"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Apparel, Inc. v. Christine P. Palmerton d/b/a Par Yacht Charters, LLC, Cancellation No. 92056754 (October 21, 2015) [not precedential].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.
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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.