wide variety of perceived character
traits, from intelligence to sexiness to whether the
wearer may be the correct candidate for a job or
trustworthy enough to date. … The images showcased a
variety of hairstyles which were rated by the
respondents on a scale of one to six using adjectives:
sexy, intelligent, outgoing, self-centered ….” The
same article discussed various hair products, including
reference to “Sexy Hair Concepts,” naming several of
its SEXY HAIR lines.

Opposer does not use the word “sexy” alone as a mark
(Federici at 180), although opposer does use promotional
language suggesting that use of its products will result in
sexy hair (see Federici exhibits S-U). Opposer’s senior
vice president for sales and marketing, Donna Federici,
stated her view that “sexy” is an emotional trigger word
that is intended to motivate a buyer and, as such, is a
powerful marketing tool (Federici at 143-148).
Applicant also submitted excerpts from numerous
publications, including both publications directed to hair
salon professionals and publications directed to the general
consumer, that show use of “sexy” and “sexy hair” both in
reference to hair generally and to opposer (notice of
reliance, February 10, 2005). The following are several
examples:
Opposition No. 91125739
13
An article entitled “Love Sexy” in Hairdressers
Journal International (January 11-17, 2002) is
about opposer’s SEXY HAIR products. It pictures
together products from opposer’s different brands
that include the term SEXY in the mark, and calls
them “The Sexy Hair Concepts Range.”

An article entitled “Too Sexy” in American Salon,
(March 2001) quotes opposer’s CEO, Michael
O’Rourke as stating “Sexy hair is exactly what we
are about and I believed it was time to own it.”

Opposer’s senior vice president for sales and
marketing, Donna Federici, is quoted in Modern
Salon, (March 2001) as stating “The word ‘sexy’ is
a powerful marketing tool … It allows the consumer
to drum up connotations on a very personal level.”

An article in Salon (April 2001) entitled “Size
Matters” discusses and quotes several celebrity
hair stylists, including Michael O’Rourke. It
includes the following statement: “This season
Irvin Rusk has ‘come hither’ hair on his mind.
Separated, loose locks with heaps of volume are
the sexiest according to this style maverick…”

A make-over article in Allure (August 2002)
entitled “The Beauty Insider,” states “Allure
found this Dallas student sipping coffee and gave
her look a jolt with sexy curls and gleaming
skin.”

The cover of Allure (April 2001) includes the
statement “Fresh Sexy Hair – Hollywood’s Best
Styles”.

The cover of Mademoiselle (September 1998)
includes the statement “Sexy Hair and Make-Up for
a Melt-Proof Summer.”

The cover of Cosmopolitan (undated) includes the
statement “Super Sexy Ideas for Hair, Eyes, Mouth,
Cleavage.”

A sub-heading in an article entitled “Red Hot
Hair” in Redbook (February 2000) is entitled
“Sexy-Smelling Shampoos He’ll Love.”

Opposition No. 91125739
14
An article entitled “Flaw Fixing Styles” in
Redbook (October 2000) includes reference to
“Sexy, Casual Hair.”

