Friday, November 06, 2015

"NAUTIGIRL & Design" Not Confusable With or Dilutive of NAUTICA, Says TTAB

The Board dismissed a petition for cancellation of a registration for the mark NAUTIGIRL & Design shown immediately below, for "tote bags for boating supplies," "mugs and beverage glassware," and "playing cards," finding the mark not likely to cause confusion with, and not likely to dilute, the registered mark NAUTICA and variations, for bags, glassware, and clothing. Nautica Apparel, Inc. v. Christine P. Palmerton d/b/a Par Yacht Charters, LLC, Cancellation No. 92056754 (October 21, 2015) [not precedential].

Likelihood of Confusion: The Board found the marks to be "markedly different." Although the word portion of a composite word-and-design mark is usually considered the dominant portion, that is not always the case. A highly distinctive design like that of respondent's mark can be the dominant portion.

Moreover, the Board found the marks different in sound. The "Naughti" in respondent's mark would be pronounced as "naughty;" consumers are pushed to that pronunciation by the presence of the word "naughty" in the mark. Petitioner Nautica's mark is more likely to be pronounced with a short "i" sound, as in "nautical." "Ordinarily, such a minor distinction in the pronunciation of a vowel would be inconsequential, except that in this case, it affects the connotations of the marks." In respondent's mark, the prefix NAUTI is a "fun play on words," bearing both the nautical connotation and the "naughty" connotation.

Petitioner Nautica maintained that NAUTICA refers to things nautical and it is advertised and promoted as such. NAUTICA is a lifestyle brand that "extends across a broad range of consumer products used by people in their normal day-to-day lives." "[T]he customer is asked to live a NAUTICA lifestyle, so they smell like NAUTICA, wear NAUTICA, sleep in NAUTICA, use NAUTICA in cooking, in every aspect of their lives" [Makes me rather NAUSEOUS - ed.] Respondent contended that this proceeding "is an attempt by Petitioner to secure a monopoly over the generic prefix "NAUT" and the entire nautical theme." As the Board observed regarding Nautica's position: "[i]n effect, it covers the waterfront."

The Board pointed out that Petitioner violated the anti-dissection rule by focusing on the shared  prefix NAUTI. Respondent's mark, taken in its entirety, "creates a wholly different commercial impression from Petitioner's marks." In sum, the marks are dissimilar as to appearance, sound, connotation, and commercial impression.

Petitioner argued that its NAUTICA marks are famous, but the Board observed that even it assumed fame for Section 2(d) purposes, that does not prove likelihood of confusion. And even if the Board assumed that Respondent's mark called to mind one of Petitioner's NAUTICA marks, "there is no reason to believe that the public would, in consequence, attribute Respondent's products to Petitioner."

Dilution: Nautica's evidence indicated an 82 to 90% brand awareness among fashion consumers, but the evidence did not allow the Board to evaluate the recognition of the mark by the general consuming public. While the mark may have achieved some level of fame for Section 2(d) purposes, it was not shown that the mark is "widely recognized by the general consuming public of the United States as a designation of source," the standard stated in the dilution statute. Niche fame is not enough. Nautica did not establish that its mark is a "household name" and therefore did not carry its burden to prove dilution by blurring.

Read comments and post your comment here.

TTABlog comment: Hat tip to Eve Brown and the Suffolk University Law School IP Clinic for this victory. Also note that this may be the first TTAB opinion penned by new TTAB judge David Heasley.

Text Copyright John L. Welch 2015.


At 8:23 AM, Anonymous Anonymous said...

Shocking that Board ruled NAUTICA had insufficient fame for dilution purposes.

At 9:50 AM, Anonymous Anonymous said...

I'm struggling to find some consistency between this decision and the Montero/Montecristo one. Throw in the Reuben's Brews case, and the only thing I can draw is that good lawyering before the TTAB will usually win regardless of past similar cases.

It's almost as if there is no one trying to maintain some kind of consistent interpretation. This is an administrative agency after all, and the judges are employees - not appointed federal judges. They should collectively be delivering a consistent interpretation of the law as a single voice of the USPTO. It should be the USPTO's goal to provide consistent reasoning so that attorneys have at least a reasonable chance of advising clients.

Also, here we are scrutinizing how the "i" is pronounced because "it affects the connotation of the marks." Hello, the mark is a logo of a girl sailing a boat. The connotation and overall commercial impression of the mark is not going to hinge on how the "i" is pronounced. Pretty certain both marks are nautical in theme and commercial impression.

And on that note, I wonder if Nautica's attorneys contemplated challenging this mark on the basis of scandalous or immoral subject matter since the logo does show a woman sailing a boat with a martini in her hand. Certainly a very weak argument in light of the likelihood of confusion and dilution claims, but I'd be curious to see if that was ever discussed or contemplated.

On an upside, this myriad of cases does provide a blueprint to winning arguments for both sides.

At 2:15 PM, Anonymous Anonymous said...

I am also struggling between this decision and the Montero/Montecristo decision.

I think this was a better case to show there was a likelihood of confusion.

If I were the attorney for NAUTICA I would have never wasted my time in the TTAB. I would have gone straight to USDC for such an important case. The cost is about the same and maybe less. I often find the forced mediation in USDC helps resolve these cases better and faster than dragging out the TTAB case and no assistance from the IA is allowed to mediate.

I think there is a clear problem here for NAUTICA in that I think that a consumer could certainly think the NAUTIGIRL line is a "sassy" version of the NAUTICA mens line. However, maybe I do not know enough about NAUTICA anymore.

Is there res judicata now that they have lost in TTAB that makes the case harder in USDC? If so, then why would you risk TTAB at all?

At 8:27 PM, Blogger Michael Lee said...

I agree that the board needs to be more consistent with its ruling. That being said, the NAUTICA decision is the correct one. No reasonable person would believe that goods sold under the NAUTIGIRL and NAUTICA marks emanate from the same source.

NAUTI is a common nautical prefix, and therefore NAUTICA shouldn't have exclusive rights to all thing NAUTI.


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