Nautica Apparel, Inc.v.Brian Carlucci

Trademark Trial and Appeal Board

Dec 18, 2007

No. 91165909 (T.T.A.B. Dec. 18, 2007)

Mailed:
December 18, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nautica Apparel, Inc.
v.
Brian Carlucci
_____

Opposition No. 91165909
to application Serial No. 75695360
filed on May 25, 1999
_____

Stephen L. Baker of Baker and Rannells, PA for Nautica
Apparel, Inc.

Lori M. Stockton of Blakely, Sokoloff, Taylor & Zafman, LLP
for Brian Carlucci.
______

Before Hairston, Bucher and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On May 29, 1999, Brian Carlucci filed an intent-to-use
application (Serial No. 75695360) to register the mark
NAUTIGIRL, in standard character format, for goods
ultimately identified as follows:
Spectacles and their parts and accessories, namely
replacement eyeglass lenses, eyeglass frames, eyeglass
earstems, eyeglass nose pieces and foam strips;
sunglasses; eyeglass and sunglass cases specially
adapted for protective and/or anti-glare eyewear and
parts therefore; protective or safety helmets for
skiing, snowboarding, and bicycling; diving suits and
diving gloves, in class 9; and,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91165909
2
Wet suits for water skiing, sailing, windsurfing,
surfing, kayaking, canoeing, and personal
watercrafting, jogging suits for triathlons, water
resistant jackets and pants for water skiing, sailing,
windsurfing, surfing, kayaking, canoeing, and personal
watercrafting, thermal underwear, water sport boots,
gloves, water sport headwear, namely caps and hoods;
men's, women's and children's clothing, namely hats,
baseball caps, visors, t-shirts, pajamas, bathing
suits, sweatshirts, sweat pants, tank tops, gaiters,
shorts, pants, jackets, dresses, sweaters, gloves,
belts for clothing, shoes, athletic shoes, sandals,
boots, beach footwear, and ski and snowboard clothing,
namely ski pants, ski jackets, ski bibs, ski gloves and
ski masks, in Class 25.
Nautica Apparel, Inc. opposed the registration of
applicant’s mark on the grounds of priority of use and
likelihood of confusion and dilution. Opposer claimed
ownership of thirty-seven (37) federally-registered
trademarks for NAUTICA or variations thereof. The most
relevant registrations are set forth below:
1. Registration No. 1464663 for the mark NAUTICA, in
standard character format, for “hosiery, shoes, undershirts,
undershorts, shirts, blouses, trousers, jackets, pants,
coats, suits, bathing suits, bathrobes, slippers and
shorts,” in Class 25;1

1 Registration No. 1464663, issued November 10, 1987; Sections 8
and 15 declarations accepted and acknowledged. Opposer included
a statement in its registration that the English translation of
the word “Nautica” is “nautical.” On February 20, 2007, opposer
amended the drawing of the mark to standard character form from a
lower case block letter form. The original display of opposer’s
mark is identical to the display in Registration No. 1553539
infra. The original lower case block format display of opposer’s
mark is not so distinctive as to be a factor in our decision.
Opposition No. 91165909
3
2. Registration No. 1553539 for the mark NAUTICA,
shown below, for “spectacles, namely eyeglasses and
sunglasses, and accessories, namely cases and straps,” in
Class 9;2 and,

3. Registration No. 3168753 for the mark NAUTICAKIDS,
in standard character format, for “coats; dresses; footwear;
gloves; headwear; jackets; jeans; pajamas; pants’ raincoats;
robes; scarves; shirts; shorts; skirts; sweaters; swimsuits;
t-shirts; trousers; underwear; vests,” in Class 25.3
Although not pleaded in the Notice of opposition,
during the prosecution of the opposition, opposer also
claimed prior use of the mark NAUTICA GIRL on girls’
clothing.

Evidentiary Issues
A. Opposer’s “Family” of “Nautica” Marks.
In its brief, opposer asserts for the first time that
it has a family of marks:

2 Registration No. 1553539, issued August 29, 1989; Sections 8
and 15 declarations accepted and acknowledged. Opposer included
a translation statement that “Nautica” means “nautical.”
3 Registration No. 3168753, issued November 7, 2006.
Opposition No. 91165909
4
Considering the parties’ respective
marks in their entirety, NAUTIGIRL is
practically indistinguishable in look,
sound, meaning, and/or commercial
impression from Nautica’s NAUTICA GIRLS
mark and is similar to all of opposer’s
NAUTICA Family of Marks, especially on
goods directed to women or girls.
Applicant’s mark leaves the impression
of a “Nautica” line of clothing and
eyewear targeted to women/girls.4

The Court of Appeals for the Federal Circuit has
defined a family of trademarks as follows:
A family of marks is a group of
marks having a recognizable common
characteristic, wherein the marks
are composed and used in such a way
that the public associates not only
the individual marks, but the
common characteristic of the
family, with the trademark owner.
Simply using a series of similar
marks does not of itself establish
the existence of a family. There
must be recognition among the
purchasing public that the common
characteristic is indicative of a
common origin of the goods. . . .
Recognition of the family is
achieved when the pattern of usage
of the common element is sufficient
to be indicative of the origin of
the family.

