Nautica Apparel, Inc.v.Nauti Marine

Trademark Trial and Appeal Board

Jun 16, 2014

No. 91205138 (T.T.A.B. Jun. 16, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Nautica Apparel, Inc.
v.
Nauti Marine
_____

Opposition No. 91205138
_____

Stephen L. Baker of Baker & Rannells for Nautica Apparel, Inc.

Bruno Tarabichi of Owens Tarabichi for Nauti Marine.
_____

Before Quinn, Cataldo and Gorowitz, Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Nauti Marine (“Applicant”) filed, on December 12, 2011, an intent-to-use
application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register
on the Principal Register the mark NAUTI LIFE (in standard characters) for
“bathing suits; beachwear; beanies; board shorts; flip flops; hats; shirts; tank tops”
in International Class 25.
Nautica Apparel, Inc. (“Opposer”) opposed registration pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s
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mark, when applied to Applicant’s goods, so resembles Opposer’s numerous
previously used and registered and famous NAUTICA and NAUTICA formative
marks for clothing, including beachwear, fragrance products, beach and boating
goods, furniture, watches, accessories and various other goods and services, as to be
likely to cause confusion. Opposer raised two additional grounds: that Applicant’s
mark is likely to dilute Opposer’s mark through dilution by blurring and
tarnishment pursuant to Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c);
and that Applicant’s mark falsely suggests a connection with Opposer under Section
2(a) of the Trademark Act, 15 U.S.C. § 1052(a).1
Applicant, in its answer, denied the salient allegations in the notice of
opposition.
The record consists of the pleadings; the file of the involved application; and
Opposer’s testimony deposition of Margaret Bizzari, Opposer’s director of
intellectual property, with voluminous related exhibits. Applicant neither took
testimony nor offered any other evidence. Only Opposer filed a brief at final
hearing.
FINDINGS OF FACT
Opposer established ownership of fifty-eight valid and subsisting
registrations of NAUTICA or variations thereof. The most relevant registrations are
set forth below.

1 Opposer did not mention the Section 2(a) claim in its brief. Accordingly, we deem this
claim to be waived. See Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313,
1314 n.4 (TTAB 2005).

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Registration No. 1862585 for the mark NAUTICA, in
typed form,2 for “footwear” in International Class 25;3

Registration No. 2993023 for the mark NAUTICA BLUE,
in standard characters, for “men's, women's and children's
wearing apparel, namely, hosiery, shoes, sneaker, boots,
moccasins, undershirts, boxer shirts, shirts, blouses,
trousers, pants, jackets, coats, suits, bathing suits,
bathrobes, slippers, shorts, ties, neckwear, scarves, socks,
hats and caps, gloves and mufflers, belts and suspenders
and foul weather gear” in International Class 25;

Registration No. 3076796 for the mark NAUTICA
COMPETITION, in standard characters, for “men's,
women's and children's wearing apparel, namely, shoes,
sneakers, boots, undershirts, shirts, pants, jackets, coats,
bathing suits, bathrobes, pajamas, slippers, shorts, ties,
socks, hats, caps, gloves and foul weather gear” in
International Class 25;

Registration No. 3168753 for the mark NAUTICAKIDS,
in standard characters, for “coats; dresses; footwear;
gloves; headwear; jackets; jeans; pajamas; pants;
raincoats; robes; scarves; shirts; shorts; skirts; sweaters;
swimsuits; t-shirts; trousers; underwear; vests” in
International Class 25;

Registration No. 3591811 for the mark NAUTICA
OPTIONS, in standard characters, for “dress shirts;
jackets; men’s suits; neckwear; overcoats; pants” in
International Class 25;

Registration No. 3837562 for the mark NAUTICA, in
standard characters, for “bathing suits; belts for clothing;
belts made from imitation leather; blouses; dress shirts;
dresses; foul weather gear; gloves; hats; jackets; jeans;
men’s suits; outer jackets; over coats; pajamas; pants; rain
coats; robes; scarves; shirts; shorts; skirts; socks; sport

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (April 2014).
3 This registration and other registrations which include NAUTICA as a separate term
include a translation of NAUTICA as “nautical.”
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coats; sweaters; swim trunks; swimwear; T-shirts; ties;
underwear; vests” in International Class 25;

