The Web-Depot, Inc.

Trademark Trial and Appeal Board

Jul 13, 1999

No. 75163283 (T.T.A.B. Jul. 13, 1999)

Paper No. 11
GDH/gdh
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB JULY 13, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Web-Depot, Inc.
Serial No. 75/163,283
_______
Edwin H. Paul of Perkins, Smith & Cohen, LLP for The Web-Depot,
Inc.
Amos T. Matthews, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Web-Depot, Inc. has filed an application to
register the mark "HOTSEX" for "entertainment services, namely:
providing adult entertainment services and information regarding
adult entertainment solely through an on-line global computer
network".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its services, so

1 Ser. No. 75/163,283, filed on September 9, 1995, which alleges dates
of first use of April 25, 1995.
Ser. No. 75/163,283
2
resembles the mark "1-900-HOT-SEXY," which is registered for
"entertainment in the nature of adult-oriented telephone
messages, and the distribution of printed materials in
association therewith,"2 as to be likely to cause confusion,
mistake or deception. Registration also has been finally
refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that, when used in connection with
applicant's services, the term "HOTSEX" is merely descriptive of
them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusals to
register.
Turning first, in view of the bearing of the strength
of applicant's mark on the question of likelihood of confusion,
to consideration of the issue of mere descriptiveness, applicant
simply states in its initial brief--without any argument in
support thereof--that the term "HOTSEX" is suggestive of its
services.3 However, in its reply brief, applicant contends that
"[a] reasonable definition of what 'HOTSEX' describes" is "a
passionate sexual act" and thus, applicant concedes, such term

2 Reg. No. 1,904,734, issued on July 11, 1995, which sets forth dates
of first use of January 1991.
3 Although, in an attempt to overcome the mere descriptiveness refusal,
applicant also offered in such brief to amend the application to the
Supplemental Register "if the issue of likelihood of confusion is
overcome," the Examining Attorney in his brief correctly points out
that the proposed amendment is improper since, under Trademark Rule
2.142(g): "An application which has been considered and decided on
appeal will not be reopened except for the entry of a disclaimer under
§ 6 of the [Trademark] Act of 1946 or upon order of the Commissioner,
but a petition to the Commissioner to reopen an application will be
Ser. No. 75/163,283
3
"is descriptive of ... the qualities and characteristics of
passionate intercourse." Applicant nevertheless maintains that
its "viewing services," which provide its customers with
"pictures of passionate intercourse," are "different from
providing the substance of passionate intercourse". According to
applicant, the term "HOTSEX" is therefore suggestive, rather than
merely descriptive, inasmuch as:
Viewing hot sex is not the same as having hot
sex. The prior rejections [by the Examining
Attorney] pointed to articles in which "hot
sex" is used by others in a descriptive
sense. But there was no analysis showing how
the use of "hot sex" in the articles make hot
sex descriptive of the viewing of the hot sex
as in the Applicant’s services.
The Examining Attorney, however, is of the view that
the term "HOTSEX[,] when applied to applicant's services[,]
conveys information about a characteristic or feature of the
identified services," namely, that applicant provides "sexually
excited entertainment rendered through an on-line global computer
network." In support thereof, the Examining Attorney relies upon
definitions he made of record from Webster's Ninth New Collegiate
Dictionary, which in relevant part define "hot" as "2 ... c :
sexually excited or receptive : LUSTFUL" and "sex" as "3 a :
sexually motivated phenomenon or behavior b : SEXUAL
INTERCOURSE". The Examining Attorney also made of record and
relies upon various excerpts of articles which he retrieved from
his search of the "NEXIS" data base, the most pertinent of which
are reproduced below (emphasis added):