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
In order to create the requisite recognition of the
common element of the marks or “family surname,” the common
element must be so extensively advertised that the public
recognizes the “family surname” as a trademark. Reynolds &

4 Applicant’s Brief, p. 11.
Opposition No. 91165909
5
Reynolds Co. v. I.E. Systems, Inc., 5 USPQ2d 149, 1751 (TTAB
1987). The Board has made the following requirements:
In order to establish a “family of
marks,” it must be demonstrated that the
marks asserted to comprise its “family”
or a number of them have been used and
advertised in promotional material or
used in everyday sales activities in
such a manner as to create common
exposure and thereafter recognition of
common ownership based upon a feature
common to each mark.

American Standard Inc. v. Scott & Fetzer Co., 200 USPQ 457,
461 (TTAB 1978). In the absence of direct testimony by
purchasers, we must place ourselves in the position of
average consumers and attempt to understand their reaction
to the marks as they are encountered in the marketplace.
Id. In this regard, the mere fact that opposer has
registered many of the purported “family” members is not
sufficient to prove that a family of marks exists.
Consolidated Foods Corp. v. Sherwood Industries, Inc., 177
USPQ 279, 282 (1973)(“the registrations, per se, are
manifestly incompetent to establish the extent of use of the
registered marks, whether one or more of the registered
marks have been promoted, advertised, used or displayed in
any manner likely to cause an association or ‘family’ of
marks, or that, at the least, a good number of the
registrations have become known or familiar of frozen
confections and the like”).
Opposition No. 91165909
6
Opposer’s evidence fails to establish that opposer has
created a family of “Nautica” marks. First, the evidence
does not show that the different “Nautica” marks have been
promoted, advertised, used or displayed together in any
manner likely to cause an association among the marks or
that there is a “family” of marks. Second, the record is
silent as to the extent of any advertising of the different
marks. Therefore, the record in this case falls short of
presenting the type of evidence necessary to support an
allegation of a “family” of ”Nautica” trademarks.
Accordingly, opposers’ claim of likelihood of confusion must
be based solely on its use of its individual “Nautica”
trademarks.
B. Opposer’s Objections to Applicant’s Notices of
Reliance.

1. Applicant’s second notice of reliance.
Applicant filed a notice of reliance on printouts of
articles retrieved from the LexisNexis database that
reference Nautilus, Inc. According to applicant, “Each of
the excerpts are relevant to the continued use of the mark
NAUTILUS, to the weakness and dilution of Opposer’s mark, to
the differences in the parties’ respective marks, the fact
that opposer does not own the exclusive right to all uses of
marks containing the prefix ‘NAUTI,’ and other Dupont
factors.” Opposer objected to the LexisNexis articles
Opposition No. 91165909
7
referencing Nautilus, Inc. to show use of the NAUTILUS
trademark as constituting hearsay.
The newspaper articles are admissible and probative
only for what they show on their face, not for the truth of
the matters contained therein. TBMP §704.08 (2nd ed. rev.
2004).
While excerpts from newspapers are
properly made of record by notice of
reliance, such excerpts do not establish
the truth of the statements contained
therein. Rather, newspaper excerpts,
considered in the context of the record
and the issues in this case, are
evidence only of the manner in which the
term is used therein and of the fact
that the public has been exposed to the
articles and may be aware of the
information contained therein.

Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1721 n.52 (TTAB
1999). See also Otis Elevator Co. v. Echlin Mfg. Co., 187
USPQ 310, 312 n.4 (TTAB 1975) (newspaper articles are
admissible to show that opposer’s mark was the subject of an
article that appeared in newspapers and magazines); Exxon
Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443, 445 (TTAB
1974) (newspaper articles introduced by a notice of reliance
are admissible to show that the articles appeared in the
respective newspapers or magazines, on a specific date, and
referenced applicant or its mark). Accordingly, we have
considered the articles in applicant’s second notice of
reliance only for establishing that Nautilus, Inc. or the
NAUTILUS trademark was referenced in an article, the manner
Opposition No. 91165909
8
in which it was used, and that the public may have been
exposed to the terms and, therefore, may be aware of the
information in the articles.5
2. Applicant’s third and fourth notices of reliance.
Applicant filed notices of reliance on printouts of
news articles retrieved from the LexisNexis database that
reference the term “nautical clothing.” According to
applicant, “Each of the excerpts are relevant as to the
generic nature of Opposer’s marks, to the weakness of
Opposer’s marks, to the differences in the parties’
respective marks, and other Dupont factors.” Opposer
objects to these notices of reliance to the extent that
applicant is attacking the validity of its registrations on
the ground that NAUTICA is generic for a type of clothing
without having filed counterclaims for cancellation.
To the extent that applicant is asserting that
“Nautica” means “nautical clothing,” and is therefore a
generic term, such an attack is impermissible in the absence
of counterclaims to cancel opposer’s pleaded registrations.
However, it is clear that applicant is not attempting to
attack opposer’s registrations. Thus, we regard applicant’s
arguments as going only to the scope of protection to be
accorded opposer’s NAUTICA trademarks in terms of

5 The same holds true for the articles referencing the NAUTICA
trademark that opposer introduced through its notices of
reliance.
Opposition No. 91165909
9
determining whether there is a likelihood of confusion
between the marks NAUTICA and NAUTIGIRL when applied to
their respective goods.