Registration No. 3841455 for the mark NAUTICA, in
standard characters, for “retail store and on-line retail
store services featuring wearing apparel, fashion
accessories, home fashions, eyewear, luggage, watches
and personal care products” in International Class 35;

Registration No. 3850360 for the mark NAUTICA, in
standard characters, for “wet suit gloves; wet suits; wet
suits for water-skiing and sub-aqua” in International
Class 25; and

Registration No. 3888149 for the mark NAUTICA
ISLAND, in standard characters, for “blazers; caps; coats;
hats; jackets; pants; shirts; shorts; sweaters; swimsuits;
T-shirts” in International Class 25.

We will focus our attention on Registration Nos. 1862585 and 3837562.
Opposer also has previously used (but not registered) a variety of other
variations of its NAUTICA mark in connection with clothing. (Bizzari dep., pp. 16-
22, Ex. 4; see examples in Opposer’s Brief, pp. 11-13). For purposes of this
proceeding, Opposer’s claim of common law rights is unnecessary and we have not
considered it in making our decision.
Opposer is the source of a wide variety of consumer products, ranging from
clothing and footwear to fragrances and toiletries. All are sold under the mark
NAUTICA and variations of that mark. NAUTICA is what is known as a “lifestyle
brand”:
They’ve [Opposer] grown in the sense that first they came
out with a fragrance. Then they came out with eyewear,
then watches. Then they moved into home goods such as
beddings, furniture, luggage. What a lifestyle brand is you
want the consumer to live a NAUTICA lifestyle, so they
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will smell like NAUTICA, wear NAUTICA, sleep in
NAUTICA, use NAUTICA in cooking, in every aspect of
their lives.
(Bizzari dep., pp. 11-12)

Indeed, the record shows that Opposer has engaged in the coordinated marketing of
a variety of products using a consistent concept or image characterized by nautical
themes.
The core products in Opposer’s NAUTICA line of products are apparel.
Opposer began using its NAUTICA mark on apparel in 1983. Over the past thirteen
years, Opposer’s annual sales under its NAUTICA marks in the United States have
averaged over $840 million. (Bizzari dep., p. 40; Ex. 14). Opposer enjoys the fifth
largest market share in the menswear category in the United States (excluding
private label brands), behind the likes of Ralph Lauren and Levi’s. (Bizzari dep., pp.
44-46; Ex. 16).
Opposer’s goods are sold in department stores, specialty stores, NAUTICA
free-standing stores, and discount stores (e.g., Sams Club and Costco). (Bizzari dep.,
pp. 24-29). Further, the goods are sold in department stores like Macy’s (with over
800 stores) in what is called a “store within a store”; in this setting, all NAUTICA
branded clothing is displayed exclusively in a single area. (Bizzari dep., p. 26; Ex.
5). The goods also are sold through the Internet at and
. (Bizzari dep., p. 25).
Opposer’s annual expenditures in advertising and promotional efforts over
the past thirteen years have averaged over $31 million. (Bizzari dep., pp. 40-41; Ex.
14). The NAUTICA brand is advertised through television (60 Minutes, NCIS and
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Wheel of Fortune), in radio commercials, and print ads (in national publications
such as Oprah, People, Vanity Fair and Elle), as well as through the Internet and
catalogs. (Bizzari dep., pp. 32-35; Exs. 8, 10, and 11). Opposer promotes itself and
its products through sponsorship agreements for various athletic, musical and
charitable events (Nautica Malibu Triathlon, NYC Triathlon, Legg Mason Tennis
Classic, and U.S. Sailing Team). (Bizzari dep., pp. 38-40; Ex. 13). Market research
puts annual consumer impressions or encounters with Opposer’s marks at almost 2
billion per year. Id. Opposer also promotes its brand through social media, such as
Facebook, Twitter and Instagram; on Facebook, Opposer has over 3.8 million
followers or “friends.” (Bizzari dep., pp. 32-33; Ex. 9). Opposer further enjoys
substantial publicity by way of voluminous unsolicited references in the media to
Opposer’s products and NAUTICA marks. (Bizzari dep., pp. 41-43; Ex. 15). The
examples of U.S. media articles indicate widespread exposure to the NAUTICA
marks in the United States in a wide variety of publications over an extended
period of time.
STANDING
Opposer has established its standing to oppose registration of the involved
application. In particular, Opposer has properly made of record its pleaded
registrations of its various NAUTICA marks. Thus, opposer has shown that it is not
a mere intermeddler. Opposer’s registrations of its marks establish that Opposer
has standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
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1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
PRIORITY
In view of Opposer’s ownership of valid and subsisting registrations of its
NAUTICA marks, Opposer’s priority is not in issue with respect to the goods
identified in those registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). 4
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Opposer must establish that there is a likelihood of confusion by a
preponderance of the evidence. In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other
relevant du Pont factors in the proceeding now before us, are discussed below.
FAME
Opposer claims that its NAUTICA mark is famous. Fame of the prior mark
plays a dominant role in likelihood of confusion cases featuring a famous mark.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.

