Wednesday, June 18, 2014

Fame of NAUTICA Mark Yields 2(d) Opposition Victory over NAUTI LIFE for Clothing

Opposer Nautica sailed to victory on the fame of its NAUTICA mark in this Section 2(d) opposition to registration of NAUTI LIFE for various clothing items. Opposer's long use of the NAUTICA mark, its impressive sales and substantial advertising expenditures, and unsolicited media attention regarding the brand, convinced the Board that the mark, for Section 2(d) purposes, is famous for apparel. The Board once again declined to reach the issue of dilution by blurring. Nautica Apparel, Inc. v. Nauti Marine, Opposition No. 91205138 (June 16, 2014) [not precedential].


Fame is, of course, a dominant factor in the likelihood of confusion analysis. The goods of the parties were identical in part, and so the Board presumed that those goods travel in the same, normal channels of trade to the same classes of consumers. The identified goods include inexpensive clothing items offered to the general public.

As to the marks, the Board pointed out once again that when the involved goods are identical (in part), a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board found the marks similar in sound and appearance, noting that consumers are inclined to focus on the first word or portion of a mark. "Naut" is defined as an abbreviation of "nautical," and so applicant's mark, when used with bathing suits, flip-flops, and the like, conveys the idea of a nautical life or nautical lifestyle. The addition of the suggestive word "life" in applicant's mark is likely to be viewed as identifying a variation or subset of opposer's clothing line. Indeed, Nautica has registered its mark in various forms, for clothing items.

Finally, the Board noted that there is no evidence of third-party use of NAUTICA, and there is evidence that opposer policed its mark.

In finding confusion likely and sustaining the opposition, the Board repeated the CAFC's observation that "there is no excuse for even approaching the well-known mark of a competitor inasmuch as 'a strong mark ... casts a long shadow which competitors must avoid.'"

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Text Copyright John L. Welch 2014.

1 Comments:

At 1:38 PM, Blogger Griff Thomas said...

Been trying to post comment so apologies if duplicate. John good analysis. Love seeing TTAB mentioned on cover of Washington Post since most human beings never heard of it. Griff Thomas, Edior-in-Chief, Allen's Trademark Digest

 

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