Nautica Apparel, Inc.v.Grow Marketing, LLC dba Noodle Mon

Trademark Trial and Appeal Board

Oct 21, 2020

92064768 (T.T.A.B. Oct. 21, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Nautica Apparel, Inc.

v.

Grow Marketing, LLC
_____

Cancellation No. 92064768
_____

John M. Rannells of Baker and Rannells PA for Nautica Apparel, Inc.

Grow Marketing, LLC, pro se.
_____

Before Bergsman, Wolfson, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Grow Marketing, LLC (“Respondent”) owns Registration No. 4894811 of the
standard character mark NAUTIGUY for “T-shirts; T-shirts for Men; Tee shirts,” in
International Class 25.1 Nautica Apparel, Inc. (“Petitioner”) seeks cancellation of the

1 Respondent’s registration issued on February 2, 2016. Respondent’s mark is shown in the
registration as “NautiGuy,” but “this does not change the nature of the mark from standard
character to special form.” New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1
(TTAB 2020) (citing In re Calphalon Corp., 122 USPQ2d 1153, 1154 n.1 (TTAB 2017)
(internal citation omitted)). Our reference in this opinion to the NAUTIGUY “mark in all
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registration on two grounds: (1) under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that the registered NAUTIGUY mark so resembles
Petitioner’s registered NAUTICA and NAUTICA-formative marks for clothing and
other goods and services as to be likely, when used in connection with the goods
identified in the registration, to cause confusion, to cause mistake, or to deceive; and
(2) under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), on the ground that
Respondent’s mark was not in use in commerce prior to the filing of the use -based
application that matured into Respondent’s registration.
The case is fully briefed.2 We grant the Amended Petition for Cancellation on the
basis of Petitioner’s Section 2(d) claim and do not reach its Section 1(a) claim.3
I. Background
We briefly summarize below the history of this case because it provides useful
background to our discussion of the record and our analysis of the issues.
Petitioner filed this proceeding in November 2016, nine months after
Respondent’s registration issued, seeking cancellation under Sections 2(a), 2(d), and
43(c) of the Trademark Act, 15 U.S.C. §§ 1052(a) and (d), and 1125(c). 1 TTABVUE

uppercase letters reflects the fact that [a registered mark] in standard character form is not
limited to any particular font style, size, or color.” Id. (citing 37 C.F.R. § 2.52.)
2 Citations in this opinion to the briefs, the record, and other filings in the case refer to
TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473,
1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the
docket entry number, and any numbers following TTABVUE refer to the page number(s) of
the docket entry where the cited materials appear.
3 See, e.g., Tivo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1118 (TTAB 2018); Azeka
Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (the Board has “discretion to
decide only those claims necessary to enter judgment and dispose of the case.”).
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24-30.4 Respondent answered through counsel and denied the salient allegations of
the petition for cancellation. 5 TTABVUE 2-6. Respondent’s counsel then moved to
withdraw, 6 TTABVUE 2-3, and Respondent’s owner, Susan Laudwig, advised the
Board that Respondent would represent itself. 8 TTABVUE 3. The Board
acknowledged Respondent’s new pro se status and set new case management dates.
9 TTABVUE 1-2.5
Respondent then sought an extension of those dates to engage new counsel under
an insurance policy. 10 TTABVUE 2. Over Petitioner’s objection, 11 TTABVUE 2-3,
the Board granted a 30-day extension. 12 TTABVUE 5-6. Respondent’s former
counsel then reappeared in the case on Respondent’s behalf, 13 TTABVUE 2, and
promptly moved for summary judgment on all of Petitioner’s claims. 14 TTABVUE 2-
18. The Board denied the motion. 18 TTABVUE 11.
Respondent’s counsel then moved to withdraw a second time. 19 TTABVUE 2-3.
Petitioner objected and moved for the entry of judgment against Respondent based
on Respondent’s alleged loss of interest in the case or, in the alternative, for (1)
summary judgment on its Section 2(d) claim based on Respondent’s deemed
admissions of various requests for admission to which Respondent had served no
responses, or (2) an order compelling Respondent to respond without objection to all
of Petitioner’s outstanding discovery requests. 20 TTABVUE 2-8.