4 As indicated earlier, for purposes of this proceeding we rely on Opposer’s prior rights
based on its registrations and not the common law rights Opposer may have.
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2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000);
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). Because of the extreme deference accorded to a famous mark in
terms of the wide latitude of legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, it is the duty of the party asserting
fame to clearly prove it. Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594,
1597 (TTAB 2009); and Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901, 1904 (TTAB 2007). Accordingly, we consider the fame factor first.
We may consider evidence of sales, advertising expenditures, and the length
of time the mark has been used, among other things, when determining whether or
not a mark is famous. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309;
Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1817 (TTAB 2005).
Opposer has continuously used its mark NAUTICA on clothing for thirty
years. During this time, Opposer’s sales under the mark have been impressive, and
it has made substantial expenditures in advertising and promotional efforts
through national media. Furthermore, the evidence of public recognition, as
reflected in unsolicited media attention, is significant. By all accounts, Opposer,
under its NAUTICA brand, is a market leader in the apparel field.
Therefore, we find that the NAUTICA mark has achieved a significant degree
of fame in the apparel field. As we indicated, fame is a dominant factor.
Accordingly, this factor strongly favors Opposer in the likelihood of confusion
analysis.
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THE GOODS
In comparing the goods and the channels of trade for the goods we must
consider the goods as identified in the application and pleaded registrations. See
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”). It is sufficient if a likelihood of confusion is found
with respect to use of Applicant’s mark on any item that comes within the
description of goods in the application or registration. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple
Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Applicant’s identification reads “bathing suits; beachwear; beanies; board
shorts; flip flops; hats; shirts; tank tops.” Opposer’s Registration No. 1862585 for the
mark NAUTICA in typed characters identifies “footwear”; Registration No. 3837562
for the mark NAUTICA in standard characters covers, inter alia, “bathing suits;
swimwear; shorts; hats; and hats.” Thus, to the extent indicated, the parties’ goods
are identical in part.5
In addition, the other Class 25 goods listed in Opposer’s Registration No.
3837562 are closely related to the goods identified in the present application.

