Sexy Hair Concepts, LLCv.Perfect Plus, Inc.

Trademark Trial and Appeal Board

Jul 3, 2008

No. 91170863 (T.T.A.B. Jul. 3, 2008)

Mailed:
3 July 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Sexy Hair Concepts, LLC
v.
Perfect Plus, Inc.
_____

Opposition No. 91170863
to application Serial No. 78573653

_____

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

Richard H. Zaitlan of Pillsbury Wintrop LLP for Perfect
Plus, Inc.1
______

Before Holtzman, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On February 23, 2005, applicant, Perfect Plus, Inc.,
applied to register the mark SEXY ‘N SASSY in standard
character form on the Principal Register for “Hair care
products, namely, shampoo, conditioners, hair spray, styling
gels, and mousse” in Class 3. The application is based on
applicant’s allegation of a bona fide intention to use the
mark in commerce.

1 Applicant did not file a brief in this case.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91170863
2
On May 12, 2006, 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 the following goods: 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 Class 3. The registration was issued November 14, 2000,2
and it contains a disclaimer of the word “Hair.”
In its notice of opposition (p. 2), 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),’
among others.”
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.” Notice of Opposition at 3.
Applicant has denied the salient allegations of the
notice of opposition.

2 Affidavits under Sections 8 and 15 have been accepted and
acknowledged.
Opposition No. 91170863
3
The Record
The record consists of the pleadings, the file of the
involved application; the testimonial deposition of Mark
Stiller, opposer’s chief operating officer, with exhibits;
the testimonial deposition of Jim Morrison, opposer’s chief
executive officer, with exhibits; the testimonial deposition
of John F. Metzger, the senior legal assistant of opposer’s
law firm, with exhibits; the testimonial deposition of
Kenneth Browning, applicant’s chief executive officer, with
exhibits; opposer’s notices of reliance on a status and
title copy of its SEXY HAIR registration, applicant’s
responses to opposer’s interrogatories, and excerpts from
printed publications. Applicant also submitted a notice of
reliance on an Office action in another trademark
application.3
Priority
As a result of opposer’s submission of status and title
copies of its registration (No. 2403396), which also
supports a non-frivolous argument of confusion, 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

3 The notice of reliance also indicated that applicant was
relying on the testimonial deposition of Kenneth Browning, which
is already of record in its entirety. Objections to applicant’s
notice of reliance with respect to this deposition will not be
separately considered.
Opposition No. 91170863
4
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
Evidentiary Questions
Opposer has raised numerous objections to the testimony
of applicant’s witness. Opposer objects to Browning
Exhibits 106-118 and the related testimony because this
testimony and the related exhibits concern internet searches
that the witness did not perform. See, e.g., Browning dep.
at 53:
Q. Moving on, let’s just take a look at Exhibit 108.
How many pages did you print out?

A. For Exhibit 108?

Q. Right. Did you do these searches?

A. No. I did not.

Q. Who did the searches?

A. Counsel.

Q. Did you review the searches?

A. Yes.
We sustain opposer’s objections to these exhibits. See
Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741, 1748
(TTAB 2006):
Starbucks has objected to several printouts of excerpts
apparently taken from Internet websites that Ruben
sought to introduce during his testimony deposition.
These excerpts contain criticisms of Starbucks and/or
the price of goods sold by Starbucks. During Ruben's
deposition, Starbucks’ counsel objected to this
evidence as inadmissible hearsay that was not properly
authenticated by the person with first-hand knowledge
who searched for and downloaded the information. In
Opposition No. 91170863
5
fact, on cross examination, Mr. Ruben admitted that
these particular searches were conducted, and the
search results printed out, by someone in his counsel's
office. While he allegedly conducted a similar search
himself, he was not aware of the parameters of the
search associated with the web pages submitted during
his testimony, and was not able to name the individual
who conducted the Internet search. Accordingly, this
evidence has not been properly authenticated, and we
have given it no consideration.

