A ‘Sexy’ Subject

Victoria Secrets Stores Brand Management, Inc. v. Sexy Hair Concepts, LLC

U.S. District Court for the Southern District of New York
April 8, 2009

Judge: Gerald E. Lynch, U.S. District Judge

ISSUE: This was an appeal by the plaintiff of a TTAB decision sustaining defendant’s opposition to plaintiff’s application of the trademark SO SEXY for hair care products. Defendant, producer of the SEXY HAIR products line, moved that TTAB decision be affirmed. The real issue is whether “SEXY” is descriptive or suggestive. Plaintiff argues descriptive; defendant argues suggestive.

SURVEY EXPERTS: Dr. Michael Mazis, Ph.D., a professor emeritus in marketing from American University, was retained by the plaintiff to design a survey (presumably a mall intercept survey) to test whether actual customers associate the word, “sexy,” with the defendant. A second plaintiff expert, Gerald L. Ford, partner of the Huntington Beach (CA)-firm of Ford Bubala Associates and an emeritus faculty member of California State University, Long Beach, introduced two additional surveys testing likelihood of confusion. One survey was a mall intercept effort and the other utilized the Internet.

RESULTS: The Mazis survey results showed a 1.6% of those questions associated “sexy” with the defendant. Both Ford surveys indicated no likelihood of confusion.

REBUTTAL ARGUMENTS. Defendant produced no survey experts to critique either Mazis or Ford. However, defendant argues Mazis survey was “flawed” and introduced a “Daubert” motion to exclude it. Defendant also sought to exclude Ford’s findings. The key to the defendant’s argument was “sexy” is suggestive and NOT descriptive.

RESOLUTION: Defendant’s attempts to exclude Mazis and Ford surveys denied. Defendant’s motion for summary judgment denied.

SUBJECTIVE OPINION: The descriptive v. suggestive argument is extremely difficult to prove because of the fine line between the two concepts. Both Mazis and Ford are well known and highly regarded survey experts. Attempts to use Daubert arguments to discredit their work clearly made no sense as articulated by Judge Lynch. The plaintiff, however, took a risk by using two survey experts. In this instance, it did not damage the plaintiff’s case, but when two or more experts are used on the same side, there is always the chance that the other side can play one off against the other.