4 As discussed below, Petitioner elected not to proceed on its claims under Sections 2(a) and
43(c), and was granted leave to add the Section 1(a) claim.
5 In the March 20, 2017 order allowing Respondent time to appoint new counsel or state that
it intended to represent itself, the Board “strongly” advised Respondent to secure the services
of an attorney familiar with Board inter partes proceedings. 7 TTABVUE 2.
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Ms. Laudwig again advised the Board that Respondent would represent itself, 21
TTABVUE 3, and she responded to Petitioner’s motion on Respondent’s behalf. 22
TTABVUE 2-25. The Board denied Petitioner’s motion for the entry of judgment for
loss of interest in the case, 24 TTABVUE 2-3, allowed Respondent to withdraw its
deemed admissions and denied Petitioner’s motion for summary judgment, id. at 4-
9, but ordered Respondent to respond to all of Petitioner’s discovery requests within
20 days of the mailing date of the Board’s order. Id. at 8-10. The Board admonished
Respondent as follows:
If Respondent fails to serve responses as directed herein,
Petitioner’s remedy lies in a motion for sanctions, as
appropriate, pursuant to Trademark Rule 2.120(h)(1).
Furthermore, under certain circumstances, a party may be
barred by its own objections or responses from later
introducing the information sought in the request as part
of its evidence on the case. Similarly, a party that fails to
provide information, or provides an untimely supplement,
may be precluded from using that information or witness
at trial.
Id. at 10-11.
Petitioner next moved to compel discovery and for sanctions, requesting that the
Board restrict Respondent to a first use date of May 1, 2016, grant Petitioner leave
to amend its petition for cancellation to include allegations that the involved
registration is void, and compel further responses to certain interrogatories and
requests for production of documents. 25 TTABVUE 2-12. Respondent did not
respond to the motion, and the Board granted the sanctions motion as conceded for
“relief in the form of a Board order restricting Respondent to a date of first use of May
1, 2016, based on its response and attachment to Document Request No. 5” and for
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leave to “amend its Petition to Cancel to include allegations that Respondent’s
Registration No. 4894811 is void and/or invalid.” 28 TTABVUE 1-2. The Board also
ordered Respondent to respond to the cited discovery requests without objections
within 20 days, id., and again noted that in the event of a failure to comply with the
order, “Petitioner’s remedy may lie on a motion for sanctions, as appropriate.” Id.
Petitioner then filed (1) an Amended Petition for Cancellation that included a new
Section 1(a) claim that the involved registration was void because Respondent did not
use the registered mark in commerce prior to the May 20, 2015 filing date of the
underlying application, 29 TTABVUE 2-9, and (2) another motion for discovery
sanctions based on Respondent’s failure to respond sufficiently to the discovery
requests at issue on Petitioner’s prior motion. 31 TTABVUE 2-12. Respondent once
again did not respond to the motion, and the Board granted it as conceded, 33
TTABVUE 1, ordering that “Respondent is restricted from submitting any evidence
of use of its mark in commerce, including any evidence of extent of sales or advertising
and promotion of goods bearing the mark,” id. at 1-2, and that Respondent was
required to answer the amended petition for cancellation within 30 days. Id. at 2.
Accordingly, Respondent was precluded at trial from asserting a date of first use
of its mark prior to May 1, 2016,6 and from introducing any evidence of use of its mark

6 Respondent’s predicament is entirely of its own making. By its own admission, it finds itself
subject to the preclusion order due to its sloppiness in responding to discovery, compounded
by its failure to respond to the subsequent sanctions motion or to seek reconsideration of the
Board’s order. The Board has long held that “[s]trict compliance with the Trademark Rules
of Practice and, where applicable, the Federal Rules of Civil Procedure, is expected of all
parties before the Board, whether or not they are represented by counsel.” McDermott v. S.F.
Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1212 n.2 (TTAB 2006). This message was
delivered to Respondent at the outset of this case, 2 TTABVUE 5, but was never heeded.
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in commerce, including any evidence of the extent of sales or advertising and
promotion of goods bearing the mark.
II. The Record and Evidentiary Matters
A. Record
The record consists of the pleadings,7 the file history of Respondent’s registration,
by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following
materials submitted by the parties:
Petitioner:
 The testimony declaration of Naushaba Moeen (“Moeen Decl.”), the Senior
Vice President of Authentic Brands Group, the owner of Petitioner, and
Exhibits 1-13 thereto (39 TTABVUE 1-486);8
 Petitioner’s Notice of Reliance covering pages from the Trademark
Electronic Search System (“TESS”) of the United States Patent and
Trademark Office (“USPTO”) regarding Petitioner’s pleaded registrations
(37 TTABVUE 2-202); and