Opposer also objects to Browning Exhibits 119 and 120
and the related testimony. Opposer points out that
applicant is “improperly attempt[ing] to make of record
third-party registrations through search reports … Only
legible soft copies of registrations or the electronic
equivalent qualify as evidence of the third party
registrations.” Brief at 3. We agree. See Centraz
Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698,
1701 (TTAB 2006) (“The trademark search report is not
credible evidence of the third-party uses or registrations
listed in the report. Accordingly, the listings therein are
not entitled to any probative value”) (citations omitted).
Exhibit 119 is a USPTO printout that is a list showing the
registration and serial number along with the mark and the
Live/Dead status of the registration. We do not consider
lists of registrations. Plus Products v. Pharmavite
Pharmaceutical Corp., 221 USPQ 256, 260 (TTAB 1984)
(“Applicant has attempted to show that opposer's mark is
weak by filing a notice of reliance on a long list of third
party registrations and applications for registration which
Opposition No. 91170863
6
incorporate the term ‘PLUS’ as part of the mark. The lists
of registrations submitted by applicant are unsupported by
any copies of the registrations, which are not matters for
judicial notice. As such, they are not properly of record
and cannot be considered”).
We overrule opposer’s relevancy objections to exhibit
121 and related testimony. While evidence of use of a term
on different goods is not highly relevant, it is not
necessarily irrelevant either. Opposer also objects to
exhibits 105, 121, and 122 and related testimony on the
ground that opposer requested the information and applicant
“failed or refused to produce” the information during
discovery. Brief at 4. We do not understand that applicant
failed or refused to produce the information. Applicant’s
responses were not a denial that documents existed or a
simple refusal to answer the interrogatories on the ground
that the information was irrelevant. See, for example:
Interrogatory No. 1:
Identify all products with which Applicant uses
Applicant’s Mark.

Subject to and without waiving its objections,
Applicant responds as follows: “Applicant uses
Applicant’s Mark in connection with the SEXY HAIR4 hair
care products sold on QVC.com.”

Interrogatory No. 15:
Identify all uses by any entity other than Opposer and
Applicant of the term SEXY as a name or mark, or
component of a name or mark for any hair care products.

4 Interestingly, applicant’s mark is SEXY ‘N SASSY not SEXY HAIR.
Opposition No. 91170863
7
Applicant hereby incorporates by reference and
explicitly reasserts the General Objections in this
response. Applicant further objects to this
interrogatory because it purports to seek information
that is not within Applicant’s knowledge. Applicant
further objects to this interrogatory because it is
vague and ambiguous, overbroad, unduly burdensome,
harassing, and purports to seek information that is
neither relevant to, nor likely to lead to the
discovery of admissible evidence.

Unlike opposer’s cited case of Weiner King, Inc. v. The
Wiener King Corp., 615 USPQ 512, 204 USPQ 820 (CCPA 1980),
applicant’s answers did not amount to a statement “that all
of the information concerning the issues … that [applicant]
would rely on with respect to those issues” was somehow
already of record. Id. at 828. This case is more similar
to Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff'd on
other grounds, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir.
1998). In that case the party “objected to both the
interrogatory and the production request as ‘vague and
ambiguous, and overly burdensome.’ These objections were
not of a nature which would have led petitioner to believe
that no such documents existed.” Id. at 1733. We therefore
overrule opposer’s objection to these documents.5
We also overrule opposer’s objections to the magazine
covers in Exhibit 105. These are portions of printed
publications and they are the proper subject of a notice of
reliance and not irrelevant. 37 CFR § 2.122(e).