The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
A. Opposer’s evidence.
1. The testimony deposition of Margaret Bizarri, the
trademark manager of the legal department of VF Sportswear,
Inc., the parent company of opposer, with attached exhibits;
2. Notices of reliance on certified copies of
opposer’s pleaded registrations for the mark NAUTICA and
variations thereof for clothing, spectacles, and other goods
and services showing that the title to the registrations is
in opposer’s name and that the registrations are subsisting;
3. Notices of reliance on articles from publications
retrieved from the LexisNexis database referencing opposer
and its NAUTICA trademarks; and,
4. Notice of reliance on printouts from the TTABVUE
database to show that opposer filed petitions to cancel
Registration No. 1641348 for the mark FASHION NAUTIQUE
Opposition No. 91165909
10
(Cancellation No. 92046670) and Registration No. 1478791 for
the mark SKI NAUTIQUE (Cancellation No. 92046665).
B. Applicant’s evidence.
1. Notice of reliance on certified copies showing
status and title of ten (10) third-party registrations for
marks beginning with “Nauti” in Class 25 and one third-party
registration for a mark beginning with “Naut” in Classes 9
and 25;
2. Notice of reliance on printouts of articles
retrieved from the LexisNexis database that reference
Nautilus, Inc.; and,
3. Notices of reliance on printouts of news articles
retrieved from the LexisNexis database that reference the
term “nautical clothing.”

Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).

Opposition No. 91165909
11
Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
However, with respect to opposer’s claim of prior use
of the mark NAUTICA GIRL for girls’ clothing, because
opposer does not own a registration for that mark, opposer
must prove its first use of NAUTICA GIRL. For purposes of
establishing priority, opposer must show that it used its
NAUTICA GIRL trademark prior to May 25, 1999, the filing
date of applicant’s application. In an opposition,
applicant may rely on the filing date of his application.
Lone Star Manufacturing Co., Inc. v. Bill Beasley, Inc., 498
F.2d 906, 182 USPQ 368 (CCPA 1974); Intersat Corp. v. Int’l
Telecomm Satellite Org., 226 USPQ 154, 156 n.5 (TTAB 1985).
Opposer based its claim of prior use solely on the
testimony of Margaret Bizarri, opposer’s trademark
paralegal. Ms. Bizarri testified that opposer had been
using NAUTICA GIRL on clothing since July 1994.6 However,
Ms. Bizarri is not involved in the marketing or sales of
opposer’s products. Ms. Bizarri is responsible for
trademark application filings, searches, post registration
filings, and reviewing sponsorship agreements, licenses,

6 Bizarri Dep., p. 28.
Opposition No. 91165909
12
color boards, and advertising.7 Moreover, because Ms.
Bizarri started working for opposer in March 2001,8 her
testimony regarding opposer’s first use of the mark NAUTICA
GIRL is not based on first-hand knowledge, but upon a review
of company records. In that regard, Ms. Bizarri testified
that she maintains copies of all the advertisements and all
the color boards from opposer’s inception to the present.9
In preparing for her deposition, she reviewed the color
boards from 1991 through the present and compiled a
representative sample to introduce into evidence.10 Despite
the facts that color boards are created seasonally and that
she reviewed all of the color boards and compiled a
representative sample in preparation for her deposition, she
was unable to document any use of the mark NAUTICA GIRL
prior to 2005.11
Q. And in any documents that you
reviewed and presented here today,

7 Bizzari Dep., p. 7.
8 Bizarri Dep., p. 6.
9 Bizarri Dep., pp. 9-10. Ms. Bizarri explained that color
boards are presented to the buyers to show the products.
(Bizarri Dep., p. 34). Applicant’s counsel characterized the
color boards as “wholesale catalogues. (Bizarri Dep. P. 33).
Based on the preceding exchange at the deposition and a review of
Exhibits 2 and 5, it appears as though color boards are
presentation boards that opposer uses to present its products to
its distributors (i.e., the retail stores that sell NAUTICA
clothing and eyewear). The color boards display samples,
photographs or renderings of the products. Ms. Bizarri testified
that the color boards are created seasonally. (Bizarri Dep., p.
30).
10 Bizarri Dep., p. 12.
11 Bizarri Dep., pp. 29-30; Exhibit 5.
Opposition No. 91165909
13
do any of those demonstrate that
the mark [NAUTICA GIRL] was being
used back as early as July of 1994?
A. No.12
Moreover, Ms. Bizarri could not confirm that opposer had
continuously used the mark NAUTICA GIRL.
Q. Did your company ever stop using
Nautica Girl at any point for any
period of time after July of 1994?
A. I don’t know the answer to that.13
Nor could she provide the revenues relating to sales of
NAUTICA GIRL products.
Q. Are you aware of your company’s
sales volume of products bearing
the Nautica Girl term?
A. No. I don’t - - if you mean
individually, no.
Q. With respect to products bearing
that term.
A. No.14
In view of the foregoing, we are not persuaded that
opposer has made either prior or continuous use of NAUTICA
GIRL. Accordingly, opposer’s claim of likelihood of

12 Bizarri Dep., pp. 28-29.
13 Bizarri Dep., p. 29. See also p. 30.
14 Bizarri Dep., p. 30.
Opposition No. 91165909
14
confusion must be based solely on its NAUTICA trademark
registrations.