considered only upon a showing of sufficient cause for consideration
Ser. No. 75/163,283
4
"It’s not as if hot sex sells [movie]
tickets." -- Star Tribune, January 23, 1997;
[She] has met a man named Rodrigo, with
whom she instantly shared a single bout of
hot sex ...." -- Atlanta Journal and
Constitution, December29, 1996;
"There’s not much more to this film than
cars, girls, and hot sex between girls in
cars ...." -- Village Voice: Film
Supplement, November 19, 1996;
"And the scenes implying hot sex between
the grandfatherly-looking J.R. and his niece
(Tracey Scoggins) are creepy." --
Indianapolis Star, November 15, 1996; and
"Shaughnessy and Ross played father and
daughter in ’Days of Our Lives.’ Now they’re
sharing hot sex scenes on the tube." --
Chicago Sun-Times, October 14, 1996.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which

of any matter not already adjudicated."
Ser. No. 75/163,283
5
it is being used on or in connection with those goods or services
and the possible significance that the term would have to the
average purchaser of the goods or services because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Consequently, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark alone
is not the test." In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
In the present case, we agree with the Examining
Attorney that, when applied to applicant’s entertainment services
of providing adult entertainment services and information
regarding adult entertainment solely through an on-line global
computer network, the term "HOTSEX" immediately describes,
without conjecture or speculation, a significant feature or
characteristic of applicant’s services, namely, that the subject
matter thereof is the depiction of and information about hot sex.
Such term merely describes the content of applicant’s vicariously
provided services. Nothing in the term "HOTSEX," when viewed in
the context of applicant’s services, requires that its customers
utilize imagination, cogitation or mental processing, or gather
further information, in order to perceive readily and precisely
the descriptive significance thereof as applied to adult
entertainment.
Turning, therefore, to the issue of likelihood of
confusion, we concur with the Examining Attorney that,
notwithstanding the mere descriptiveness of applicant’s "HOTSEX"
mark and the high degree of suggestiveness inherent in
Ser. No. 75/163,283
6
registrant’s "1-900-HOT-SEXY" mark, such marks in their
entireties are so similar in sound, appearance, connotation and
commercial impression that, if used in connection with the same
or closely related services, confusion as to source or
sponsorship would be likely. While applicant concedes that the
"1-900-" prefix in registrant’s mark "stands for a telephone
number" and that customers for registrant’s services will so
understand such "as descriptive of the means over which the
service is provided," applicant argues that because its mark
lacks any indicia of being a telephone number, it is not likely
to cause confusion with registrant’s mark.
We agree with the Examining Attorney, however, that
"the dominant and most significant feature" of registrant’s mark
is the "HOT-SEXY" portion inasmuch as consumers "would not view
the telephone no. [prefix] 1-900 as having any source indicating
capacity". As the Examining Attorney persuasively points out,
"[w]ith the large volume of usages of the telephone no. [prefix]
1-900, consumers who encounter them are likely to ... [ascribe]
little significance or weight to such designation as a source
indicator when applied to the services involved" and are instead
"likely to believe that HOT-SEXY in registrant’s mark is the
source indicator." Instead, they will ascribe the presence of
the telephone number prefix in registrant’s mark as indicating
that the services involve telephone messages rather than
regarding it as distinguishing the respective marks based on such
prefix. Thus, when considered in their entireties, applicant’s
Ser. No. 75/163,283
7
"HOTSEX" mark is substantially similar to registrant’s "1-900-
HOT-SEXY" mark.
Nevertheless, applicant argues that, due to differences
in both the nature of applicant’s and registrant’s respective
adult-oriented entertainment services and the manner in which
they are provided, confusion as to the origin or affiliation
thereof is not likely to occur. Among other things, applicant
maintains that its services "are visual only" while those offered
by registrant "are audio only"; that "customers can casually call
the [registrant’s] 1-900 number, while care is required in the
form of registration and verification of age for users of the ...
applicant’s services"; and that the methods of "payment for the
two services are quite different" in that "[t]he on-line user
will pay the entertainment provider directly" while the fee for
registrant’s services appears on and is paid for as part of the
customer’s monthly telephone bill. We find, however, that the
differences asserted by applicant simply are not meaningful
distinctions which would preclude a likelihood of confusion.4
The services at issue are instead so closely related that
consumers would assume, due to the substantial similarity between
the respective marks, that the same source provides or sponsors
both.
It is well settled, as the Examining Attorney properly
notes in this regard, that services need not be identical or even
competitive in nature in order to support a finding of likelihood
Ser. No. 75/163,283
8
of confusion. Instead, it is sufficient that the services are
related in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons under situations that would give
rise, because of the marks employed in connection therewith, to
the mistaken belief that they originate from or are in some way
associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978); and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). Here, as the Examining Attorney
accurately observes:
Both [services] feature access to the adult
entertainment industry. The only differences
are the means in which the access is
provided. Applicant provides information
through an on-line global computer network
whereas registrant offers adult-oriented
messages by means of the telephone. Thus, it
is highly likely that the same consumers
would encounter the services involved herein
under similar marketing conditions which
would cause them to believe that they come
from the same source.
Furthermore, as the Examining Attorney maintains, the
differences in the payment methods, access means and content
formats are merely ancillary or "auxiliary" to the primary
purpose of obtaining the desired sexually-oriented entertainment
available from the respective services. The subject matter of
both applicant’s and registrant’s services is essentially the
same--adult entertainment. Whether a consumer seeks to listen to