5 Petitioner did not file a motion to compel.

Opposition No. 91170863
8
Likelihood of Confusion
Next, we address the issue of likelihood of confusion
under Section 2(d). Here, applicant’s mark is SEXY ‘N SASSY
and opposer’s mark is SEXY HAIR. In these cases, we analyze
the facts as they relate to the relevant factors set out in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
We begin by comparing the parties’ goods. Applicant’s
goods are hair care products, namely, shampoo, conditioners,
hair spray, styling gels, and mousse and opposer’s goods are
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. Applicant’s goods are either identical or
virtually identical to opposer’s goods, i.e., shampoo,
conditioners, hair spray, styling or hair gel, and mousse.
Applicant’s goods are included within opposer’s
identification of goods and there is no legal difference
between the goods.
We also must consider the goods as they are identified
in the identification of goods in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Opposition No. 91170863
9
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). Therefore,
despite any actual differences in type or quality of the
parties’ goods, we must assume that they are identical.
The fact that the goods are identical also means that
we must assume that purchasers and channels of trade are
also identical. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
Opposition No. 91170863
10
same channels of trade, and be sold to the same class of
purchasers”).
Another important point that we must consider is that
when goods are identical, marks do not have to be as similar
before there is confusion. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992) (“When marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines”).
The next “DuPont factor requires examination of ‘the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973)). We must compare the marks in their entireties, and
not simply the individual features of the marks. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed.
Cir. 1993). Applicant’s mark is SEXY ‘N SASSY while
opposer’s mark is SEXY HAIR. Both marks are shown in typed
or standard character form and that means that there is no
viable difference in the marks based on their stylization.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
Opposition No. 91170863
11
(Fed. Cir. 1983). In effect, we must assume that the marks
are or can be displayed in the same stylization. Wet Seal
Inc. v. FD Management Inc., 82 USPQ2d 1629, 1639 (TTAB 2007)
(“[B]ecause applicant's mark ARDENBEAUTY is presented in
typed or standard character form, the wording could
reasonably be displayed in the same block letter form as
ARDEN B, thereby increasing the visual similarity of the two
marks”} and In re Hester Industries, Inc., 231 USPQ 881, 882
n.6 (TTAB 1986) (“Inasmuch as the drawing of applicant's
mark is in typed form, applicant is not limited to any
particular form of display, and might use its mark in the
same form as registrant”).
Next, we look at the similarities between the words in
the marks SEXY ‘N SASSY and SEXY HAIR. They are similar
inasmuch as they both begin with the same word SEXY, which
is a factor that supports a conclusion that confusion is
likely here. Palm Bay Imports, 73 USPQ2d at 1692 (“To be
sure, CLICQUOT is an important term in the mark, but VEUVE
nevertheless remains a ‘prominent feature’ as the first word
in the mark and the first word to appear on the label. Not
only is VEUVE prominent in the commercial impression
created by VCP's marks, it also constitutes ‘the dominant
feature’ in the commercial impression created by Palm Bay's
mark”). See also Cunningham v. Laser Golf Corp., 55 USPQ2d
at 1845.
Opposition No. 91170863
12
The only other word in opposer’s mark is the word
“hair,” which opposer has disclaimed. “Regarding
descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846, quoting,
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752
(Fed. Cir. 1985). The Federal Circuit has noted that “a
disclaimed term… may be given little weight, but it may not
be ignored.” M2 Software Inc. v. M2 Communications Inc.,
450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). In
this case, we find that the term “Hair” is particularly
entitled to little weight inasmuch as both applicant’s and
opposer’s goods are identified as “hair care products.”
Because both parties’ products are products for a person’s
hair, it is unlikely that purchasers will rely on the term
“hair” to distinguish one party’s hair care products from
those of others.
However, applicant’s next term (‘N SASSY) is different
from any word in opposer’s mark. This is a fact in favor of
applicant. However, we do 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.
Opposition No. 91170863
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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.
We add that opposer uses its SEXY HAIR marks 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. Stiller dep. at 11-12,
Exhibit 1. We do not reach the issue of whether this is a
family of marks, but the evidence does show that consumers
are accustomed to numerous products with a variation of
opposer’s SEXY HAIR mark originating from opposer. This
fact favors opposer’s argument that the marks are similar.
Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1700 (TTAB
1987) (“The fact that Humana has itself used variations of
its house mark by adding matter to it, e.g., HUMANA CARE and
HUMANA CARE PLUS, increases the likelihood that HUMANOMICS
would be perceived as another variation. We do not consider
the above to be a “family of marks” result…”).
We also have taken into consideration the fact that the
term “Sexy” is hardly an arbitrary term for the parties’
goods. However, opposer is relying on a mark that is
registered on the Principal Register and applicant has not
petitioned to cancel the registration. Therefore, we must
Opposition No. 91170863
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assume that the mark is inherently distinctive. 15 U.S.C.
§ 1057(b).
The starting point in this case is that opposer's
registrations are valid and enjoy the benefits of
section 7(b). The next point is that this is an
opposition only and in an opposition, this court has
always held, the validity of the opposer's
registrations are not open to attack. As long as a
registration relied on by an opposer remains
uncancelled, we treat it as valid, entitled to the
section 7(b) presumptions, and take it at face value.