Turning to applicant, the Victoria’s Secret franchise,
of which applicant is a part, includes a range of clothing
and beauty products sold in its own lingerie stores and
beauty stores, as well as catalog and Internet sales.
Applicant considers its Victoria’s Secret beauty products to
be competitive with both the mass and prestige markets and
priced between the two markets. (Sherry Helene Baker
discovery deposition “Baker DD” at 44-46, 69.) These beauty
products are sold only through its 500 Victoria’s Secret
beauty stores, of which about 100 are freestanding stores,
about 300 are next door to Victoria’s Secret lingerie
stores, and about 100 are niches within Victoria’s Secret
lingerie stores (id. at 47-48). Between 1999 and April
2002, the only Victoria’s Secret products that included
“sexy” in the brand name were VERY SEXY FOR HIM, a fragrance
for men, and a nail enamel color (id. at 12). Since April
2002, Victoria’s Secret has launched a fragrance collection
for women, the SEXY SECRETS COLLECTION, consisting of five
different scents, including VERY SEXY FOR HER, and the VERY
SEXY color (cosmetics) collection (id. at 12-13, 29-31).
Applicant’s marketing image is intended to be
consistent across the entire franchise and portrays young
women as sophisticated, glamorous, and sexy. Applicant and
Opposition No. 91125739
15
its related companies own several trademark registrations
for marks including the term “sexy,” such as BEACH SEXY, THE
NEW SHAPE OF SEXY, and VERY SEXY, for various products, none
of which include hair care products (applicant notice of
reliance, February 10, 2005). Applicant’s aspirational
target market is educated, single, urban women in their mid-
twenties, although its actual market is much broader,
encompassing essentially all general consumers. (Baker
testimonial deposition “Baker TD” at 13-14, 36.) To
demonstrate its image-marketing, applicant submitted sample
pages from various Victoria’s Secret catalogs5 dating back
to at least 1997 that include the following copy:
• “Very Sexy Lingerie Collection” (IBC 0430),
• “The Very Sexy Plunge Bra, The New Shape Of
Sexy” (IBC 0426),
• “8 super sexy panties any 3 for $30” (IBC
0445),
• “Its all about a sexy look and how to get
it.” (IBC 0558),
• “Drop Dead Sexy and Very Comfortable” (IBC
0560),
• “Sexy Gowns & Chemises save $10 each” (IBC
0573), and
• in its 2002 Christmas catalog, copy stating
“A Very Sexy Christmas” (IBC 0424).

Applicant began discussing the development of a line of
hair care products at the end of 2002 (id. at 17-18), test
marketed the resulting products under the brand SO SEXY in

5 Many of the catalogs submitted by applicant are its “London” catalogs
and, as there is no indication that these were distributed in the United
States, they are of no probative value.

Opposition No. 91125739
16
sixty to ninety stores (Kathi Van Zandt testimonial
deposition “Van Zandt” at 18-19), and launched the product
with a press release in the fall of 2004 (Baker TD at 22-23,
49-50). Since at least 1999 and prior to the product
launch, applicant did not sell hair care products under the
"sexy" mark, although an earlier hair care line was marketed
under the brand VICTORIA’S SECRET GARDEN. The SO SEXY line,
as tested, consists of six styling aids and eight shampoos
and conditioners (id. at 23-25), and the packaging appears
in different shades of pink because pink is part of
Victoria’s Secret’s “iconic imagery” (id. at 25). Applicant
decided not to name the individual products in the line in
order to emphasize the SO SEXY name (id. at 39-40). The
product packaging includes the statement “Everyday, sexy
hair, so shiny, so touchable, SO SEXY” (Van Zandt at 21;
Exh. AA). At the time of trial, applicant had done no
advertising of this product in any media (Baker TD. at 50).
However, applicant did use a shelf-talker (Van Zandt Exh.
BB)6 in the test stores and sent a direct mail announcement
to store credit card holders (Van Zandt at 23, Exh. DD).
Opposer submitted an excerpt from an article in the August
2004 edition of Marie Claire, a beauty magazine, entitled
“What’s Hot.” The article includes a paragraph about