4 We note, for instance, that when services of any kind are provided on
a global computer network, they are typically delivered over telephone
lines through the use of a modem.
Ser. No. 75/163,283
9
or just view the various kinds of adult entertainment services
provided, either can be done in private in return for a
conveniently made payment of the price charged. Moreover, as the
specimens furnished with the application make clear, applicant’s
services also provide the opportunity for purveyors of adult
entertainment, including those who (like respondent) offer adult-
oriented telephone messages and distribute printed materials in
association therewith,5 to advertise their services and goods to
those interested in the type of adult entertainment services
provided by applicant.6 To consumers accustomed to viewing web-
site environments which feature such ads, it would not be
unreasonable for those who are acquainted with either applicant’s
"HOTSEX" mark or registrant’s "1-900-HOT-SEX" mark to assume, as
the Examining Attorney contends, that the same provider or source
has expanded its adult entertainment offerings to offer both
types of services.

5 While it is not unreasonable to assume that others offering various
adult-oriented entertainment services would desire to reach the same
audience as applicant’s customers and would therefore be likely to
advertise their services on its "HOTSEX" web-site, we do not mean to
suggest that applicant would knowingly foster a likelihood of
confusion by allowing registrant to advertise its "1-900-HOT-SEX"
services thereon.
6 According to applicant’s specimens, "[a]n ad placed on HotSex will be
seen by people who have the means to purchase your product or service"
and that applicant’s advertisers "have found that an ad placed with
HotSex produces a better response than they are able to get with any
comparable ad placed in any conventional print publication." The
specimens additionally explain that:
Ads on the World-Wide-Web consist of an image (or
text) inserted into a popular site, such as HotSex.
Visitors who are interested in the ad "click" on it to
follow a link to the advertiser’s site where more
information is provided. ....
Ser. No. 75/163,283
10
Finally, while applicant argues that it is unaware of
any instances of actual confusion between its mark and
registrant’s mark, we note that we not know what registrant’s
experience has been. More importantly, as applicant concedes in
its main brief, by the very nature of registrant’s services,
"people are very discreet about such calling and keep such
calling private." Applicant’s customers, therefore, are not
likely to report incidents of actual confusion. The purported
lack of any occurrences of actual confusion is thus not
dispositive, given that evidence thereof is notoriously difficult
to come by and, as correctly noted by the Examining Attorney, the
test under Section 2(d) is in any event likelihood of confusion
rather than actual confusion. See, e.g., Weiss Associates Inc.
v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed.
Cir. 1990); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992); Block Drug Co. v. Den-Mat Inc., 17 USPQ2d 1315,
1318 (TTAB 1989); and Guardian Products Co., Inc. v. Scott Paper
Co., 200 USPQ 738, 742 (TTAB 1978).
Decision: The refusals under Section 2(d) and Section
2(e)(1) are affirmed.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Ser. No. 75/163,283
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Trademark Trial and Appeal Board