Contour Chair-Lounge Co., Inc. v. The Englander Co., Inc.,
324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) (citations
omitted).
We note that applicant has submitted evidence
apparently to show that the term “Sexy” is commonly used to
refer to a variety of products, including some hair care
products. Browning Ex. 104 – Allure – “Sexy, Speedy
Hairstyles”; Allure – “Fresh Sexy Hair”; Mademoiselle –
“Sexy Hair & Makeup for a melt-proof summer”; Mademoiselle –
“22 Sexy New Looks”; Glamour – 578 Love, Sex, Hair & Style
Dos”; Glamour – Happy, Sexy, Healthy”; and Glamour – Sexy
Hair You’ll Love”).
Opposer, on the other hand, has shown that its mark has
acquired some renown. It has been featured on television
and in magazines and internet advertising. See, e.g.,
Mobile Register (Alabama), January 3, 2006 (“If you’re
desperate for housewife hair you can have that, too.
Longoria says she keeps up her coif with Big Sexy Hair Spray
Opposition No. 91170863
15
and Play Hairspray”); Cleveland Plain Dealer, April 21, 2004
(“On the product front, he praises the Sexy Hair Concepts
lines, which includes Big Sexy Hair Root Plum Plus (great
for curly or straight hair), Big Sexy Hair Big Shine Shine
Spray (It doesn’t weigh hair down at all) and Big Sexy Hair
Flip It Over Full & Wild Spray”); Chicago Tribune, March 12,
2003 (At Sexy Hair Concepts, a new product called Wild Sexy
Hair was being promoted while hair aficionados grooved to
vinyl records spun by a disc jockey”); and Los Angeles Daily
News, June 28, 2003 (“The trendy edge led JC Penney to stock
his wares, adding the Big, Short and Healthy Sexy Hair
lines”). Opposer’s SEXY HAIR products have been featured on
The Today Show, Entertainment Tonight, and HBO’s Entourage,
CBS’s How I Met Your Mother, ABC’s The View, and on the show
Ugly Betty. Morrison dep. at 16–17; Stiller dep. Exhibits
34 and 35. Sales of its SEXY HAIR products have risen
substantially over the last several years from about $4
million in 1999 to more than $51 million in 2006. Stiller
dep. at 14 and Exhibit 1.6 Opposer has increased its
selling and marketing expenses from $4.2 million in 2003 to
more than $6.2 million in 2006. Stiller dep. at 77. While
opposer’s mark may be highly suggestive, opposer’s evidence

6 Opposer’s witness estimated that these wholesale figures would
be more than triple at retail.
Opposition No. 91170863
16
shows that the mark is not so weak that it is entitled to
only a very narrow scope of protection.
We add that the fact that a mark is not unique does not
mean that it is entitled to a very narrow scope of
protection. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d
1187, 1198 (TTAB 2007) (“[W]hile star designs in and of
themselves may be weak, there is no evidence which would
effectively diminish the scope of protection to be accorded
opposer's S and star design mark as a whole”). See also In
re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) (ERASE
is confusingly similar to STAIN ERASER on the Supplemental
Register both for stain removers).
While we can examine the individual elements of the
marks, ultimately, we must compare the marks in their
entireties and determine if they are similar or dissimilar.
National Data, 224 USPQ at 751 (“[T]here is nothing improper
in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks
in their entireties. Indeed, this type of analysis appears
to be unavoidable”). We “note that similarity is not a
binary factor but is a matter of degree.” In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir.
2003). In this case, it is clear to us that the marks are
Opposition No. 91170863
17
more similar than they are dissimilar and this factor
supports a conclusion that confusion is likely.
Another factor that we consider is the fact that
opposer is the prior registrant. To the extent that we have
doubts about whether there is a likelihood of confusion, we
resolve them, as we must, against the applicant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988) and In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179
USPQ 729, 729-30 (CCPA 1973). See also In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948
(Fed. Cir. 2004) quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir.
2002) (“Like the Board, this court ‘resolves doubts about
the likelihood of confusion against the newcomer because the
newcomer has the opportunity and obligation to avoid
confusion with existing marks’”).
When we consider that the goods in this case are
legally identical and that the channels of trade and
purchasers are also identical, when the marks SEXY HAIR and
SEXY ‘N SASSY are used on these products, a non-de minimums
number of consumers are likely to believe that the sources
of the products sold under these marks are in some way
related or associated.
Opposition No. 91170863
18
Decision: The opposition to the registration of
application No. 78573653 is sustained.