Likelihood Of Confusion
Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act is based on an analysis of
all the facts in evidence that are relevant to the factors
bearing on the issue of likelihood of confusion issue. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). The relevant du Pont factors are
discussed below.
A. Fame
We turn first to the factor of fame, because this
factor plays a dominant role in cases featuring a famous or
strong mark. Kenner Parker Toys Inc. v. Rose Arts
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992). Famous marks are accorded more protection
precisely because they are more likely to be remembered and
associated in the public mind than a weaker mark. Id.
Indeed, “[a] strong mark . . . casts a long shadow which
competitors must avoid.” Id. A famous mark is one “with
extensive public recognition and renown.” Id. See also
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed.
Cir. 2005).
Opposition No. 91165909
15
In determining whether a mark is famous, we may
consider sales, advertising expenditures, and the length of
time the mark has been used. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d
1811, 1817 (TTAB 2005). This information, however, must be
placed in context (e.g., a comparison of advertising figures
with competitive products, market share, reputation of the
product, etc.). Bose Corp. v. QSC Audio Products Inc.,
supra.
We note that fame for likelihood of confusion purposes
and for dilution are not the same, and that fame for
dilution purposes requires a more stringent showing. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, supra; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164,
1170 (TTAB 2001). Likelihood of confusion fame “varies
along a spectrum from very strong to very weak” while
dilution fame is an either/or proposition – sufficient fame
for dilution either exists or does not exist. Id. See also
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas
Inc., 77 USPQ2d 1492, 1507 (TTAB 2005)(likelihood of
confusion “Fame is relative . . . not absolute”). A mark,
therefore, may have acquired sufficient public recognition
and renown to be famous for purposes of likelihood of
confusion without meeting the more stringent requirement for
Opposition No. 91165909
16
dilution fame. Toro Co. v. ToroHead Inc., supra, citing
I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d
1225, 1239 (1st Cir. 1998)(“[T]he standard for fame and
distinctiveness required to obtain anti-dilution protection
is more rigorous than that required to seek infringement
protection”). In order to help keep the concepts of
likelihood of confusion fame and dilution fame distinct, we
will refer to “public recognition and renown” when referring
to likelihood of confusion fame. Toro Co. v. ToroHead Inc.,
supra.
The evidence of public recognition and renown consists
of the following testimony and evidence:
1. Opposer began using its NAUTICA trademark for
clothing in 1983;15
2. Opposer began using its NAUTICA trademark for
eyeglasses in 1987;16
3. Opposer advertises its products through
sponsorship agreements, television advertising, billboards,
store fliers, company mailers, and through the Internet;17
4. Opposer has sponsored numerous and varied events,
including triathlons, volleyball tournaments, and sailing
events. At these events, opposer displays the NAUTICA

15 Bizarri Dep., pp. 10, 17-18.
16 Bizarri Dep., p. 18.
17 Bizarri Dep., p. 18.
Opposition No. 91165909
17
trademark on signage at the events on tents, flags,
uniforms, and equipment;18
5. Between 2000-2005, opposer averaged $28 to $29
million annually in advertising and promotional expenses in
the United States;19
6. Between 2000-2005, opposer’s annual wholesale
sales in the United States averaged approximately $1
billion;20
7. Opposer sells its products through retail stores
such as Lord & Taylor, Macys, and Bloomingdales and through
the Internet by Amazon.com;21
8. Opposer licenses retailers such as Linens–N-Things
and Bed, Bath & Beyond to sell NAUTICA products;22

18 Bizarri Dep., pp. 19-20.
19 Bizarri Dep., pp. 21-22; Exhibit 7. We have some concern
regarding the source of opposer’s advertising expenses in the
United States. Ms. Bizarri testified that she compiled the
advertising and revenues from annual reports, other financial
records, and discussions with personnel from accounting.
(Bizarri Dep., pp. 38, 40-45, 47). Exhibit 7 is a summary of the
revenues and advertising expenses. The advertising expenses are
set forth in terms of worldwide advertising. Nevertheless, Ms.
Bizarri testified as to advertising expenses in the United States
without any explanation how she derived those figures. However,
we accept Ms. Bizzari’s testimony regarding advertising expenses
in the United States because opposer has substantial sales that
indicate that there has been substantial advertising, and there
is no reason to doubt Ms. Bizzari’s veracity.
20 Bizarri Dep., p. 21-22; Exhibit 7. Ms. Bizarri testified that
the average sales in the United States were $800 million.
However, the data on which Ms. Bizarri relied indicates that the
average sales were actually $1 billion. Ms. Bizarri also
testified that retail sales should be approximately double the
wholesale sales, or in this case $2 billion. (Bizarri Dep., p.
22)
21 Bizarri Dep., p. 16.
22 Bizarri Dep., p. 16.
Opposition No. 91165909
18
9. Opposer has between 135-140 freestanding NAUTICA
retail stores in the United States, and eight (8) NAUTICA
KIDS retail stores in the United States;23
10. Opposer has received substantial media attention
referencing the NAUTICA trademark. A sampling of the
articles referencing opposer include the following:
Repp Premier Big & Tall, a new chain of
stores across the country, features
lines from top American designers, such
as Ralph Lauren and Nautica’s David Chu,
who’ve discovered big and tall guys have
money, too.

The Boston Herald (December 9, 1999).

