Sexy Hair Concepts, LLCv.Dean V. Christal

Trademark Trial and Appeal Board

Dec 23, 2008

No. 91177752 (T.T.A.B. Dec. 23, 2008)

Mailed: December 23, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sexy Hair Concepts, LLC
v.
Dean V. Christal
_____

Opposition No. 91177752
_____

Roberta Jacobs-Meadway, Jay K. Meadway, and Sean P.
McConnell of Eckert Seamans Cherin & Mellot, LLC, for Sexy
Hair Concepts, LLC.

Dean V. Christal, pro se.
_____

Before Walters, Wellington, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On September 28, 2006, applicant, Dean V. Christal,
applied to register the mark THE SEXY SIDE OF SCIENCE in
standard character form on the Principal Register for “Hair
care preparations, color treatment products, namely
shampoos, conditioners, hair gels, hair creams and lotions,
hair sprays, hair mousses, hair tonics, non-medicated skin
care preparations, namely, skin cleanser, skin moisturizer,
skin cream, skin lotion, cosmetics, namely, facial make-up,
foundation make-up, eye make-up, eye cream, eye shadow,
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91177752
2
cheek blush, make-up remover, lipstick, lip gloss, lip balm,
body lotion, bath soap, bath oils, essential oils for
personal use, massage oils, aromatherapy oils, perfume,
cologne, toilet water, incense, liquid soaps for hands, face
and body,” in International Class 3.1 The application is
based on applicant’s allegation of a bona fide intention to
use the mark in commerce.
On June 11, 2007, opposer, Sexy Hair Concepts, LLC,
opposed the registration of applicant’s mark on the ground
that applicant’s mark is likely to cause confusion with
opposer’s marks. Opposer asserts that it owns Registration
No. 2403396 for the mark SEXY HAIR in typed or standard
character form 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, and hair mousse,” in International
Class 3.2 The registration was issued November 14, 2000,
and it contains a disclaimer of the word “Hair.”
In its notice of opposition, opposer also
alleges that it “has taken steps to develop a family of
‘SEXY’ marks for hair care preparations, including: ‘SEXY
HAIR CONCEPTS,’ ‘HEALTHY SEXY HAIR,’ ‘BIG SEXY HAIR,’ ‘CURLY
SEXY HAIR,’ SHORT SEXY HAIR,’ and ‘SEXY HAIR (Design),’

1 Serial No. 77010028.
2 Sections 8 and 15 affidavits accepted and acknowledged.
Opposition No. 91177752
3
among others.” (Notice of Opposition at 2).
Opposer maintains that applicant’s “mark for hair care
products is confusingly similar to Opposer’s registered
‘SEXY HAIR’ trademarks and also to the family of ‘SEXY’
marks established by Opposer.” (Id. at 3).
Applicant denied the salient allegations of the
notice of opposition. Only opposer filed a brief in the
case.
The Record
The record consists of the pleadings; the file of the
involved application; the testimonial deposition of James
Morrison, opposer’s chief executive officer, with exhibits;
the testimonial deposition of John F. Metzger, a litigation
paralegal at opposer’s law firm, with exhibits; and
opposer’s four notices of reliance on a status and title
copy of its SEXY HAIR and other trademark registrations
(specifically, HOT SEXY HIGHLIGHTS, SEXSYMBOL, WILD SEXY
HAIR, SEXY HAIR CONCEPTS (and design), SEXYBATH&BODY,
HEALTHY SEXY, SHORT SEXY, AND STRONGSEXYHAIR), applicant’s
responses to opposer’s interrogatories and requests for
admissions, and excerpts from printed publications.3

3 Although Registration Nos. 2553996 (HOT SEXY HIGHLIGHTS),
2636664 (SEXSYMBOL), 2707751 (WILD SEXY HAIR) and 2823999
(SEXYBATH&BODY) were not pled in the notice of opposition, we have
considered them because applicant has not objected to the unpleaded
registrations. Therefore, the notice of opposition is deemed amended to
conform to the evidence under FRCP 15(b).