6 The shelf-talker includes, in part, the following language: “New! So
Sexy products offer everyone sexy hair everyday.”

Opposition No. 91125739
17
Victoria’s Secret’s new SO SEXY hair care products entitled
“Secret to Sexy Hair.”
Applicant considers its competitors in the hair care
products field to include Pantene, Herbal Essence, Paul
Mitchell, Nexxus, Redken and Clinique (applicant’s answers
to interrogatories, no. 14, October 15, 2002).
Victoria’s Secret launched another line of hair care
products in 2004 identified by the trademark GARDEN SENSUOUS
SHINE and sold in the same stores as the SO SEXY line (id.
at 33). Applicant has decided that any additional hair care
product lines it adds will not be marketed under the SO SEXY
mark (Baker TD at 52).
Analysis
Standing.
Because opposer has properly made its pleaded
registrations of record, and because opposer’s likelihood of
confusion claim is not frivolous, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority.
Opposer’s pleaded registrations are of record and,
therefore, Section 2(d) priority is not an issue in this
Opposition No. 91125739
18
case as to the marks and goods covered by said
registrations. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover,
the evidence shows that opposer began using several of its
marks, including, at least, BIG SEXY HAIR (1998) and HEALTHY
SEXY HAIR (2001), prior to the filing date of applicant’s
intent-to-use application on November 19, 2001, which is the
earliest date on which applicant can rely.
Likelihood of Confusion.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
Opposition No. 91125739
19
29 (CCPA 1976). See also In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases
cited therein.
We turn first to the du Pont factor of the similarity
of the goods. Opposer contends that the goods, all of which
are hair care products, are essentially identical.
Applicant does not dispute opposer’s contention. In fact,
there is a substantial overlap in the goods identified in
the application and in the pleaded registrations. The
following goods are identical: hair conditioner, hair dyes,
hair rinses, hair shampoo, hair spray, hair styling gel and
hair styling mousse. Applicant’s goods identified as “hair
highlighter, hair mascara, hair pomade, hair straightener”
are hair care products closely related to the hair care
products identified in opposer’s registrations because each
product is used to care for or style hair, as are opposer’s
products. The remaining identified product, “hair removing
creams,” is also a hair care product and, as such, it is
sufficiently related to opposer’s hair care products that,
if identified by a similar mark, confusion as to source is
likely. Thus, we conclude that the goods of the parties are
either identical or related products. This factor clearly
favors opposer.
Applicant contends that the parties’ respective
channels of trade are different because its products are
Opposition No. 91125739
20
sold only in its own stores to retail purchasers; whereas,
opposer’s products are primarily sold directly to
professional hair salons and to distributors who, in turn,
sell to professional hair salons; and that there is no
evidence of the extent to which retail consumers are aware
of opposer’s brand on such goods. Applicant contends that
the classes of purchasers for the parties’ goods are
different because the targeted purchasers of its goods are
“sophisticated and highly educated” and opposer’s products
“are distributed through professional hair salons and also
directed towards a discriminating clientele.” [Brief, p.
37.]
However, both opposer’s and applicant’s identifications
of goods are broadly worded, without any limitations as to
channels of trade or classes of purchasers. We must presume
that the hair care products of the applicant and opposer are
sold in all of the normal channels of trade to all of the
usual purchasers for goods of the type identified. See
Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). In other words, we conclude
that the channels of trade and classes of purchasers of the
parties’ goods are the same.
Moreover, while the record establishes that opposer
markets and sells its products to professional salons, in
addition to using the products on their clients,
Opposition No. 91125739
21
professional salons sell these products as labeled by
opposer to their clients. Some of opposer’s advertising is
clearly directed to this retail consumer. Regarding
applicant, while the evidence shows that its identified
goods are currently sold only through its own stores, the
identification of goods, which determines our decision, is
not so limited.
While professional salons are likely to be
sophisticated and knowledgeable purchasers of hair care
products, the evidence shows that salons carry hair care
products from a variety of different producers to sell at
retail to their clients, the general retail consumer. There
is no evidence to warrant the conclusion that the parties’
overlapping retail purchasers of hair care products are
highly sophisticated or particularly discriminating as to
such purchases, or that the products are sufficiently
expensive that they would be purchased with a high degree of
care. Therefore, the factors of the trade channels and
classes of purchasers favor opposer.
We turn to the du Pont factor of the similarity of the
marks. Opposer claims a family of marks based on the common
term SEXY.
A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that the
public associates not only the individual marks,
but the common characteristic of the family, with
the trademark owner. Simply using a series of
Opposition No. 91125739
22
similar marks does not of itself establish the
existence of a family. There must be recognition
among the purchasing public that the common
characteristic is indicative of a common origin of
the goods. It is thus necessary to consider the
use, advertisement, and distinctiveness of the
marks, including assessment of the contribution of
the common feature to the recognition of the marks
as of common origin.