Fortunately for OP [Ocean Pacific] and
other image-based brands, Baker says,
“the major power brands – - Tommy, Ralph
and Nautica - - have begun to give
licensing a whole new arena to play in
because it’s become for them a new
opportunity for brand extension and
revenue growth.”
* * *
“Our goal as a branded company is to run
the business like these power brands
[Tommy, Ralph and Nautica] are run, by
controlling the marketing, advertising,
design and branding for the licensee,”
reveals Baker.

Children’s Business (August 1, 1999).

David Chu hasn’t reached the single-name
recognition of a Ralph, Calvin or Tommy.
But the designer behind the mega-
successful and popular Nautica line
continues to impress onlookers.

Columbus Dispatch (February 16, 1999).

23 Bizarri Dep., p. 17.
Opposition No. 91165909
19
For today’s teen-ager (sic), style means
never wearing anything that looks like
it fits just right or like something
your parents or older sibling might have
worn. “In” are oversized fleece
pullovers, nylon windbreakers in black
or some flashy color, and anything with
the words Nike, Polo, Nautica, Structure
or Tommy Hilfiger emblazoned on it.”

Portland Press Herald (March 22, 1999).

“This is an ultra-modern Belk store,”
said store manager, Kenneth Jarman,
listing famous names such as Nautica and
Chaps, Tommy Hilfiger, Liz Claiborne and
Jantzen.

The Virginian-Pilot (June 21, 1998).

Meanwhile, at NationsBanc Montgomery
Securities, Susan B. Silverstein has
been touting what she calls “Men’s
Wear’s Triple Crown”: Tommy Hilfiger,
Nautica Enterprises and Polo Ralph
Lauren. The trio’s consistently good-
looking product backed by strong
advertising has driven sell-throughs at
a high rate, she said, thus allowing
them to maintain beefy margins.

WWD (May 14, 1998).

Top companies such as Polo Nautica,
Tommy Hilfiger and Polo Ralph Lauren
will continue to shine, providing the
cachet of well-known brands combined
with quality merchandise, according to
the Street.

Daily News Record (August 29, 1997).

Millershor, whose dresses sell for
between $200 and $350, is angling to
open in-store boutiques throughout its
network of more than 2,000 department
store locations. This merchandising
technique-made famous by powerful
sportswear brands such as Nautica, Tommy
Hilfiger and Donna Karan – is
Opposition No. 91165909
20
practically unheard of in the dress
business.

Crain’s New York Business (May 5, 1997).

The turnaround has been accomplished by
shutting down low-profit departments
such as home electronics, stocking
individual stores with merchandise that
reflects local community tastes and
playing up megabrands such as Ralph
Lauren and Nautica as well as The Bon’s
own private labels.

The Seattle Times (March 13, 1997).

Tony Baptista, 17, of Boston stressed
the importance of labels when it comes
to donning the best duds.

“Strictly Nikes, Nautica shirts, Levis
or Ralph Lauren jeans,” he said. “And a
leather coat. You gotta get the letha.”

The Boston Herald (September 8, 1996).

Consistent with the task at hand, the
inaugural issue achieved its most
striking effects with the advertising,
175 pages of stylish photographs
representing all the great and glorious
names in the retail merchants’ Hall of
Fame, not only Armani and Ferragamo but
also Tommy Hilfiger, Clinique, Ralph
Lauren, Versace, Piaget, Nautica,
Valentino, and Donna Karan – the
immortals bringing the gifts of the Magi
to a cradle of democracy.

Harper’s Magazine (November 1995).

On a recent visit, a group of older,
black, male students, who were gathered
in the gym, stood out in their upscale,
preppy attire. Tailored shirts in
richly colored stripes and plaids were
tucked neatly into chinos and Docker
pants.

Opposition No. 91165909
21
Labels with cachet – Tommy Hilfiger,
Nautica, Polo, and Roundtree and Yorke –
are considered essential among this
crowd.

The Commercial Appeal (October 1, 1995).

Nautica International, a leading men’s-
wear company, has joined forces with
Sailing World magazine in Newport as
national sponsors of the regatta series,
and ESPN commentator Gary Jobson, best
known for his America’s Cup broadcasts
from Australia and San Diego, is the
national spokesperson.

Providence Journal-Bulletin (August 13,
1995).

Younkers has the dominant market share
in most if (sic) its 54 locations,
competing against the likes of WalMart
and Dillard as well as J.C. Penney and
Sears. The company carries tried-and-
true labels such as Liz Claiborne, Carol
Little, Tommy Hilfiger, Ralph Lauren and
Nautica, but nearly 20% of its apparel
carries store labels.

Forbes (July 19, 1993).

“This could be her [Donna Karan] big
breakthrough,” said retail industry
consultant Alan Millstein. “This could
put her in the big leagues with Ralph
Lauren, Tommy Hilfiger and Nautica.
Only one other American designer has
ever successfully produced both a men’s
and women’s line, and that was Ralph
Lauren. This is her ticket to the
hundred-million-dollar club.”

The Atlanta Journal and Constitution
(March 21, 1993).

The clothing makers are hearing from
women and men, in their 20’s, 30’s, 40’s
and beyond who are asking for good-
looking, casual clothes. Cases in point
are Ralph Lauren’s Polo and Donna
Opposition No. 91165909
22
Karan’s DKNY, as are the ubiquitous
Nautica and Tommy Hilfiger lines. All
four collections of sporty denims,
tweeds, parkas and handknit-looking
sweaters are so popular with retailers
and customers that they take up a good
deal of the selling-floor space in area
department stores.

