Nautica Apparel, Inc.v.Christine P. Palmerton d/b/a Par Yacht Charters, LLC

Trademark Trial and Appeal Board

Oct 21, 2015

No. 92056754 (T.T.A.B. Oct. 21, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: October 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Nautica Apparel, Inc.
v.
Christine P. Palmerton d/b/a Par Yacht Charters, LLC
_______
Cancellation No. 92056754
_______
Stephen L. Baker and John M. Rannells of Baker and Rannells, PA
for Nautica Apparel, Inc.
Eve J. Brown of Suffolk University Law School
for Christine Palmerton.
Before Rogers, Chief Administrative Trademark Judge, Richey, Deputy Chief
Administrative Trademark Judge, and Heasley, Administrative Trademark Judge.
Opinion by Heasley, Administrative Trademark Judge:
On January 16, 2008, Christine Palmerton (“Registrant” or “Respondent”)
applied to register the following mark in design plus words format:
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Respondent’s application (Serial No. 77373724), based on Section 1(a) of the
Trademark Act, claimed first use of the mark in commerce since January 4, 2008,
on tote bags for boating supplies in class 18, mugs and beverage glassware in class
21, and playing cards in class 28. Published on August 11, 2009, the application
encountered no opposition, and matured into Registration No. 3700731 on October
27, 2009.
I. The Parties’ Pleadings.
On January 30, 2013, four years after the registration issued and five years
after Respondent’s claimed date of first use, Nautica Apparel, Inc. (“Petitioner”)
petitioned to cancel Respondent’s registration on the grounds of priority of use and
likelihood of confusion, Trademark Act § 2(d), 15 U.S.C. § 1052(d), as well as
dilution, Trademark Act § 43(c), 15 U.S.C. § 1125(c), and false suggestion of a
Cancellation No. 92056754

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connection with Petitioner, Trademark Act § 2(a), 15 U.S.C. § 1052(a).1
Petitioner bases its petition on forty-seven (47) federally registered
trademarks for NAUTICA or variations thereof. The most pertinent and
representative of these are:
1. Registration No. 1580007 for the mark in stylized
form, for inter alia “umbrellas, luggage, trunks, duffle bags, garment bags
for traveling, travel kits and leather boxes in the nature of jewelry boxes”
in class 18.2
2. Registration No. 1873011 for the mark NAUTICA, in standard character
format, for inter alia “wallets, hipfold wallets, trifold wallets, key cases,
tie cases for travel, shoulder bags, tote bags; clutch bags, carry-on bags” in
class 18.3
3. Registration No. 2306324 for the mark NAUTICA in standard character
format, for “glass and plastic beverageware; dinnerware; candlesticks not
of precious metal” in class 21.4
4. Registration No. 1613918 for the mark

1 Petitioner did not pursue the § 2(a) claim in its trial brief, so this claim is deemed waived.
TBMP § 801.01 (2015). Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107
USPQ2d 1750, 1753 (TTAB 2013) aff’d 565 F. Appx. 900 (Fed. Cir. 2014).
2 Issued January 30, 1990, based on use in commerce since at least as early as January 5,
1987. Renewed, March 10, 2010.
3 Issued January 10, 1995, based on use in commerce since at least as early as April 1991.
Renewed, May 1, 2015.
4 Issued January 4, 2000, based on use in commerce since at least as early as January 1998.
Renewed, January 23, 2010.
Cancellation No. 92056754

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in design plus words format, for “men, women and children’s wearing
apparel namely, hosiery, shoes, undershirts, undershorts, shirts, blouses,
trousers, pants, jackets, coats, suits, bathing suits, bathrobes, slippers,
and shorts” in class 25.5
5. Registration No. 3076794 for the mark NAUTICA COMPETITION, in
standard character format, for “luggage, carry-on bags garment bags for
travel, duffle bags, shoulder bags, tote bags, clutch bags, wallets and key
cases” in class 18.6
Each of Petitioner’s registrations states that the English translation of the
word “NAUTICA” is “nautical.”
Respondent’s Answer denied the salient allegations in the Petition, and
further asseverated that Petitioner’s claims were barred by the doctrines of laches,
estoppel, and waiver.7 Other affirmative defenses amplified upon the denials in the
body of the Answer.

5 Issued on September 18, 1990 based on use in commerce since at least as early as May 3,
1985. Renewed, October 12, 2010.
6 Issued on April 4, 2006 based on use in commerce since at least as early as January 1996.
Renewed, April 29, 2015.
7 9 TTABVUE.
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II. Preliminary Issues.
As a preliminary matter, Petitioner objects that Respondent’s trial brief “is
almost devoid of any citations to the trial record” in violation of Trademark Trial and
Appeal Board Manual of Procedure (TBMP) §801.03 (2015).8 While it is true that the
record is large (primarily due to Petitioner’s filings), and Respondent’s citations to
that record are sparse, we are nonetheless able to discern the sections to which the
brief refers, and therefore overrule this objection. Second, Petitioner objects that
Respondent’s brief, “misstates facts or conveniently paraphrases them for her
benefit,” by claiming, for example, that Petitioner is a seller of “classic, traditional
menswear.”9 We are aware of the goods and services identified in Petitioner’s
registrations, and base our decision on the record evidence, not the parties’
characterizations thereof. Third, Petitioner objects that Respondent relies upon
“items from Internet searches that are not made of record.”10 We will only consider
evidence properly made of record during the parties’ testimonial periods, and
sustain this objection to the extent that Respondent alludes to matters outside the
trial record. Fourth, Petitioner objects that Respondent’s trial brief impermissibly
contains references to settlement discussions between the parties.11 Such
communications are privileged under Fed.R.Evid. 408, so this objection is sustained
and the communications will not be considered. Fifth, Petitioner objects that
Respondent filed a trial brief without a table of authorities, which is required by

8 134 TTABVUE 6; Petitioner’s Reply Brief, p. 4.
9 Id.
10 Id. citing Respondent’s Brief at 9n.7, 29n.21, and 31n.23.
11 Id. See 131 TTABVUE and 132 TTABVUE 12-13; Respondent’s Trial Brief, pp. 11-12.
Cancellation No. 92056754

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TBMP § 801.3. Respondent timely filed the trial brief on February 17, 2015,12
inadvertently omitting the table of authorities, then re-filed the brief the next day,
admitting the error and curing the omission.13 Absent any prejudice (and none has
been shown), we overrule this objection and will consider Respondent’s trial brief as
submitted with the table of authorities.14
Sixth, Petitioner objects that Respondent (a businesswoman in Washington
State) submitted a third notice of reliance containing, in part, an article from a local
Washington State paper, the Bellingham Herald, entitled “David vs. Goliath –
Whatcom County business owner fights trademark battle with Nautica.” The
article recounted the origins of the instant case, with quotes from Respondent and
her counsel, and announced an online “Reader Poll,” asking whether Petitioner was
right in claiming that Respondent’s mark “is too similar in name and logo.”15
Petitioner moved to strike this article because the notice of reliance failed to
describe its relevance, as required by Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e),
and because the contents of the article, including the online poll, constituted
hearsay and were irrelevant to the Board’s determination of likelihood of confusion
under the DuPont factors.16
On consideration of the motion, the Interlocutory Attorney required
Respondent to state the relevance of the article, and deferred until trial the Board’s

