Intellectual Property Law

Housework. And sex keeps selling (but you knew that).

By Anthony Verna, Esq.

In the meanwhile, the blog (oh, how I hate that word) did receive a few accolades and I would like to acknowledge them now.

LexisNexis recognized this blog in its Trademark and Copyright Law Centers. Just look for this blog in the "Top Blog" page just off the centers' main web pages.

The ABA Journal's website has included this blog in its listings.

This blog can also be found on Justia.com's listing of blogs.

Thank you everyone.

*****

There are some sexy trademark battles, after all.

Victoria's Secret is fighting Sexy Hair Concepts LLC over - yes - the word sexy. The Trademark Trial and Appeal Board ruled that Victoria's Secret's use of the trademark "So Sexy" for its own hair care line causes consumer confusion with Sexy Hair Concepts LLC, which uses the word "sexy" in its own family of trademarks for haircare.

Victoria's Secret has asked a federal court to review the decision because of a study showing that there is not a distinctive association between the word "sexy" and haircare products with Sexy Hair Concepts LLC.

I am in the wrong market (being male, I think, eliminates me from using any hair care products described as "sexy"), but Sexy Hair Concepts does seem to have created a multi-million dollar business (its own briefs filed with the Trademark Trial and Appeal Board state that the company's sales went from $15 million in 2001 to $23 million in 2003).

So, the company has established a trademark that is not descriptive ("sexy" does not describe something intrinsic to hair products - only how the company hopes that the consumer's hair looks after using the products), has strong sales and many advertising campaigns to tie the phrase "Sexy Hair" to its company. Doesn't it - effectively - have the rights to the word "sexy" in hair care?

The goods are similar (hair care products). They are sold in similar channels (with other hair care products). The marks are similar enough (they both have the same main, dominant word - "sexy"). These are the basic reasons that the TTAB upheld the "Sexy Hair" family of marks to stand as strong marks, but Victoria's Secret "So Sexy" marks in the same industry are not allowed.

I do not expect a federal court to overturn this decision.

For all the readers, since the next post will be a mailbag, can you think of a time when the same trademark exists in more than one product?

Full post as published by Trademark, Copyright and Entertainment Law Forum on June 02, 2008 (boomark / email).