St. Louis Post-Dispatch (October 18,
1992).

Downtown’s Warehouse Row, eight
handsomely renovated turn-of-the-century
railroad warehouse buildings, has 30
factory outlet shops selling the names
you know, including Albert Nippon, Perry
Ellis, Ralph Lauren, Adrienne Vittadini,
Bass, J. Crew, Nautica, and Johnston &
Murphy.

The Atlanta Journal and Constitution
(April 29, 1992).

On the other hand, opposer’s testimony and evidence
regarding its sales revenues and advertising lack context.
For example:
1. Opposer has not provided any information regarding
its market share;
2. Opposer has not provided any information regarding
the identity of the television shows and television networks
on which it advertises (e.g., nationally broadcast
television shows on major networks versus specialty shows or
local shows on cable networks);
3. Opposer has not provided any information regarding
the identity of the newspapers and magazines where it places
its print advertising;
Opposition No. 91165909
23
4. Opposer has not provided any information regarding
how many people visit its Internet site; and,
5. Opposer has not provided any information regarding
how many people participated in and attended its numerous
and varied sponsored events, including triathlons,
volleyball tournaments, and sailing events.
Nevertheless, in view of opposer’s long use of its
NAUTICA mark in connection with clothing and spectacles, its
extensive sales and advertising expenditures, as well as the
unsolicited media attention it has received, we find that
opposer’s mark has a high degree of public recognition and
renown. In particular, with respect to the unsolicited
media attention, Opposer’s NAUTICA mark is listed in the
same context as many other well-known clothing trademarks
(e.g., Donna Karan, Ralph Lauren, and Tommy Hilfiger), and
the NAUTICA line of products is described as “ubiquitous,”
“names you know,” “big leagues,” “tried-and-true labels,”
“labels with cachet,” “Hall of Fame,” and “megabrand.”
In view of the foregoing, the fame (or public
recognition and renown) of the NAUTICA trademark is a factor
that favors finding that there is a likelihood of confusion.
B. The similarity or dissimilarity and nature of the
goods.

Applicant is seeking to register its mark for a variety
of products in Classes 9 and 25, including spectacles and
eyeglass cases (Class 9) and clothing, namely, athletic
Opposition No. 91165909
24
shoes, sandals, boots, beach footwear, t-shirts, shorts,
pants, bathing suits (Class 25). Opposer has registered the
NAUTICA trademark for spectacles and cases (Class 9) and
clothing, namely, shoes, shirts, pants, shorts, and bathing
suits (Class 25). Although the description of goods in the
application and opposer’s registrations are not identical,
many of the products listed therein are the same. The fact
that some of the applicant’s goods are either identical or
closely related to opposer’s goods is sufficient to support
a finding of likelihood of confusion. Tuxedo Monopoly, Inc.
v. General Mills Fund Group, Inc., 648 F.2d 1335, 209 UPSQ
986, 988 (CCPA 1981) (likelihood of confusion must be found
if there is likely to be confusion with respect to any item
that comes within the identification of goods in the
application). The fact that the description of goods in the
application and opposer’s registrations include other items
that may not be related does not obviate the relatedness of
the identical products. Id.
C. The similarity or dissimilarity of likely-to-continue
trade channels.

Because the goods are in part identical, we must
presume that the channels of trade and purchasers would be
the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
Opposition No. 91165909
25
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. In re E. I. du Pont De Nemours & Co., supra.
In a particular case, any one of these means of comparison
may be critical in finding the marks to be similar. In re
Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). See also,
In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988). In
comparing the marks, we are mindful that where, as here, the
goods are in-part identical, the degree of similarity
necessary to find likelihood of confusion need not be as
great as where there is a recognizable disparity between the
goods. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Real Estate One, Inc. v. Real Estate 100 Enterprises
Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of
Opposition No. 91165909
26
E-Systems, Inc. v. Environmental Communications
Incorporated, 207 USPQ 443, 449 (TTAB 1980).
In addition, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Opposer argues that applicant’s mark NAUTIGIRL is
similar to its NAUTICA and NAUTICAKIDS marks for the
following reasons:
1. Applicant’s mark and opposer’s marks share the
prefix “Nauti”;
Opposition No. 91165909
27
2. The prefix “Nauti” is the dominant portion of
applicant’s mark because the suffix “girl” is descriptive;24
and,
3. Consumers encountering applicant’s NAUTIGIRL mark
will believe that it is part of opposer’s well-known NAUTICA
line of clothing and eyewear.
On the other hand, applicant contends that its mark
NAUTIGIRL does not resemble opposer’s NAUTICA marks for the
following reasons:
1. Opposer’s mark conveys the commercial impression
of something nautical. In fact, opposer’s registrations
include a statement that the word “Nautica” means
“nautical”;
2. Opposer’s mark is inherently weak, and therefore
entitled to only a narrow scope of protection or exclusivity
of use because the word “Nautica” means “nautical,” and
“nautical clothing” is a recognized type of clothing; and,
3. The prefix “nauti” in applicant’s mark is a
fanciful abbreviation for the word “naughty,” and when
combined with the suffix “girl” conveys the commercial
impression of a naughty girl.