12 131 TTABVUE 3.
13 132 TTABVUE, 133 TTABVUE.
14 132 TTABVUE.
15 119 TTABVUE, Section 2.
16 120 TTABVUE; In re E.I. DuPont de Nemours & Co, 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973).
Cancellation No. 92056754

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determination of its admissibility.17 Respondent accordingly submitted an amended
third notice of reliance, arguing that the article—including the results of the reader
poll, which purportedly polled 1,200 readers—was relevant to show the
dissimilarity of the marks in the mind of the general public, the lack of any
likelihood of confusion between the marks, and concurrent use of the parties’ marks
without actual confusion in the marketplace.18 Petitioner renewed its motion to
strike concurrently with its trial brief.19
Petitioner’s motion is well taken. The views of Respondent and her counsel
are admissible via testimonial deposition and trial brief, not by newspaper article.
TBMP §§ 703, 801.02(b). And the views of the public, if any, should be obtained by
an impartial survey conducted by a qualified expert, not by an unscientific poll,
conducted in an undisclosed method, of potentially biased local citizens who were
introduced to the dispute by newspaper coverage of Respondent and her counsel.
See Corporacion Habanos S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085,
1091 (TTAB 2012). Accordingly, section two of Respondent’s third notice of reliance
lacks probative value, and will not be considered.
Finally, Petitioner objects that Respondent’s third notice of reliance, section
four, consists of search results for the term “NAUTI” under Google.com’s “Shopping
Tab,”20 which Respondent has introduced to show extensive third party use of

17 124 TTABVUE.
18 125 TTABVUE.
19 126 TTABVUE 55.
20 Petitioner’s Motion to Strike, p. 5; 126 TTABVUE 59.
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‘NAUTI” in commerce.21 Petitioner argues that, “[I]nternet search summaries,
which essentially are links to the website pages, are not admissible by notice of
reliance.”22 Citing TBMP § 704.08(b) and Calypso Technology, Inc. v. Calypso
Capital Management, LP, 100 USPQ2d 1213, 1219 (TTAB 2011). Calypso
Technology, however, dealt with “search summaries, which are more in the nature
of listings of documents, i.e., the website pages that the summary links to, than to
the documents per se.” Id. The search results from Google’s “Shopping Tab,” in
contrast, display the landing pages of the websites in thumbnail format.23
Moreover, Petitioner did not raise this issue in its prior motion to strike,24 which
would have afforded Respondent the opportunity to cure the deficiency. See City
National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d
1668, 1672 (TTAB 2013); TBMP § 707.02(b). Accordingly, we will not strike this
evidence, but will consider Petitioner’s outstanding objection in evaluating its
probative value. TBMP § 707.02(c). Petitioner argues, with some merit, that these
search results are at best of limited probative value, as they do not show the context
in which the “NAUTI” term is used is used on the web pages, if the goods depicted
are actually being offered for sale, and if they can actually be purchased.25 See
Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1360 (TTAB
2014). For the reasons stated, we agree that this evidence is of limited probative

21 Respondent’s Amended Third Notice of Reliance, section four, 125 TTABVUE 58 et seq.
22 Petitioner’s Motion to Strike, p. 5; 126 TTABVUE 59.
23 Respondent’s Amended Third Notice of Reliance, section four, 125 TTABVUE 58 et seq.
24 120 TTABVUE.
25 Petitioner’s Motion to Strike, p. 5; 126 TTABVUE 59.
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value; it does not show that third party use of ‘NAUTI” in commerce is extensive; it
merely shows that third parties may choose to use “NAUTI” on or in connection
with certain goods. This evidence does not affect our determination of Petitioner’s
claims.
III. Evidence of Record.
The trial record includes the following testimony and evidence:
A. Petitioner’s evidence.
1. The testimony deposition of Nina Flood, Vice President of Marketing
for VF Sportswear, Inc., the parent company of petitioner, with
exhibits.26
2. The testimony deposition of Margaret Bizzari, Director of Intellectual
Property and Product Liability for VF Sportswear, Inc., with exhibits.27
3. Notices of reliance on certain interrogatory responses and excerpts
from the deposition of Respondent.28
4. Notices of reliance on TESS and TSDR printouts showing the status
and title of Petitioner’s pleaded registrations for the mark NAUTICA
and variations thereof for the identified goods and services.29
5. Notices of reliance on third party registrations.30
6. Notices of reliance on dictionary definitions of “naut” and “nauti.”31

26 27-79 TTABVUE.
27 81-105 TTABVUE.
28 23 TTABVUE.
29 24 TTABVUE.
30 24 TTABVUE.
31 25 TTABVUE.
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B. Respondent’s evidence.
1. The testimony deposition of Christine Palmerton with exhibits.32
2. A first notice of reliance on the discovery deposition of Mark DiMuro,
Vice President/Licensing Controller of VF Sportswear, Inc., with
exhibits; the discovery deposition of Nina Flood, Vice President of
Marketing for VF Sportswear, Inc., with exhibits; and the discovery
deposition of Jennifer Sacco, Petitioner’s Director of Global Marketing
and Licensing, with exhibits.33
3. A second notice of reliance with Petitioner’s answers to certain
interrogatories and responses to certain requests for admission.34
4. An amended third notice of reliance with (1) pages from Respondent’s
website at www.nautigirl.biz, (2) a newspaper article in the
Bellingham Herald dated August 3, 2014, (3) pages from Petitioner’s
website at www.nautica.com , and (4) Google Shipping search results
for the search term “nauti,” revealing third party use of “nauti” in
commerce.35
IV. Standing and Priority.
Petitioner has standing to bring this cancellation proceeding. It has pleaded
and proven its ownership of registrations for the NAUTICA marks,36 thus

32 107-116 TTABVUE.
33 117 TTABVUE.
34 118 TTABVUE.
35 119 TTABVUE; in accordance with our ruling on Petitioner’s motion to strike, section 2 of
the third notice of reliance will not be considered.
36 24 TTABVUE.
Cancellation No. 92056754