J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991). Opposer contends
that it has established a family of marks with the term SEXY
as the common element of its family; that its SEXY marks are
inherently distinctive; and that “SEXY does not immediately
or directly describe any specific quality or characteristic
of hair care products” (brief, p. 11). On the other hand,
applicant contends that opposer has not met the requirements
for establishing a family of SEXY marks and, further, that
it cannot claim a family of SEXY marks because SEXY is a
laudatory and commonly used term for the identified
products.
We consider, first, applicant’s contention that “sexy”
cannot function as the common element of a family of marks
because, essentially, it is not inherently distinctive in
connection with hair care products.7 There is ample
evidence submitted by both parties (see factual findings,
supra) that “sexy” is an adjective that is used in

7 Because opposer does not own a registration or use a mark consisting
of only the word “sexy,” we do not consider this argument a collateral
attack, in the absence of a counterclaim, on opposer’s registrations.
Opposition No. 91125739
23
connection with hair; and that “sexy” is a qualitative term
applied to a wide variety of things. However, the record
does not establish that “sexy” is merely descriptive or only
laudatory with respect to hair care products. We take
judicial notice of the definition in Merriam-Webster’s
Collegiate Dictionary (11th ed. 2003) of “sexy” as “1.
sexually suggestive or stimulating: erotic. 2. generally
attractive or interesting: appealing.” “Sexy” is, at most,
suggestive of an amorphous, yet desirable, quality of hair
or hair care products. The advertising and articles of
record clearly imply that a purchaser or reader should
desire “sexy hair”; but it is not clear that “sexy hair” is
a specific quality that means the same thing to all people.
Particularly with respect to opposer’s products, “sexy hair”
could be straight, or curly or wild; or it could pertain to
hair length, color or texture. The record does not
establish a direct connection between the term “sexy” and a
specific quality, characteristic, function, ingredient,
attribute or feature of the identified hair care products or
of hair after the use of these products. Therefore, “sexy”
is, at most, a suggestive term that is inherently
distinctive in connection with the identified goods.
Recognition of a family of marks is achieved when the
pattern of usage of the common element is sufficient to be

Opposition No. 91125739
24
indicative of the origin of the family. Id. In the present
case, the evidence clearly establishes 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, SHORT SEXY
HAIR, HEALTHY SEXY HAIR, HOT SEXY HAIR, WILD SEXY HAIR, HOT
SEXY HIGHLIGHTS).
The evidence establishes that consumers are likely to
view marks following this pattern as having a common origin.
Opposer advertises and promotes together its marks
containing the word SEXY. For example, the different “SEXY”
brands and their respective products are shown together on
television, at trade shows, demonstrations, and seminars,
and in promotional brochures for professional clients (see
factual findings, supra). The SEXY element is emphasized by
the use of different fonts and colors for the SEXY or SEXY
HAIR portion of opposer’s marks on packaging and in
promotional materials. In addition to using the particular
SEXY brand on products in promotional materials and
advertising, opposer uses SEXY HAIR CONCEPTS or SEXY HAIR
CONCEPTS and star design (with SEXY appearing larger and in
a different font than other wording) on most packaging and
Opposition No. 91125739
25
promotional materials across all SEXY brands, thereby
reinforcing opposer’s portrayal, and the likely perception
by consumers, of SEXY as a common element among numerous
hair care products from the same source. Opposer’s
significant advertising in this manner has resulted in
periodicals discussing several of the SEXY brands together
in articles about hair care and referring to the various
brands as the SEXY HAIR or SEXY HAIR CONCEPTS “collection”
or “line” of products (see factual findings, supra). We are
persuaded that opposer has established a family of marks
based on the common element SEXY.8
We consider, next, the strength of opposer’s family of
marks. Applicant would have us consider this question in
the context of all “beauty products” rather than in the
context of the more limited field of “hair care products.”
It is clear that applicant has used the term “sexy” in a
non-trademark manner for many years both to cultivate its
image9 and as a trademark in connection with lingerie and,
more recently, with fragrances. Third parties have also
used this term suggestively. However, we are not persuaded

8 Although opposer pleaded likelihood of confusion with respect to
several of its individual marks as well as its family, its brief
discusses likelihood of confusion only with respect to its family of
marks, and we will therefore do the same.