24 Margaret Bizarri, opposer’s trademark paralegal, testified that
other companies use “girl,” “boy,” or “kids” as part of their
marks (e.g., Tommy Girl, Brooks Brothers Boys, Talbot Kids and
Gap Kids). (Bizarri Dep., p. 48).
Opposition No. 91165909
28
However, contrary to the preceding argument in
Applicant’s Trial Brief (No. 3 supra), during the
prosecution of its application, applicant argued that the
commercial impression engendered by its mark NAUTIGIRL
pertains to something nautical, not a naughty girl.
Contrary to the Examining Attorney’s
assertion, NAUGHTY GIRL! and NAUTIGIRL
create an entirely different commercial
impression.25 The commercial impression
created by the mark NAUGHTY GIRL! as
applied to brassieres and bikini panties
is clearly one of bad or immodest or
illicit behavior, or behavior otherwise
lacking in propriety . . .

* * *

The mark NAUTIGIRL creates an entirely
different commercial impression as a
result of the spelling of the mark and
the clothing on which the mark is used.
“Nauti” as opposed to “Naughty” creates
the commercial impression of pertaining
to ships or the water. “Nauti” is the
root of the words “nautical,” which
pertains to ships and navigation, and
“nautilus,” which is a genus of marine
animal.

Further, the clothing and apparel
covered in the application are clothing
for water sports, other sports, and
beachwear (i.e., shorts, t-shirts,
swimwear). Applied to these goods, the
commercial impression created by the
mark NAUTIGIRL is clearly that it is
nautical related clothing for girls.26

25 During the prosecution of applicant’s application, the
Examining Attorney refused registration because applicant’s mark
so resembles the mark NAUGHTY GIRL! for brassieres and bikini
panties (Registration No. 1082710) as to be likely to cause
confusion.
26 Applicant’s May 9, 2000 Response to the Office Action mailed
November 9, 1999.
Opposition No. 91165909
29
The file of an application involved in an opposition
forms part of the record without any action by the parties,
and the parties may make reference to the file for any
relevant and competent purpose. Trademark Rule 2.122(b)(1),
37 CFR §2.122(b)(1). Allegations made by the applicant
during the prosecution of its application may be used by the
opposer as evidence against the applicant as an admission
against interest. Eikonix Corp. v. CGR Medical Corp., 209
USPQ 607, 613 n.7 (TTAB 1981). See also Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223
USPQ 1281, 1283 (Fed. Cir. 1984), quoting Interstate Brands
Co. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ
151, 154 (CCPA 1978) (applicant’s earlier contrary position
before the Examining Attorney as to the meaning of its mark
illustrates the variety of meanings that may be attributed
to, and commercial impression projected by, applicant’s
mark).
We accept applicant’s contention made during the
prosecution of its application that the mark NAUTIGIRL
conveys the commercial impression of nautical or water
related clothing for girls.27 In fact, some of applicant’s
goods are specifically water related (i.e., diving suits and
diving gloves, wet suits, water resistant jackets and pants

27 If we accept both of applicant’s arguments, NAUTIGIRL could
convey the commercial impression of a naughty girl on a boat.
Opposition No. 91165909
30
for water skiing, sailing, windsurfing, surfing, kayaking,
canoeing, and personal watercrafting, water sport boots,
water sport headwear, namely caps and hoods, bathing suits,
and beach footwear). Likewise, opposer’s NAUTICA marks
convey the commercial impression of nautical or water
related products. Opposer has translated the word “Nautica”
into English as “nautical.”
Opposer’s NAUTICA marks and applicant’s NAUTIGIRL mark
are similar in appearance and sound because they share the
“nauti” prefix. Opposer’s NAUTICAKIDS mark shares the same
structure as applicant’s NAUTIGIRL mark: both marks have
the “nauti” prefix followed by a suffix describing the users
of the products (i.e., kids or girls). Thus, some consumers
may mistakenly believe that NAUTIGIRL clothing is an
expansion of the NAUTICAKIDS clothing line.
While there are obvious differences between opposer’s
marks and applicant’s mark, we find that the similarities
outweigh the differences, especially because opposer’s marks
have a high degree of public recognition and renown. In
view of the foregoing, the similarity of the marks is a
factor that favors finding that there is a likelihood of
confusion.

Opposition No. 91165909
31
E. The strength of opposer’s mark.

Applicant introduced the following 11 third-party
registrations owned by six (6) entities with a “Naut” or
“Nauti” prefix for clothing products.28
Nautilus, Inc.
Mark Registration No. Goods

NAUTILUS 1086063 Hats

NAUTILUS 1084853 T-shirts and sports shirts

NAUTILUS 1391673 Shoes and athletic footwear

NAUTILUS 2970870 A wide variety of clothing

Correct Craft, Inc.29

Mark Registration No. Goods

SKI
NAUTIQUE
1478791 Shirts, shorts, caps, hats,
visors, sweat shirts, sweat
pants and jackets

FASHION
NAUTIQUE
1641348 Clothing, namely, shirts,
jackets, pants, swimwear, and
caps