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demonstrating a direct and personal stake in the outcome of this proceeding, and
has sufficiently alleged that it believes it will be damaged by the continued
registration of Respondent’s mark. 15 U.S.C. § 1064. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Because both parties
own registrations, Petitioner must prove priority of use in order to prevail. M.C.I.
Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB 2010) (in a cancellation
proceeding where both parties own registrations, priority is always an issue because
both parties are entitled to the presumptions accorded a registration under Section
7(c) of the Trademark Act, 15 U.S.C. §1057(c)). See also, Brewski Beer Co. v. Brewski
Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998)(“Of course, petitioner or
respondent may rely on its registration for the limited purpose of proving that its
mark was in use as of the application filing date.”). Petitioner, which has properly
introduced its pleaded registrations into the trial record,37 prevails on the priority
issue on the basis of its earlier filing date of the underlying applications for the
registrations made of record in this proceeding, as those dates establish constructive
use.
V. Likelihood of Confusion.
The issue before us is whether the mark in Respondent’s registration consists
of or comprises a mark that so resembles one or more of Petitioner’s registered
NAUTICA marks as to be likely, when used on or in connection with the goods
identified in Respondent’s registration, to cause confusion, mistake, or deception. 15

37 24 TTABVUE.
Cancellation No. 92056754

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U.S.C. § 1052(d). In determining this issue, based on the evidence and arguments
presented, we consider the relevant factors bearing on likelihood of confusion
enunciated in In re E.I. DuPont de Nemours & Co, 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) and more recently in In re Majestic Distilling Co. Inc, 315 F.3d
1311, 1314-15, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Petitioner bears the burden
of proving likelihood of confusion by a preponderance of the evidence. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 951, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). As
detailed below, we conclude that likelihood of confusion has not been established.
A. Similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression.
To determine whether Respondent’s mark resembles one or more of
Petitioner’s marks within the meaning of Section 2(d), we turn to the first DuPont
factor, focusing on the similarity or dissimilarity of the marks in their entireties, as
to appearance, sound, connotation, and commercial impression. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371-72,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Petitioner claims that the parties’ marks are “virtually identical” in
appearance, sound, and commercial impression.38 Respondent’s registered mark
appears as follows:

38 126 TTABVUE 20, Petitioner’s trial brief, p. 15.
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Its design depicts a determined-looking woman with blue 1920’s style hair,
wearing a sailor’s cap, her scarf flying in the wind, standing at the helm of a boat,
holding a martini with olives in one hand and the ship’s wheel in the other. A sign
in front of the ship’s wheel bears the word portion of the mark, “NAUTIGIRL DARE
TO BE NAUGHTY.”39
Petitioner’s marks, on the other hand, are either NAUTICA word marks in
standard character or stylized form: or word and design marks
containing a fairly staid and conservative depiction of a sailboat logo over the word
NAUTICA:

39 Registration No. 3700731.
Cancellation No. 92056754

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In appearance, then, the parties’ marks are markedly different.
Petitioner argues that the parties’ marks share the prefix NAUTI, and that
the word portions of the respective design-plus-words marks should predominate
because they would be used by purchasers to request the goods.40 While the words
in a composite word and design mark are often considered dominant, that is not
always the case. In re Covalinski, 113 USPQ2d 1166 (TTAB 2014)(design
predominant in word and design mark). In Covalinski, graphic devices in the
REDNECK RACEGIRL word and design mark drew attention to the very large,
prominently displayed letters “RR,” filled with a checkerboard pattern resembling a
racing flag; this led in turn to an elongated horizontal “leg” of each R, containing the
smaller letter strings “edneck” and “acegirl.” The Board therefore found that the
mark’s word portion was dominated by its design features. Id. at 1168. Accordingly,
where, as here, a mark such as Respondent’s contains a prominent, highly
distinctive design that catches the consumer’s eye, then leads it to the word portion,
the design can be the dominant element of the mark. Id. citing Parfums de Coeur
Ltd v. Lazarus, 83 USPQ2d 1012 (TTAB 2007); Ferro Corp. v. Ronco Labs, Inc., 356
F.2d 123, 124, 148 USPQ 497, 498-99 (CCPA 1966).
Moreover, the sound of the marks is dissimilar. The NAUTI element of
NAUTICA is more likely to be pronounced with a short “i” sound, as a shortening of
the word “nautical,” given the use by Petitioner of sailboat imagery. The same

40 126 TTABVUE 25; Petitioner’s trial brief, p. 20.
Cancellation No. 92056754

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element of Respondent’s mark is likely to be pronounced with a long “e”, sounding
like “naughty.”
As Respondent testified at deposition:
Q. How do you pronounce the N-A-U-T-I element in your mark?

A. Naughty.41
Consumers are prompted to adopt this intended pronunciation by the mark’s full
wording: NAUTIGIRL DARE TO BE NAUGHTY. Ordinarily, such a minor
distinction in the pronunciation of a vowel would be inconsequential, except that in
this case, it affects the connotation of the marks.
The brand NAUTICA, a truncated form of “nautical,” connotes, in Petitioner’s
words, “a lifestyle brand that takes its inspiration from the water and the nautical
lifestyle. Nautica’s brand message promises to take you to the water, making you
feel buoyant whether you’re at the water or not. The brand conveys a love of the
water and a passion for being in a community of people that love the water, a bit of
adventure, a bit of exploration, confidence. Nautica’s products—whether for the
home, the body or an accessory, all speak to a nautical lifestyle, being spirited and
carefree—which emulates the sensation almost all people have when they get to the
water.”42
Respondent’s NAUTIGIRL DARE TO BE NAUGHTY mark plays on two
words—nautical and naughty. In one sense, the prefix NAUTI connotes things

41 107 TTABVUE 12; Testimonial Deposition of Christine Palmerton, p. 11.
42 126 TTABVUE 10, Petitioner’s trial brief at 5; citing deposition testimony from Nina
Flood, Vice President of Marketing for Petitioner’s parent company, VF Sportswear, Inc.
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nautical—a connotation reinforced by the design elements of ship’s helm, sailor’s
cap, and water background.

Respondent adopted the mark because she wanted to create a brand that
appeals to the female boater. As she testified, ““Nauti representing the boating
lifestyle, and the girl, the brand was designed for female boaters. And I wanted a
fun playful name. And I wanted a tag line, dare to be naughty.”43 This tag line—
reinforced by the martini glass in the design—conveys the other sense of “NAUTI”:
that “She’s having fun along the way.”44 Respondent’s registered mark is thus “a
fun play on words,”45 bearing both connotations.
With respect to the overall commercial impression conveyed by the parties’
marks, Petitioner’s Vice President of Marketing, Nina Flood, was asked at
deposition:
Q. So is it your position then as marketing manager, as VP of marketing
that brands that have N-A-U-T and have water-related imagery would be
confusing to consumers?