9 Applicant contends that “the notion that its products are “sexy” is
critical to its image and brand”; and that “[s]ince using ‘sexy’ as a
marketing enticement is hardly novel or exclusive to any one company,
[applicant] takes great care in fashioning a total brand and marketing
image that is unique.” [Brief, p. 6]

Opposition No. 91125739
26
by applicant’s argument. Not only is the record unclear as
to the nature and scope of “the field of beauty products,”
but applicant’s and opposer’s respective goods are limited
to hair care products that are either identical or closely
related. Thus, we continue our consideration of the issue
of likelihood of confusion, including determining the
strength of the involved marks, in the context of the field
of hair care products.
Applicant contends that marks using the term “sexy” are
entitled to only a narrow scope of protection “preclud[ing]
any one company in the beauty field from claiming any
exclusivity to such term,” apart from use in combination
with other terms in a mark. [Brief, p. 4.] The record shows
non-trademark use by third parties of the suggestive term
“sexy” in writings about hair care. However, limiting
ourselves to the field of hair care, the record contains
few, if any, third party trademarks that include the term
“sexy” for hair care products, other than opposer’s family
of marks and applicant’s proposed mark. Further, the use of
the term “sexy” as part of a mark, even in the expanded
field of all beauty products, does not defeat or limit
opposer’s family of marks 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. Thus, opposer’s family of marks is entitled to the
Opposition No. 91125739
27
scope of protection normally accorded a family of marks 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. See Motorola, Inc. v. Griffiths
Electronics, Inc., 317 F.2d 397, 137 USPQ 551, 553 (CCPA
1963) (“As a matter of logic it would seem to us that if
opposer has a family of six marks all starting with the
[same] word …, it still has that family notwithstanding
there may be some others using the same word”).
Regarding the parties’ respective marks, opposer argues
that the parties’ marks are substantially similar because
SEXY is the dominant element of applicant’s mark as well as
of its family of marks; that VICTORIA’S SECRET forms no part
of applicant’s mark and should not be considered a
distinguishing feature; and that the other components of
opposer’s marks are generic terms and, thus, the “emotive
imagery” conveyed by its SEXY marks and applicant’s SO SEXY
mark is the same.
Applicant argues that the parties’ marks are
“strikingly different” in appearance [brief, p. 27], noting
that the packaging for the parties’ products is distinctly
different; and that the connotations of the parties’
respective marks is very different.
Opposer is correct that we will not consider VICTORIA’S
SECRET as a distinguishing feature of applicant’s mark, nor
Opposition No. 91125739
28
will we consider the packaging of applicant’s products, as
neither forms a part of the mark in the instant application.
In comparing opposer’s marks with applicant’s mark, the
question is not whether applicant’s mark is similar to
opposer’s individual marks, but whether applicant’s mark
would be likely to be viewed as a member of opposer’s SEXY
family of marks. The Black & Decker Corporation v. Emerson
Electric Co., ___ USPQ2d __ , Opposition No. 91158891, March
23, 2007 (TTAB). We agree with opposer that SEXY is the
dominant element of applicant’s mark, as well as the
dominant element of opposer’s family of marks and each
individual mark. The terms preceding SEXY in opposer’s
marks suggest an intended result of the product (e.g.,
CURLY, STRAIGHT, HEALTHY). We take judicial notice of the
definition in Merriam-Webster’s Collegiate Dictionary (11th
ed. 2003) of “so” as “to a great extent or degree: very,
extremely.” Applicant’s mark, SO SEXY, can also 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 that is 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
Opposition No. 91125739
29
include the term HAIR, it is the only possible object of the
phrase SO SEXY.
We find that applicant’s mark contains the same
element, SEXY, that is common to all of opposer’s family of
marks and that, as discussed above, its mark also follows
the common pattern present in opposer’s family of marks so
that applicant’s mark is substantially similar to opposer’s
family of marks. This element of the similarity of the
parties’ marks favors opposer.
Finally, applicant argues that it is unaware of any
instances of actual confusion between its mark and opposer’s
marks. However, while the record shows that applicant has
made some use of its mark, the application remains based on
intent-to-use. The record contains no indication that the
nature and scope of applicant’s and opposer’s actual use of
their marks have been such as to have created any meaningful
opportunity for actual confusion to occur. The absence of
actual confusion, under the seventh du Pont factor,
therefore is counterbalanced by the absence of evidence of
any opportunity for actual confusion to have occurred, under
the eighth du Pont factor.
Therefore, we conclude that applicant’s mark, SO SEXY,
for hair care products is sufficiently similar to opposer’s
family of marks, for identical and related hair care
products, that it is likely to be perceived as part of
Opposition No. 91125739
30
opposer’s SEXY family of marks and, thus, confusion as to
source is likely.
Decision: The opposition is sustained.