28 Applicant submitted one registration filed under Section 44(d)
of the Trademark Act of 1946, 15 U.S.C. §1126(d), and not use in
commerce. A registration issued solely on the basis of an
application filed under Section 44(d) does not require use in
commerce. Without use in commerce, the registration has very
little probative value. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
29 Opposer has filed petitions to cancel the Correct Craft
registrations.
Opposition No. 91165909
32
Scott Hartley
Mark Registration No. Goods

THE NAUTI
DOLPHIN
2313902 Hats and shirts (and restaurant
services)

THE NAUTI
DOLPHIN
and
Design
2318607 Hats and shirts (and restaurant
services)

Miscellaneous Entities
Mark Registration No. Goods

NAUTICUS 2124601 Clothing, namely, t-shirts,
sweat shirts and hats sold at
the National Maritime Center

NAUT-ON-
CALL
2556304 Shorts, pants, shirts, shoes and
hats

NAUTICAL
LIVING
2744158 T-shirts, headbands,
sweatshirts, pants, coats,
jackets, hats, visors, belts,
sweaters, neckerchiefs, socks

While the third-party registrations do not establish
the use of the registered marks, that the registered marks
are known to the public, or that the public is conditioned
to reacting to portions of the marks, they may be used to
show that the mark, or a portion of the mark has a specific
meaning and that the mark has been adopted and registered to
reflect that meaning. Marcal Paper Mills, Inc. v. American
Can Co., 212 UAPQ 852, 863 (TTAB 1981). In this case,
applicant is using the third-party registrations to show
that the marks have been adopted and registered to suggest
Opposition No. 91165909
33
that the terms “naut” and “nauti” convey the commercial
impression of “nautical clothing.”
In this regard, applicant also introduced numerous
LexisNexis database articles referencing the term “nautical
clothing” for the purpose of showing that “nautical
clothing” is recognized as a type of clothing. Because
opposer’s NAUTICA marks mean “nautical,” opposer contends
that the NAUTICA marks are inherently weak marks and are
limited to a narrow scope of protection or exclusivity of
use.
Under different circumstances, the third-party
registrations and news articles might be sufficient to show
that a “naut” or “nauti” prefix conveys a commercial
impression engendering “nautical clothing” and, therefore,
preclude a finding of likelihood of confusion. However, in
view of the public recognition and renown of the NAUTICA
marks, opposer’s marketplace strength of its NAUTICA marks
outweighs any inherent weakness in opposer’s marks created
by the translation of “Nautica” as “nautical.”
Applicant introduced numerous articles retrieved from
the LexisNexis database referencing Nautilus, Inc., the
owner of the NAUTILUS trademark registrations listed above
for the purpose of showing that opposer does not own the
exclusive right to use marks with the “Nauti” prefix.
However, these articles do not support applicant’s premise.
Opposition No. 91165909
34
The relevant articles reported that Nautilus was launching a
fitness apparel line called RESPONSIV30 and that the Nautilus
fitness apparel business would feature the Pearl Izumi
brand.31 While a few articles reported that the Nautilus
fitness apparel business would feature both the Pearl Izumi
and Nautilus brands,32 there were no articles that reported
on Nautilus brand clothing and the impact that the product
has made in the market. It is not even clear whether
Nautilus has, in fact, launched a line of NAUTILUS clothing.
Finally, even were we to concede that “Nauti” marks are
weak, it has been said that likelihood of confusion “is to
be avoided, as much between ‘weak’ marks as between ‘strong’
marks.” King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). See also,
Matsushita Electric Industrial Co., Ltd. v. National Steel
Construction Co., 442 F.2d 1383, 170 USPQ 98 (CCPA 1971);
King Kup Candies Inc. v. King Candy Co., 288 F.2d 944, 129
USPQ 272 (CCPA 1961).
F. Balancing the factors.
The dominant factor in this case is the fame of
opposer’s NAUTICA marks. Because opposer has established
that its NAUTICA marks are entitled to a high degree of

30 The Columbian (August 1, 2006); Business Wire (July 27, 2006).
31 Business Wire (February 17, 2006).
32 The Oregonian (August 1, 2006); The Oregonian (December 28,
2005).

Opposition No. 91165909
35
public recognition and renown, they are more likely to be
remembered and associated in consumers’ minds than weaker
marks and accorded more protection. In addition, to the
high degree of public recognition and renown, applicant’s
mark is proposed for use in connection with goods which are
identical in part to the goods in opposer’s registrations.
Therefore it is more likely that consumers will be confused
when purchasing applicant’s products when applicant’s
products are identified by a mark that is similar to
opposer’s famous marks. Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). In reaching
this decision, we note that there is “no excuse for even
approaching the well-known trademark of a competitor . . .
and that all doubt as to whether confusion, mistake, or
deception is likely is to be resolved against the newcomer,
especially where the established mark is one which is
famous.” Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc.,
889 F.2d 1070, 12 USPQ2d 1091, 1094 (Fed. Cir. 1989),
quoting Planter’s Nut & Chocolate Co. v. Crown Nut Co.,
Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962).
In view of the foregoing, we find that applicant’s mark
NAUTIGIRL, when used in connection with the products
described in applicant’s application, so resemble opposer’s
NAUTICA marks for clothing and eyeglasses as to be likely to
cause confusion.
Opposition No. 91165909
36
Because we have found that there is a likelihood of
confusion, we do not have to decide the issue of dilution.
Decision: The opposition is sustained and registration
to applicant is refused.