43 107 TTABVUE 8; Testimonial Deposition of Christine Palmerton, p. 7.
44 107 TTABVUE 9; Testimonial Deposition of Christine Palmerton, p. 8.
45 107 TTABVUE 59-60; Testimonial Deposition of Christine Palmerton, p. 58-59.
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A. Yes.46
That epitomizes Petitioner’s position. It charges that, “The Registrant selected
the term “Nauti” in her mark as a term associated even in its truncated form with
things nautical. The meaning of the root ‘naut’ and/or ‘nauti’ is of things nautical.
There can be no valid argument to the contrary.”47 “The Nautica marks and the
variations used by Nautica similarly refer to things that are nautical and are
advertised, marketed, and promoted as such.”48 The breadth of Petitioner’s position
becomes clear when it describes the expanse of goods and services it claims are
covered by its marks:
The NAUTICA brand has developed and evolved into what is
commonly referred to as a “lifestyle brand” that extends across a broad
range of consumer products used by people in their normal day-to-day
lives, including without limitation, clothing, fragrances, bedding,
tabletop, mugs, bags, eyewear, watches, home goods, furniture,
automobiles, etc. The core DNA of the brand extends into many
different categories of business and different product lines. With a
lifestyle brand the 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.49
As Respondent puts it, this “is an attempt by Petitioner to secure a monopoly
over the generic prefix “NAUT” and the entire nautical theme.”50 In effect, it covers
the waterfront.
Unfortunately for Petitioner, its position runs afoul of the anti-dissection rule.
This rule requires that marks be considered in their entireties in determining

46 117 TTABVUE 78; Deposition of Nina Flood, p. 50.
47 126 TTABVUE 25; Petitioner’s trial brief, p. 20.
48 126 TTABVUE 28; Petitioner’s trial brief, p. 23.
49 126 TTABVUE 9; Petitioner’s trial brief, p. 4.
50 132 TTABVUE 5; Respondent’s trial brief, p. 4.
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likelihood of confusion. “It is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.” Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
1007, 212 USPQ 233, 234 (C.C.P.A. 1981) quoted in Juice Generation, Inc. v. GS
Enterprises LLC, 794 F.3d 1334, 1340, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015).
Accord In re National Data Corp., 753 F.2d 1056, 1058n.3, 224 USPQ 749, 751n. 3
(Fed. Cir. 1985).
The rule recognizes that consumers do not parse marks into their elemental
details, but retain an overall, general impression of marks as a whole. This overall
commercial impression must be compared to determine whether confusion is likely.
China Healthways Institute, Inc. v. Wang, 491 F.3d 1337, 1340, 83 USPQ2d 1123,
1125 (Fed. Cir. 2007)(“It is incorrect to compare marks by eliminating portions
thereof and then simply comparing the residue.”).
Here, Petitioner’s position violates the anti-dissection rule by focusing on the
shared prefix NAUTI. Since this common element is, it admits, an abbreviation of
the descriptive word “nautical,”51 it is no wonder that Respondent’s mark evokes, at
least in part, a nautical theme.
That, however, does not demonstrate that Respondent’s mark, considered in
its entirety, creates the same overall commercial impression as Petitioner’s marks.
The mere fact that parties’ marks share commonplace terms does not ipso facto
render them confusingly similar. For example, in Ferro Corp. v. Ronco Labs., Inc.,

51 126 TTABVUE 25; Petitioner’s trial brief, p. 20.
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356 F.2d 122, 148 USPQ 497 (C.C.P.A. 1966) the opposer, Ferro Corporation,
owned, at one point, nine federal registrations for marks containing the prefix
FERRO or a variation thereof. Nonetheless, its opposition to an application for the
mark FERRO-GARD and design was dismissed, and the dismissal was affirmed by
the Federal Circuit, which observed, “It is not believed that appellant is, by virtue of
prior registrations, entitled to the sole possession of the term ‘ferro.’” Id., 356 F.2d
at 124, 148 USPQ at 499. Similarly, in Sports Authority Michigan, Inc. v. PC
Authority, Inc., 63 USPQ2d 1782 (TTAB 2002) the shared laudatory term
AUTHORITY did not render THE SPORTS AUTHORITY and THE PERSONAL
COMPUTER AUTHORITY confusingly similar. In those cases, as here, the shared
dissected terms, though overlapping, were not sufficiently distinctive to be source-
indicating, and did not engender a likelihood of confusion; consumers had to look to
the parties’ marks in their entireties to determine the sources of goods and services.
Respondent’s mark, considered in its entirety, with all design and word
elements taken together, creates a wholly different commercial impression from
Petitioner’s marks. It is design-dominant, featuring the NautiGirl, captain of her
own ship. Its wording, NAUTIGIRL DARE TO BE NAUGHTY reinforces this
image, conveying a nautical and naughty double meaning that transcends the mere
nautical theme to which Petitioner lays claim. Its words and design thus
complement and reinforce one another, creating, on the whole, an entirely different
Cancellation No. 92056754

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commercial impression than Petitioner’s marks.52
In sum, the marks are dissimilar in their entireties as to appearance, sound,
connotation, and commercial impression. This weighs heavily against Petitioner’s
claim of likelihood of confusion. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). A single DuPont factor “may be dispositive in a likelihood of confusion
analysis, especially when that single factor is the dissimilarity of the marks.”
Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375, 47
USPQ2d 1459, 1460 (Fed Cir. 1998), quoted in Odom’s Tennessee Pride Sausage,
Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 1346-47, 93 USPQ2d 2030, 2032 (Fed.
Cir. 2010).
B. Fame of the Prior Marks.
Petitioner has submitted record evidence of continuous use of the NAUTICA
mark since 1983;53 sales of NAUTICA goods averaging over $833 million per year in
the United States for the last thirteen years;54 advertising and promotional

52 Petitioner points to a number of prior proceedings before the Board in which it has, for
example, successfully opposed intent-to-use applications for marks such as NAUTIGIRL in
standard character format for eyewear and apparel, Opposition No. 91165909, and GET
NAUTI in standard characters for inter alia fragrances and apparel, Opposition No.
91177192. 103 TTABVUE 1-214. The nonprecedential decisions to which Petitioner
alludes, however, concerned different marks from Respondent’s NAUTIGIRL DARE TO BE
NAUGHTY word and design mark, different evidentiary records, and different arguments
of counsel, and were decided on their own merits, on a case-by-case basis. In this
proceeding, based on careful application of the DuPont factors, in light of the evidentiary
record, the arguments of the parties’ counsel and controlling precedential authority, we find
the parties’ marks, considered in their entireties, dissimilar.
53 81 TTABVUE 12-14; Bizarri testimonial deposition, pp. 8-10.
54 27 TTABVUE 42-44; Flood testimonial deposition, pp. 41-43.
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expenditures in excess of $31 million per year for that same time period for goods
other than fragrances;55 advertising and promotions in well-known publications,
such as People, and Cosmopolitan, in newspapers such as the Boston Globe, New
York Times, Wall Street Journal, and Washington Post, and on major networks such
as CBS, NBC, ABC, and A & E;56 and receipt of unsolicited media attention from
publications such as Forbes, the Chicago Sun-Times, Harper’s Magazine, and the
Boston Globe. (This last category, of unsolicited media coverage, weighs in as the
most voluminous bulk of Petitioner’s evidence, occupying approximately 33
TTABVUE filings and several bankers’ boxes full of print copies.)57 For reasons such
as these, Respondent admits, “Registrant does not dispute that Petitioner has
achieved fame in its primary product lines of apparel, fragrances, and eyewear.”58
See e.g., Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 1371, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002); Kenner Parker Toys Inc. v. Rose Arts Industries, Inc.,
963 F.2d 350, 352-53, 22 USPQ2d 1453, 1456 (Fed.Cir. 1992); Palm Bay Imports,