Opposition No. 91177752
4
Applicant did not submit any testimony or evidence.
Priority and Standing
As a result of opposer’s submission of status and title
copies of its SEXY HAIR registration (No. 2403396), among
others, opposer has established its priority as well as its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). As dicussed further below, opposer also has a
family of SEXY marks that was created before applicant’s
filing date; thus opposer has priority as to this family of
marks vis-à-vis the involved application.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See 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).
Opposition No. 91177752
5
The Goods and Channels of Trade
A number of goods listed in the identification of goods
covered by opposer’s SEXY HAIR registration are also listed
in the identification of goods covered by the application.
These include “shampoos,” “conditioners,” “hair lotions”
“hair creams” “hair gels” “hair sprays” “color” and “hair
mousse.” Indeed virtually every product listed in opposer’s
SEXY HAIR identification of goods is also listed in the
application. Accordingly we find substantial overlap
between opposer’s and applicant’s identified goods.
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, then, that the hair care products of applicant and
opposer are (or will be, in the case of the intent-to-use
application) sold in all normal channels of trade to all
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. These du Pont factors heavily
favor finding a likelihood of consumer confusion.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
Opposition No. 91177752
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entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Preliminarily, we note that
the more similar the goods at issue, the less similar the
marks need to be for the Board to find a likelihood of
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). In
comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Opposer claims a family of marks based on the common
Opposition No. 91177752
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term SEXY.4 (Opposer’s Brief at 1). 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 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). Recognition of a family of
marks is achieved when the pattern of usage of the common
element is sufficient to be 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.” (Morrison
depo. at 27:7-10 and exhibits). Except for the mark SEXY
HAIR, opposer’s family of marks is characterized by the term

4 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.
Opposition No. 91177752
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SEXY, generally preceded by a word that suggests an intended
result of the product, and generally 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). Opposer
has also submitted evidence of its registrations for marks
not including or referencing the word “hair,” such as
SEXSYMBOL, SHORT SEXY, and HOT SEXY).
We must consider whether “sexy” is sufficiently
distinctive to function as the common element of a family of
marks. 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
Opposition No. 91177752
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of hair after the use of these products.
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, and has done so since at least
2002. (Morrison depo. at 27:7-10 and exhibits). 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 (Id. at 27:25, 28:9-18, and
exhibits). The SEXY element is emphasized by the use of
different fonts and colors for the SEXY portion of opposer’s
marks on packaging and in promotional materials. (Id. at
18:15-20 and exhibits). 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
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. (Id. at 19:1-2 and
exhibits). 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
Opposition No. 91177752
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the various brands as the SEXY HAIR or SEXY HAIR CONCEPTS
“collection” or “line” of products since at least 2002, well
before applicant’s filing date (Id. at 26:24-29:25, and
exhibits; Notice of Reliance). We are persuaded that
opposer has established a family of marks based on the
common element SEXY, and that the priority date for
opposer’s SEXY family of marks precedes applicant’s earliest
priority date for THE SEXY SIDE OF SCIENCE.
We consider, next, the market strength of opposer’s
family of marks. The record 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. In particular, opposer submitted a
notice of reliance with excerpts of printed publications.
Some of these excerpts use the word “sexy” in a non-
trademark manner unrelated to opposer, while others include
both trademark and non-trademark uses of “sexy.” The
following are examples:

“Since then, Sexy Hair slowly has turned the image of a
sexy, fun niche brand into one that is more elegant and
mature.” Women’s Wear Daily, September 7, 2007.

“There is nothing subtle in O’Rourke’s life, as one might
expect from someone who runs a company that has both Sexy
and Hair in the name.” LA Daily News, March 10, 2006.

“Four steps to sexy, messy tresses” Boston Herald, 10/21/04.

“Sexy Hair Concepts Wants Americans to Show Off Their
Sexiest Hair in a Reality Contest” Household & Personal
Products Industry, April 1, 2006.
Opposition No. 91177752
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“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.

“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.” . . . . “At Sexy
Hair Concepts, a new product line called Wild Sexy Hair was
being promoted. . . ” Chicago Tribune, March 12, 2003.

“This month Sebastian launched three new Raw hair products
under the Xtah line. . . Xtah Loose Locks separates the hair
with a flexible, sexy and ‘undone’ look. . . Sexy Hair
Concepts. . . introduced its new Healthy Sexy Hair
Moisture Collection.” Household and Personal
Products Industry, December 1, 2002.