5 The same is true for registrations Opposer asserts for variations of the NAUTICA mark,
including NAUTICA BLUE, NAUTICA COMPETITION, NAUTICAKIDS and NAUTICA
ISLAND.
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We find that the parties’ goods are identical in part, or otherwise closely
related. This duPont factor strongly favors Opposer’s position.
TRADE CHANNELS
Because the goods of the parties are identical, in part, we presume that the
channels of trade for those goods are identical or otherwise related. See 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 channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers through the same
channels of trade.”). See also American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith
& 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.”). As in these cases, here too, there are no
trade-channel restrictions in the opposed application, nor in the registrations we
have noted.
Accordingly, this factor strongly favors Opposer’s position.
THE VARIETY OF OPPOSER’S GOODS ON WHICH MARK IS USED
Under the ninth duPont factor Opposer argues that the NAUTICA mark is
used with a large variety of goods. (Opposer’s Brief, pp. 18-20). The registrations
Opposer asserts, including ones not specifically mentioned in this decision, are
sufficient to establish that Opposer has used the NAUTICA mark on a wide variety
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of goods. Chicago Bears Football Club Inc. v. 12TH Man/Tennessee LLC, 83 USPQ2d
1073, 1075 (TTAB 2007). This factor also favors Opposer.
THE CONDITIONS APPLICABLE TO SALES
Opposer argues that the goods in its asserted registrations and those
identified in the opposed application include goods which are offered to consumers
generally at various price points, and are not exclusively expensive goods offered to
sophisticated purchasers. We agree. The identified goods are apparel items which
include relatively inexpensive goods offered to the general public, not sophisticated
or expensive goods which would be purchased with extreme care. This factor favors
Opposer’s position.
THE MARKS
We now direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. We must compare the marks in their
entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1960 (Fed. Cir. 2005), quoting In re E.I. du Pont de Nemours & Co., 177 USPQ
at 567. “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Moreover, in comparing
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the marks, we are mindful that where, as here, Applicant’s goods are identical to
Opposer’s goods in part, 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); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing
Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
The marks are similar in sound and appearance. Although Applicant’s mark
includes the additional term “LIFE,” purchasers in general are inclined to focus on
the first word or portion in a trademark; in Applicant’s mark, “NAUTI” is the first
word. Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“It is often the first part of a mark which is likely to be impressed upon the
mind of a purchaser and remembered.”). See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. This first word is
very similar in sound and appearance to Opposer’s mark NAUTICA.
As to meaning, “naut” is defined as an abbreviation for the term “nautical.”
(); thus, Applicant’s mark, when used in connection with bathing suits,
flip flops, and the like, conveys the idea of “nautical life” or a nautical lifestyle. As
indicated earlier, Opposer’s mark NAUTICA means “nautical.” Thus, the marks are
similar in meaning.
We find that NAUTICA and NAUTI LIFE are similar in sound, appearance,
and meaning, and overall commercial impression, taking into account the fact that
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NAUTICA is a famous mark, and the fact that the parties’ goods are, at least in
part, identical. In this case the addition of the suggestive term “LIFE” in Applicant’s
mark is not sufficient to distinguish it from Opposer’s NAUTICA mark, but more
likely to be viewed as identifying a variation or subset of clothing lines offered by
the source identified as NAUTICA. Although we have focused on Opposer’s famous
mark NAUTICA for purposes of our analysis, the fact that Opposer has registered
numerous variations of this mark for clothing and related items, as the record
establishes, confirms our conclusion here. The evidence of registration of NAUTICA
in varying forms shows that consumers are conditioned to see NAUTICA in varying
forms. That is, consumers are likely to perceive Applicant’s mark as identifying a
variation of or a line of NAUTICA products and, thus, are likely to be mistaken that
Applicant’s goods are licensed or sponsored by, or are in some way connected,
related or associated with Opposer.
The similarity between the marks is a factor that weighs in Opposer’s favor.
THE NUMBER AND NATURE OF SIMILAR MARKS IN USE ON SIMILAR
GOODS
Opposer argues that there is no evidence of third-party use of NAUTICA
marks on goods similar to those at issue here. Opposer also argues that the record
shows that Opposer has policed its mark. We agree. We would find NAUTICA to be
a strong mark with or without this evidence because of the evidence establishing
the fame of Opposer’s NAUTICA mark for wearing apparel.
Accordingly, this factor favors Opposer’s position.
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CONCLUSION
We conclude, after considering all evidence and arguments bearing on the du
Pont factors, including the evidence and arguments that we have not specifically
discussed herein, that there is a likelihood of confusion between Opposer’s
NAUTICA mark and Applicant’s mark NAUTI LIFE for identical clothing items.
As a final note, the case law is clear that famous marks enjoy a wide latitude
of protection. “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 .... When an opposer’s trademark is a strong, famous mark, it can never be of
little consequence.” Recot Inc. v. M.C. Becton, 54 USPQ2d at 1897, quoting Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284
(Fed. Cir. 1984). The Federal Circuit has stated repeatedly that there is no excuse
for even approaching the well-known trademark of a competitor inasmuch as “[a]
strong mark ... casts a long shadow which competitors must avoid.” Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 22 USPQ2d at 1456.
DILUTION
Having determined that Opposer is entitled to prevail in this opposition
proceeding based upon its Section 2(d) claim of likelihood of confusion, we need not
reach the merits of Opposer’s dilution claim. See American Paging Inc. v. American
Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989), aff’d without opinion, 17
USPQ2d 1726 (Fed. Cir. 1990).

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DECISION
The opposition is sustained, and registration to Applicant is refused.