55 27 TTABVUE 46-47; Flood testimonial deposition, pp 45-46.
56 27 TTABVUE 24; Flood testimonial deposition, p. 23.
57 34-79 TTABVUE.
58 132 TTABVUE 32-33; Respondent’s trial brief, pp. 31-32. Respondent argues that
NAUTICA’s fame is limited to its primary product lines of apparel, fragrances, and
eyewear.” 132 TTABVUE 33; Respondent’s trial brief, p. 32. Petitioner rejoins that it is a
“lifestyle brand” that transcends product lines, as do other famous brands, such as Ralph
Lauren, Eddie Bauer, and Tommy Hilfiger—brands that have branched out from their
apparel-based, class 25 origins into products in a multiplicity of classes. 126 TTABVUE 38;
Petitioner’s trial brief, p. 33. We will consider this issue in the context of Petitioner’s
dilution claim, infra, to determine whether Petitioner’s marks are widely recognized by the
general consuming public of the United States as a designation of source. For our present
purposes, though, even if we assume, without deciding, that Petitioner’s NAUTICA marks
are broadly famous for purposes of a Section 2(d) likelihood-of-confusion analysis, the
determinative issue is whether, as Respondent argues, “…Petitioner’s evidence of fame is
also limited to its word mark ‘NAUTICA,’ and has not extended to any of its claimed
variations.” 132 TTABVUE 35, Respondent’s trial brief, p. 34.
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396 F.3d at 1374, 73 USPQ2d at 1694 (Fed. Cir. 2005).
It is well established, though, that evidence sufficient to prove fame for
purposes of a 2(d) likelihood of confusion analysis may nonetheless be insufficient to
establish likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 1367, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012). As the Federal Circuit
has declared, the likelihood of confusion standard:
…means more than the likelihood that the public will recall a famous
mark on seeing the same mark used by another. It must also be
established that there is a reasonable basis for the public to attribute
the particular product or service of another to the source of the goods
or services associated with the famous mark. To hold otherwise would
result in recognizing a right in gross, which is contrary to principles of
trademark law and to concepts embodied in 15 USC § 1052(d).
Univ. Of Notre Dame v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1374,
217 USPQ 505, 507 (Fed. Cir. 1983).
Here, Petitioner’s evidence of fame extends to its full mark, NAUTICA—not
the dissected prefix NAUT or NAUTI. Even if, by some stretch of the imagination,
Respondent’s NAUTIGIRL DARE TO BE NAUGHTY design-plus-words mark
called one of Petitioner’s NAUTICA marks to mind (an assumption that has not
been proven), there is no reason to believe that the public would, in consequence,
attribute Respondent’s products to Petitioner.
In Kellogg Co. v. Pack’em Enterprises, Inc., for example, the Board found on
summary judgment that despite a shared prefix, the opposer’s FROOT LOOPS
mark was indisputably dissimilar from the applicant’s FROOTEE ICE with
elephant design:
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The only similarity between these marks is that opposer's mark begins
with the word ‘FROOT’, a misspelling of the descriptive term ‘fruit,’
and applicant's mark begins with the word ‘FROOTEE’, a misspelling
of the descriptive word ‘fruity.’ Considering the marks in their
entireties, we are of the opinion that they differ so substantially in
appearance, sound, connotation and commercial impression that there
is no likelihood that their contemporaneous use by different parties
will result in confusion. We would be of this opinion even if opposer
offered evidence at trial establishing that it has made prior and
continuous use of its mark on goods, such as fruit-flavored frozen
confections, which are very closely related to the goods identified in
applicant's application; that the goods move through the same
channels of trade to the same classes of purchasers; that the goods are
purchased casually rather than with care; and that opposer's mark
“FROOT LOOPS” has become a very strong and well known, indeed,
famous, mark as applied to its goods in commerce. … The first Dupont
factor simply outweighs all of the others which might be pertinent to
this case.
Kellogg Co. v. Pack’em Enterprises, Inc., 14 USPQ2d 1545, 1550 (TTAB 1990), aff’d,
951 F.2d 330, 333 (Fed.Cir. 1991). Here, as in that case, even if we assume that
Petitioner’s NAUTICA marks are famous for 2(d) purposes, Respondent’s mark has
nothing more in common with them than the prefix NAUTI and a nautical theme. It
differs so substantially, when viewed in its entirety, that there is no likelihood of
confusion.
The claim that any mark beginning with N-A-U-T and containing water
imagery is confusingly similar to the NAUTICA marks, because of the degree of
fame we discuss above, is tantamount to claiming that Petitioner has superior
rights to all NAUT- or NAUTI- prefix marks for nautical-themed goods. We
disagree. To hold otherwise would be to recognize in Petitioner the very sort of
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right in gross that the Federal Circuit has warned against. Univ. Of Notre Dame,
703 F.2d at 1374.
Put another way, Petitioner’s position tacitly asserts rights in a family of
NAUT- or NAUTI- marks. While Petitioner does not explicitly claim ownership of
such a family of marks, that is the implicit assumption on which its claims against
Respondent are predicated. That exceeds the reach of its rights. According to the
Federal Circuit:
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 a recognition among the
purchasing public that the common characteristic is indicative of a
common origin of the goods.

J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1462, 18 USPQ2d
1889, 1891 (Fed. Cir. 1991). Accord McDonald’s Corp. v. McSweet, LLC, 112
USPQ2d 1268, 1275 (TTAB 2014).
Petitioner’s mere registration of multiple NAUTICA marks is insufficient to
establish the existence of a family of marks. In Consolidated Foods Corp. v.
Sherwood Medical Industries, Inc., 177 USPQ 279 (TTAB 1973), the opposer, owner
of over 45 registrations for marks such as CREAMSICLE, FUDGSICLE,
FRUITSICLE, NUTSICLE, CAKESICLE and the like, claimed to own the family of
“SICLE” marks. The Board held, however, that, “[W]e are not persuaded on the
record before us that opposer possesses a family of marks characterized by the term
“SICLE” that is recognized as such by the general public. … While the number of
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these registrations is impressive, … 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…. “ Id. at 282.
Petitioner admits that the full word NAUTICA appears on every product sold
by Petitioner.59 It does not license products with just NAUT or NAUTI.60 It
presents nothing that would lead consumers to consider either prefix—NAUT or
NAUTI—a “family surname” for the NAUTICA marks. Indeed, according to
reputable dictionaries, such as Merriam-Webster, or Webster’s Encyclopedic
Unabridged Dictionary of the English Language, the prefix “naut” denotes things
nautical, not necessarily NAUTICA.61