“L’Oreal turned to its consulting hairstylist Oribe, who
works with celebrities including Jennifer Lopez, Sharon
Stone and Gwyneth Paltrow, according to the company, in
developing its latest styling products. ‘The tousled, sexy
look is really popular with women today,’ Oribe observed.”
Household and Personal Products Industry, May 1, 2001.

However, regarding third-party use or registration and
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, 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
Opposition No. 91177752
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field. Opposer’s CEO has also testified that he is unaware
of any unpoliced use by any third party of the word SEXY in
its mark. (Morrison depo. at 36:21-37:4).
Moreover, opposer has testified as to significant
advertising and marketing of its family of SEXY marks. In
particular opposer has testified to having over 100 products
(Morrison depo. at 22:1), with advertising expenses of
almost $1.5 million in 2007, with significant annual growth.
(Id. at 28:9-18 and exhibits). Opposer has also noted a
“very high level of success” in getting its SEXY products
placed on major, national television shows, such as the
Today Show, the Jay Leno Show, The View, and Oprah, among
others. (Id. at 29:10-25 and exhibits). Through its public
relations firm, opposer has also gotten write-ups in major
magazines such as Allure, Vogue, Cosmo, Teen Vogue, Essence,
and Harper’s Bazaar. (Id. at 31:14-16).
Overall, opposer is one of the top 10 or 11 largest
hair care manufacturing companies, out of “hundreds.” (Id.
at 31:10-16). Opposer’s CEO testified that in his estimate
the SEXY products are sold in one quarter of all hair salons
in North America. (Id. at 32:8-13). This resulted in $62
million in sales volume to opposer in 2007, with about $250
million in retail sales. (Id. at 34:14-35:4 and exhibits).
While this evidence does not establish opposer’s SEXY marks
as famous, it does establish some renown for opposer’s
Opposition No. 91177752
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family of SEXY marks. Thus, opposer’s family of marks is
entitled to the 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, but still
inherently distinctive. 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”).
Finally, we consider whether the marks in their
entireties are so dissimilar as to make it “unlikely that
confusion would result from the simultaneous use of the
marks.” Kellogg Co. v. Pack’Em Enterprises Inc., 21 USPQ2d
1141, 1145 (Fed. Cir. 1991). Clearly, the dominant element
in opposer’s family of marks is SEXY. Applicant’s mark is
THE SEXY SIDE OF SCIENCE. The word “sexy” is not clearly
dominant in applicant’s mark. Rather, it appears to balance
and modify the word “science,” thereby showcasing a
particular link between “sexy” and “science.” Nevertheless,
opposer has shown that it is not unusual for hair care
products to be designed and marketed as scientific.
(Morrison deposition at 10:18-21; noting that opposer’s
products have “proprietary ingredients, exclusive formulas,
Opposition No. 91177752
14
exclusive and unique compounds, and different scientific
combinations of ingredients that are unique to Sexy Hair.”).
Indeed, each of opposer’s products has a special scientific
formula designed for a particular type of hair. (Id. at
11:2-3; explaining that for each SEXY HAIR product, “each
one is a specific answer or remedy to a hair need.”). This
is evident in opposer’s various marks, many of which
indicate the desired result of the product on the consumer’s
hair (i.e., CURLY, STRAIGHT, WILD), based on opposer’s use
of tailored, scientific formulas for each product. Id. As
a result, consumers may also mistakenly believe that
applicant’s mark is another one of opposer’s SEXY family-
branded products with a reference to the “scientific”
ingredients thereof. We therefore find that this du Pont
factor favors finding a likelihood of consumer confusion.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that the goods
substantially overlap and are likely to be marketed through
the same channels of trade; opposer’s mark SEXY HAIR and
family of SEXY marks have a degree of renown such that the
marks are strong despite the suggestive nature of SEXY; and
the marks are similar. Resolving doubt in favor of opposer
as the prior registrant, which we must, we find a likelihood
of consumer confusion between opposer’s mark SEXY HAIR and
Opposition No. 91177752
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its family of SEXY marks and applicant’s mark, THE SEXY SIDE
OF SCIENCE. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); Miss
Universe L.P. v. Community Marketing Inc., 82 USPQ2d 1562,
1572 (TTAB 2007).
DECISION: The opposition is sustained.