Unprotected Sexstrology Leads to Unwanted Consequences
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When a trademark is listed on the Supplemental Register, it can be difficult to prove infringement.
That's because such registration is an admission by the mark's owner that the mark is insufficiently distinctive to be placed on the Principal Register—and so it does not enjoy the same protections as a mark that is.
Self-described celebrity astrologer Terry Nazon learned the hard way that protecting her trademark on the U.S. Patent and Trademark Office's Supplemental Register wasn't in the stars, in last year's precedential ruling in Terry Nazon, d/b/a Terry Nazon Inc. v. Charlotte Ghiorse, Opposition No. 91216729 (June 30, 2016).
The Trademark Trial and Appeal Board dismissed Nazon's likelihood of confusion opposition to registration of the mark Sexy Astrology for "astrology consultation," because she failed to prove proprietary rights in her mark Sexstrology, for services in the nature of "astrology horoscopes."
Nazon was not entitled to a number of evidentiary presumptions, including prima facie evidence of the mark's validity and of its registration, of Nazon's ownership of it, and of her exclusive right to use it in commerce on or in connection with the goods or services specified in the certificate.
Most relevant for the TTAB in this case was that Nazon's listing in the Supplemental Register was not evidence of a proprietary right in her mark. A mark registered on the Supplemental Register is presumed to be merely descriptive, so Nazon had the burden to establish that her alleged mark has acquired distinctiveness.
The good news for Nazon was that because the registration of her mark was of record, priority was not at issue. She was not required to establish that Sexstrology acquired distinctiveness prior to any date on which Ghiorse obtained rights in her own mark, Sexy Astrology. The question was only whether Nazon had "now established proprietary rights in Sexstrology."
She hadn't. Nazon claimed that she combined the words "sex" and "astrology" to coin the term Sexstrology for an article she was writing in 2003. She claimed to have used it "to define astrology as it pertains to men and woman [sic], as it pertains to relationships, and as it pertains to the interaction between men and women."
The Board perceptively pointed out, however, that using the term Sexstrology in various materials did not constitute use as a service mark for astrology horoscopes.
In response, Nazon provided testimony about her use of Sexstrology on her Facebook page, at the TerryNazon.com website, and in her blog. She also used @SEXSTROLOGY as her Twitter handle, but the TTAB noted that using a term as part of a Twitter handle does not necessarily evidence trademark use for a particular set of services.
The Board found that Nazon's evidence as a whole did not show proprietary rights in Sexstrology as a trademark for astrology horoscopes.
That cleared the way for applicant Ghiorse, who according to her website is an astrologer, clairvoyant, clutter consultant, and color theory specialist. Ghiorse submitted several examples of third-party use of the terms Sexstrology and Sextrology, including several books and web sites, a Twitter page, and Tumblr postings, and from Definition Of, a "community dictionary" that defined "sextrology" as "a contraction of sex + astrology; the stars to study the influence of one's sex life and sexual relationships."
Nazon herself admitted that there was voluminous third-party use of Sexstrology. Perhaps most damaging to her case, she often referred in her own testimony to Sexstrology as "the name of the subject-matter."
The Board felt that this evidence of multiple third-party and mainstream uses of Sexstrology demonstrated highly descriptive meaning. Not surprisingly, it concluded that Nazon's evidence regarding her use of Sexstrology was insufficient to overcome Ghiorse's evidence of the term's descriptiveness. Having concluded that Nazon failed to demonstrate that she had established proprietary rights in the term Sexstrology as a trademark for astrological horoscopes, the Board dismissed the opposition.
What further seemed to bury Nazon's case was the Board's addressing her claim of likelihood of confusion. The Board assumed arguendo that Nazon had established proprietary rights in Sexstrology as a mark for astrological horoscopes, and treating the mark as highly suggestive rather than descriptive and entitled to a narrow scope of protection.
The Board explained that the words Sexy and Sex have different meanings. When each is combined with the other element in the respective marks, the result is that Nazon's mark conveys that her "astrology horoscopes" services are concerned with the effect of the stars on one's romantic life or the romantic compatibility of various astrological signs.
Ghiorse's mark, Sexy Astrology, by contrast, did not convey a similar meaning to the Board. The Board felt that Ghiorse's mark clearly referenced Astrology, and directly told consumers that this is the subject of Ghiorse's "astrology consultation" services. However, the term Sexy, as used with Astrology, did not have a clear meaning to the Board. "What is Sexy Astrology?," it asked. "Astrology that is interesting or attractive, like a sexy stock?"
The Board found the involved marks, when considered in their entireties, different in meaning and commercial impression. It concluded that confusion was not likely, so even if Nazon had established trademark rights in the mark Sexstrology, she did not prove a likelihood of confusion.
Assuming Sexstrology is protectable, is the Board correct that Sexy Astrology and Sexstrology are not confusingly similar? I'm not sure a practitioner confronted with that question would agree. In other words, knowing that Sexstrology is out there, clearing Sexy Astrology might be a tall order. The main benefit of the Supplemental Register is supposed to be that no one else can register a confusingly similar mark.
And why did the Board go to the trouble of finding no likelihood of confusion? The Board does not often take on unnecessary issues. Was it concerned about Nazon appealing the refusal?
One also has to wonder how much use is enough to obtain protectable trademark rights in a term. If Nazon's mark had been slightly less descriptive, would the amount of use evidence she needed to produce have also lessened? The amount of use necessary to demonstrate protectable trademark rights is never a set amount and is always difficult to determine. I'm not sure this decision further clarifies that.
The unsexy truth? Maybe Ghiorse saw it coming, but this case seems to raise more questions than it answers. Crystal ball, anyone? Or shall we turn our eyes to the stars?