59 118 TTABVUE 9, Petitioner’s response to Request for Admission No. 3. We note that
Petitioner owns Registration No. 2697078 for NAUTEX for “fabrics for use in the
manufacture of wearing apparel” and “jackets, coats, and foul weather gear, namely rain
and snow jackets.” Petitioner has not adduced evidence of the extent of advertising, sales,
promotion, and other forms of exposure of this particular mark to the purchasing public.
60 117 TTABVUE 12-13; deposition of Mark DiMuro, Vice President of Licensing/Controller
of VF Sportswear, pp. 8-9.
61 126 TTABVUE 25; Petitioner’s trial brief, p. 20; 25 TTABVUE, Petitioner’s sixth notice of
reliance. In its seventh notice of reliance, 25 TTABVUE, Petitioner submitted a webpage
from www.UrbanDictionary.com, purporting to define “Nauti” as “The abbreviation Of The
Word Nautica (Clothing Apparel and Accesories).” [sic] Unlike the Merriam-Webster and
Webster’s Encyclopedic Unabridged Dictionary of the English Language, cited in Petitioner’s
sixth notice of reliance, this entry, submitted by an unidentified person using the handle
“JodieeOhBabyy” on March 4, 2009, lacks probative value. Its source is unidentified, there
is no evidence of review by a qualified editorial panel, and there is no corroborating proof
that the term has that accepted meaning in common parlance. Cf. In re IP Carrier
Consulting Grp., 84 U.S.P.Q.2d 1028, 1032 (TTAB 2007)(inherent problems in reliability of
entries in collaborative website). Purchasers have a propensity to shorten some names, e.g.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992), but the
evidentiary record does not demonstrate such a general propensity with regard to
Petitioner or Respondent’s marks.

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Respondent’s word and design mark bears the prefix NAUTI, as part of
NAUTIGIRL DARE TO BE NAUGHTY, but the NAUTI prefix interacts with the
design elements—the sailor’s cap, the ship’s helm, the water background—to
reinforce the nautical theme.

The NAUTI prefix also interacts with the slogan DARE TO BE NAUGHTY,
which makes express its double entendre. In sum, while Petitioner has shown the
fame of its marks for purposes of Section 2(d), that fame avails it naught, for even if
some members of the public, viewing the NAUTI prefix in Respondent’s mark, may
recall one of Petitioner’s marks, that does not establish that they would reasonably
attribute the goods bearing Respondent’s mark to Petitioner. See Univ. Of Notre
Dame, 217 USPQ at 507.
C. The Nature of the Goods
Respondent’s registration covers tote bags for boating supplies in class 18,
mugs and beverage glassware in class 21, and playing cards in class 28.
Petitioner’s cited marks cover men, women and children’s apparel, tote bags, and
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glass and plastic beverageware, among other products.62 There is a direct overlap
in the parties’ tote bag goods and their glass beverageware. Even though
Respondent has expressly limited her description to “tote bags for boating supplies,”
as Margaret Bizzari, Director of Intellectual Property and product liability for VF
Sportswear, testified, “You could use [Respondent’s tote bag] for anything.… It’s a
pretty standard tote bag. It does have a nautical theme to it, but you could use that
for books. You could use that for groceries. You could use that for travel.”63
Respondent’s last identified category of goods, playing cards in class 28, does
not overlap Petitioner’s cited registrations, which cover such items as sport balls
and flotation devices.64 Petitioner attempts to bridge this gap by asserting “common
law rights” for games and playthings in class 28, including poker card sets, based on
testimony from Nina Flood, Vice President of Marketing and Strategy for VF
Sportswear.65 Her testimony, however, fails to demonstrate the duration and
extent of use of Petitioner’s marks on playing cards or similar goods sufficient to
establish common law rights. Moreover, the Petition for Cancellation is predicated
upon Petitioner’s federal registrations, not common law use.66 See Odom's
Tennessee Pride Sausage, 93 USPQ2d at 2031(Fed. Cir. 2010)(Board need not
consider unpleaded common law use); TBMP § 314 (“A plaintiff may not rely on an
unpleaded claim.”) Even though some of those registrations are in class 28, that,

62 24 TTABVUE, Petitioner’s cited registrations.
63 81 TTABVUE 75, Bizzari testimony, p.71.
64 Registration Nos. 2865229 and 3850361.
65 126 TTABVUE 32; Petitioner’s trial brief, p. 27, citing testimony of Nina Flood, Vice
President of Marketing and Strategy for VF Sportswear, 27 TTABVUE 9.
66 1 TTABVUE.
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standing alone, does not establish that the parties’ goods in that class are related
for purposes of determining likelihood of confusion. Jean Patou, Inc. v. Theon Inc., 9
F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed.Cir. 1993); National Football League v.
Jasper Alliance Corp., 16 USPQ2d 1212, 1216n. 5 (TTAB 1990)(goods in the same
class are not necessarily related).
On the whole, though, most of Respondent’s goods are either identical to or
closely related to Petitioner’s goods, and Petitioner has used its NAUTICA marks on
a wide variety of goods. See Chicago Bears Football Club, Inc. v. 12th
Man/Tennessee LLC, 83 USPQ2d 1073 (TTAB 2007). This DuPont factor favors
Petitioner.
D. Channels of Trade.
Respondent asserts that, “it is literally impossible to encounter Respondent’s
and Petitioner’s goods in the same place,” because she sells her goods exclusively
through her website, at specialty boating trade shows, and at select independent
boutiques in the Pacific Northwest, whereas Nautica sells its goods at major
department stores, through its own outlets, and through third-party sellers such as
Linens N’ Things and Amazon. 67 The standard, though, is not only established, but
“likely-to-continue” trade channels. DuPont, 476 F.2d at 1361. Respondent’s
current channels of trade are more attributable to the start-up nature of her
business than any inherent or permanent limitation on her means of offering her
goods to the public. Her registration places no limitation on the means by which

67 132 TTABVUE 29-30; Respondent’s trial brief, pp. 28-29.
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she offers her goods for sale, and since the goods are, for the most part, identical or
closely related to Petitioner’s, we must presume that they would—or could in the
future—travel in many of the same or similar channels of trade. Genesco Inc. and
Genesco Brands, Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003).
E. Conditions of Sale and Classes of Consumers.
Respondent’s brand is designed for women, but targets men, as well. As
Respondent states in an interrogatory answer, “The end users for Registrant’s
products are typically women and men between the ages of 35 and 75.”68 That is a
broad segment of the market, and one that encompasses Petitioner’s target
consumers, as well. As Petitioner puts it, “Nautica’s consumer base for lifestyle
goods … is very broad and is directed to both men and women with an affinity for
the nautical lifestyle.”69
Respondent’s goods are sold at moderate prices for the most part—e.g., $6.95
for playing cards, coffee mugs and travel mugs at $14.95, and tote bags ranging
from $24.95 to $198.00.70 These are, according to Petitioner, similar to price points
for NAUTICA goods.71 Neither the prices nor the nature of the goods would impel
ordinary consumers to engage in careful, sophisticated consideration of their
purchases. See ProMark Brands Inc. and H.J. Heinz Co. v. GFA Brands, Inc., 114
USPQ2d 1232, 1243 (TTAB 2015). This factor therefore favors Petitioner.

