Nauti by Nature?

Nautica Apparel is a popular brand in the fashion world. The brand was founded in 1983 and is now part of the worldwide VF Corporation family of brands. Nautica is well-known, and like any responsible brand owner, is keen on protecting its trademarks and delivering a consistent message to the consuming public. Trademarks, after all, function as consumer protection devices, insofar as they are designed to convey to the public consistent information about the source or sponsorship of goods and services.

But, as is often the case in trademark law, things are not always as simple as brand owners would like. In 2009, an individual from Washington state, Christine Palmerton, obtained a trademark registration for the mark NAUTI GIRL DARE TO BE NAUGHTY (WITH DESIGN) (Registration No. 3700731) for boating supplies (Trademark Class 18), glassware (Trademark Class 21) and playing cards (Trademark Class 28).

Nautica, fearing that the NAUTI GIRL DARE TO BE NAUGHTY (WITH DESIGN) might be threatening the singularity of its brand in the marketplace, decided nearly four years later- in 2013- to seek cancellation of the NAUTI GIRL DARE TO BE NAUGHTY (WITH DESIGN) registration before the Trademark Trial and Appeal Board (TTAB), which is an administrative trial arm of the U.S. Patent and Trademark Office. Nautica had over 40 registrations for NAUTICA itself, some in the same classes as NAUTI GIRL DARE TO BE NAUGHTY (WITH DESIGN).

At issue before the TTAB was whether the NAUTI GIRL DARE TO BE NAUGHTY (WITH DESIGN) mark was likely to cause confusion with the NAUTICA brands, a common issue in cancellation proceedings. In the end, the TTAB ruled that there was no likelihood of confusion. The Trademark Board applied the so-called “anti-dissection rule” which says that two competing marks should be viewed in their entirety, rather than by competing constituent components. Although the two registrations contained common elements, the sound of the marks was found to be dissimilar

Also important to the TTAB was the fact that the NAUTI GIRL DARE TO BE NAUGHTY (WITH DESIGN) mark included a play on words with the term “naughty” and therefore had dual connotations. As the TTAB put it, “NautiGirl [features] the captain of her own ship. Its wording NAUTI GIRL DARE TO BE NAUGHTY reinforces this image, conveying a nautical and double meaning that transcends the mere nautical theme [of Nautica]”. Nautical Apparel, Inc. v. Pemberton(Cancellation No. 92056754) (October 21, 2015) at 19 (non-precedential).

Nautica also argued that its mark was famous and thus Ms. Pemberton had unfairly leveraged off of that fame. This argument, too, washed ashore on the rocks of the anti-dissection rule. In short, the TTAB held that “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 [shown] is tantamount to claiming that Petitioner has superior rights to all NAUT- and NAUTI- prefix marks for nautical themed goods. We disagree” Id. at 23,

For more information about this or any copyright or trademark issues, please contact Fred Frawley (afrawley@eatonpeabody.com)

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