68 23 TTABVUE, Respondent’s answer to interrogatory no. 14.
69 126 TTABVUE 36; Petitioner’s trial brief, p. 31; 27 TTABVUE 14-15; Flood testimony, pp.
13-14.
70 23 TTABVUE, Respondent ’s answer to Interrogatory No. 15 and Deposition exhibit
displaying goods for sale at price points.
71 27 TTABVUE 60; Flood testimony, p. 59.
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F. Concurrent Use Without Evidence of Actual Confusion.
Respondent began using her mark in commerce in January 2008, and applied
to register it that month. Petitioner first learned of Respondent’s application on or
about January 28, 2008, through a trademark watch service.72 Since then, the
parties’ marks have coexisted for over seven years. Yet when Petitioner was asked
by interrogatory to describe “every instance of any inquiry or comment regarding an
association between Petitioner’s products on the one hand, and Respondent’s
products bearing Respondent’s mark on the other hand,” it admitted that,
“Petitioner has not yet become aware of any such incident.”73
Respondent’s experience has been the same. At deposition, she was asked:
Q. So in the last six-and-a-half years that you've been using your mark,
has anyone confused your brand with Nautica?
A. No.
Q. Has anyone contacted you wanting to purchase a Nautica item?
A. No, never.
Q. Has anyone ever asked you if you were affiliated with Nautica?
A. No, never.74
Petitioner first argues that the standard is likelihood of confusion, not actual
confusion, and this is correct. As we have observed:
No one disputes the fact that the test under Section 2(d) of the statute
is a likelihood of confusion and not the occurrence of actual confusion.
But, actual confusion is obviously the best evidence of a likelihood of
confusion, and the absence of actual confusion over a reasonable period

72 118 TTABVUE, Petitioner’s Answer to Interrogatory No. 2.
73 118 TTABVUE, Petitioner’s Answer to Interrogatory No. 13.
74 107 TTABVUE 23; Testimonial Deposition of Christine Palmerton, p. 22.
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of time might well suggest that the likelihood of confusion is only a
remote possibility with little probability of occurring.

Central Soya Co., Inc. v. North American Plant Breeders, 212 USPQ 37, 48
(TTAB 1981).
Petitioner argues further that Respondent’s sales from 2008 through 2013
were so de minimis-- 340 tote bags, 773 mugs, 299 glass beverage articles, and an
unknown number of playing card decks—that the opportunity for actual confusion
did not arise.75 See Gillette Canada, Inc. v. Ranir, Corp. 23 USPQ2d 1768, 1774
(TTAB 1992). Further, Respondent has admitted that, due to differing channels of
trade, “it is literally impossible to encounter Registrant’s and Petitioner’s goods in
the same place.”76 Thus if Respondent’s sales alone were considered, apart from
advertising, this factor would carry little weight.
Yet during that same period of time, Petitioner advertised and promoted its
famous NAUTICA brand products extensively throughout the country, in print
media, in regional newspapers, on national and regional broadcast television,
generating billions of consumer impressions and substantial unsolicited media
attention.77 Petitioner touts the nationwide scope of its brand promotion:
Nautica’s products are offered for sale and sold throughout the entire
United States in many different channels of trade and distribution,
including department stores, specialty stores (inclusive of mom and
pop sized shops and marine goods stores (e.g., West Marine)), Nautica’s
own store which operate under the NAUTICA and NAUTICAKIDS
marks (of which there are over 80 collectively), and over the Internet

75 23 TTABVUE, Respondent’s Answers to Interrogatories 1-4.
76 132 TTABVUE 29-30; Respondent’s trial brief, pp. 28-29.
77 126 TTABVUE 39-46; Petitioner’s trial brief pp. 34-41.
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via Nautica’s own websites and third party websites such as
amazon.com and zappos.com.78

Further, even though Respondent’s sales have been modest, Respondent
maintains that she has engaged in extensive promotion and advertising of her
brand at boat shows, at trade shows, through magazine and TV ads, and via her
website, and estimates that her mark has been seen by hundreds of thousands of
consumers.79 Even though this estimate is unscientific, it is reasonable to infer that
promotion and advertising have exposed Respondent’s registered mark to
appreciably more consumers than sales alone would reflect.
Even though Petitioner has extensively advertised and promoted its famous
NAUTICA brands throughout the entire United States, and even though
Respondent has engaged in concurrent advertising and promotion over the course of
seven years, neither party can report even one instance of consumer confusion. This
factor therefore weighs slightly in favor of Respondent.
G. Weighing the Factors
The parties’ marks, viewed in their entireties, are far more dissimilar than
similar. This factor takes on even greater significance when it is weighed together
with the factors we have already considered: despite the fame of Petitioner’s
NAUTICA marks, despite some overlapping goods, despite the similar actual price
points, despite the years of concurrent advertising to the same classes of consumers,
Respondent’s distinctive word and design mark, taken in its entirety, is so

78 126 TTABVUE 39; Petitioner’s trial brief, p. 34.
79 132 TTABVUE 30; Respondent’s trial brief, p. 29.
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dissimilar in appearance, sound, connotation, and commercial impression that it is
unlikely to engender confusion with Petitioner’s marks.
“In a particular case, any of the du Pont factors may play a dominant role.”
Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 USPQ2d 1347,
1361 (TTAB 2014) citing In re E. I. DuPont de Nemours & Co., 177 USPQ at 567;
Kellogg Co. v. Pack’em, 14 USPQ2d at 1550 (TTAB 1990), aff’d, 951 F.2d 330, 333
(Fed.Cir. 1991)(“ We know of no reason why, in a particular case, a single duPont
factor may not be dispositive.”). On balance, and taking into account the totality of
the evidence of record, we find that Petitioner has failed to prove likelihood of
confusion by a preponderance of the evidence.80
VI. Dilution
Petitioner asserts that the NAUTICA marks are famous for purposes of
protection against dilution by Respondent’s mark, either by blurring or
tarnishment, under 15 U.S.C. § 1125(c). A mark that achieves this level of fame is
accorded a far greater swath of protection than one that is merely famous under
Section 2(d) of the Trademark Act:
the owner of a famous mark that is distinctive, inherently or through
acquired distinctiveness, shall be entitled to an injunction against
another person who, at any time after the owner's mark has become
famous, commences use of a mark or trade name in commerce that is
likely to cause dilution by blurring or dilution by tarnishment of the
famous mark, regardless of the presence or absence of actual or likely
confusion, of competition, or of actual economic injury.

80 We would reach the same conclusion even if we found the DuPont factor of actual
confusion neutral, rather than to weigh slightly in favor of Respondent.
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Trademark Act § 43(c)(1); 15 U.S.C. § 1125(c)(1).
Petitioner refers us to the same evidence of fame it adduced in support of its
likelihood of confusion claim.81 But “fame for likelihood of confusion and fame for
dilution are distinct concepts, and dilution fame requires a more stringent showing.”
4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:104
(4th ed.) (“The standard for the kind of ‘fame’ needed to trigger anti-dilution
protection is more rigorous and demanding than the ‘fame’ which is sufficient for
the classic likelihood of confusion test.”). Accordingly, a mark can acquire ‘sufficient
public recognition and renown to be famous for purposes of likelihood of confusion
without meeting the more stringent requirement for dilution fame.” Coach Servs.
Inc., v. Triumph Learning LLC, 668 F.3d 1356, 1373, 101 USPQ2d 1713, 1724 (Fed.
Cir. 2012), quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1722 (TTAB 2007).
As our primary reviewing court has made clear, “It is well-established that
dilution fame is difficult to prove.” Coach, 101 USPQ2d at 1724. A petitioner “must
show that, when the general public encounters the mark ‘in almost any context, it
associates the term, at least initially, with the mark's owner.” Id. at 1725. In other
words, a famous mark is one that has become a ‘household name.’” Id.
There are four non-exclusive factors to consider when determining whether a
mark is famous:

81 126 TTABVUE 50; Petitioner’s trial brief, p. 45. As noted in footnote 58, Respondent
contends that the fame of Petitioner’s NAUTICA marks is limited to its product lines of
apparel, fragrances, and eyeglasses, whereas Petition claims that NAUTICA is a “lifestyle
brand,” transcending product lines.
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i. The duration, extent, and geographic reach of advertising and
publicity of the mark, whether advertised or publicized by the owner or
third parties.
ii. The amount, volume, and geographic extent of sales of goods or
services offered under the mark.
iii. The extent of actual recognition of the mark.
iv. Whether the mark was registered under the Act of March 3, 1881,
or the Act of February 20, 1905, or on the principal register.

15 U.S.C. § 1125(c)(2)(A). New York Yankees Partnership v. IET Products and
Services, Inc., 114 USPQ2d 1497, 1502 (TTAB 2015); McDonald’s Corp. v. McSweet
LLC, 112 USPQ2d 1268, 1286 (TTAB 2014).
Here, there is no doubt that Petitioner’s NAUTICA marks are registered on
the Principal Register.82 Consumers recognize the NAUTICA marks most for
apparel.83 According to the record evidence, Petitioner Nautica Apparel’s primary
product lines are apparel and accessories,84 which are important and large part of
Nautica Apparel’s offering to the public.85 Its top product line in the United States
is sportswear.86 According to market research, Nautica Apparel was ranked as
second in the menswear market share from 2004 to 2007, with about a 4% share,
trailing Polo Ralph Lauren, which had about a 10% share; in December 2012,
Nautica and Nautica Jeans had the third largest U.S. market share in the
menswear category, with over 2.8% of the market.87 Over the past thirteen years,

82 24 TTABVUE.
83 117 TTABVUE 104; deposition of Jennifer Sacco, Director of Global Marketing and
Licensing for Nautica, p. 15.
84 Id.
85 27 TTABVUE 93; Flood testimonial deposition, p. 91.
86 117 TTABVUE 11; deposition of Mark DiMuro, Vice President of Licensing/Controller of
VF Sportswear, p.7.
87 27 TTABVUE 48-49; Flood testimonial deposition, pp. 47-48; 126 TTABVUE 39;
Petitioner’s trial brief, p. 39. Ms. Flood was not aware of Petitioner purchasing market
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Petitioner Nautica Apparel has invested an average of over $31 million per year in
advertising and promotion,88 and has boasted U.S. sales averaging over $833
million per year.89 But the sales summaries on which Petitioner relies indicate that
the lion’s share of these sales still derives from apparel, such as men’s sportswear,
men’s jeans and furnishings, and, to a lesser extent, women’s sportswear, along
with licensed fragrances.90 Nautica claims 82% to 90% brand awareness among
men and women, but that is limited to fashion consumers.91 The summaries do not
assist us in evaluating the general consuming public’s recognition of the marks as a
designation of source. Even the unsolicited third party publications adduced by
Petitioner tend to group it with other makers of apparel:
Forbes 7/19/93: “Tried and true labels such as Liz Claiborne, Carole Little,
Tommy Hilfiger, Ralph Lauren and Nautica.”

The Washington Post 11/25/94: “This year, everybody’s wearing Polo, Nautica
and Tommy Hilfiger.”
Sun-Sentinel 5/2/2002: “The sportswear apparel giant Nautica has become
the official sunglass outfitter of the Stars & Stripes crew who are hoping to
bring the America’s Cup home.”
HFN 12/15/2003: “The only textiles brands that mean anything are Ralph
Lauren, Tommy Hilfiger and Nautica.”92
Taken together, this record evidence tends to show that Nautica Apparel has
achieved some level of fame for Section 2(d) purposes. But that fails to establish

reports for product categories other than menswear. 27 TTABVUE 96-97; Flood testimonial
deposition, pp. 93-94.
88 126 TTABVUE 40; Petitioner’s trial brief, p. 35; 27 TTABVUE 46-47; Flood deposition,
pp. 45-46.
89 126 TTABVUE 39; Petitioner’s trial brief, p. 34.
90 Sales summaries, Exhibit 21 to Flood testimonial deposition. 27 TTABVUE.
91 126 TTABVUE 38; Petitioner’s trial brief, p. 33.
92 126 TTABVUE 44-45; Petitioner’s trial brief, pp. 39-40.
Cancellation No. 92056754

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that it is “widely recognized by the general consuming public of the United States as
a designation of source,” which is the standard set by the dilution statute, 15 U.S.C.
§ 1125(c)(2)(A). By using the “general consuming public” as the benchmark, the
Trademark Dilution Revision Act, which was signed into law on October 6, 2006,
eliminated the possibility of “niche fame,” which some courts had recognized under
the previous version of the statute. Coach, 101 USPQ2d at1726. Under the current
standard set by the TDRA, Petitioner has not established that it is a “household
name,” and has not carried its burden of proving the NAUTICA marks are famous
for purposes of protection against dilution.
Decision: The Petition for Cancellation is dismissed.