7 The operative pleadings are Petitioner’s Amended Petition for Cancellation, 29 TTABVUE
2-10, and Respondent’s Answer to Amended Petition for Cancellation. 36 TTABVUE 3-6.
Petitioner’s Amended Petition adds a new claim under Section 1(a) of the Trademark Act,
and re-pleads claims of likelihood of confusion, a false suggestion of a connection under
Section 2(a) of the Trademark Act, and dilution under Section 43(c) of the Act, but Petitioner
stated in its main brief that it is not proceeding on the claims under Sections 2(a) and 43(c).
49 TTABVUE 7 n.2. Respondent’s Answer denied most of the salient allegations of the
Amended Petition, and did not assert any affirmative defenses.
8 We will cite Ms. Moeen’s declaration by paragraph and exhibit number (e.g., “Moeen Decl.
¶ 41; Ex. 8”) and, where useful in following our analysis, by TTABVUE pages as well.
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 Petitioner’s Rebuttal Notice of Reliance and Exhibits 1-3 thereto, consisting
of Google search engine results and materials from a Facebook page (48
TTABVUE 2-18).
Respondent:
 The testimony declaration of Ms. Laudwig (“Laudwig Decl.”) (44 TTABVUE
3-4);9 and
 Respondent Notice of Reliance (46 TTABVUE 3-4; 47 TTABVUE 2-17).
B. Evidentiary Objections10
Petitioner asserts a number of evidentiary objections in an Appendix to its main
brief. 49 TTABVUE 37-40. On the basis of the Board’s August 31, 2019 preclusion
order, which restricted Respondent “from submitting any evidence of use of its mark
in commerce, including any evidence of the extent of sales or advertising and
promotion of goods bearing the mark,” 33 TTABVUE 1-2, Petitioner moves to strike

9 We will cite Ms. Laudwig’s declaration in the manner of Ms. Moeen’s declaration.
10 In its reply brief, Petitioner moves to strike Respondent’s brief in its entirety because
Respondent filed it one day late under the Board’s January 21, 2020 order extending various
case management dates. 51 TTABVUE 2-3. Petitioner moves in the alternative to strike
certain portions of the brief. Id. at 3-4. “If a brief on the case is not timely filed . . . it may be
stricken or given no consideration by the Board.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) Section 539 (June 2020). Although the untimely filing of
Respondent’s brief is merely the last in a series of failures by Respondent to comply with the
applicable rules and the Board’s orders, we will exercise our discretion to consider
Respondent’s brief. Cf. Ariola-Eurodisc GmbH v. Eurotone Int’l Ltd., 175 USPQ 250 (TTAB
1972) (brief filed three weeks late and 11 days prior to an oral hearing stricken). We deny
Petitioner’s alternative motion to strike certain portions of the brief, which Petitioner
characterizes as “narratives” offered by Respondent, 51 TTABVUE 3-4, because those
portions amplify Respondent’s denials of a likelihood of confusion and do not involve the
submission of evidence in potential violation of the Board’s August 31, 2019 preclusion order.
33 TTABVUE 1-2. See generally TBMP Section 539 (“Subject to the provisions of Fed. R. Civ.
P. 11, a party is entitled to offer in its brief on the case any argument it believes will be to its
advantage.”)
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“any and all references to any testimony or other evidence of ‘use’ of [Respondent’s]
mark or any evidence of sales, advertising or promotion of goods bearing
[Respondent’s] mark.” 49 TTABVUE 37. Petitioner objects specifically to one sentence
in paragraph five of Ms. Laudwig’s declaration, one sentence in paragraph a) and one
sentence in paragraph c) of Respondent’s Notice of Reliance, and statements in two
pages of the exhibit to the Notice of Reliance. Id. at 37-38. The two sentences and the
statements pertain to The Water Soul, an entity that Respondent claims sells its
goods under the NAUTIGUY mark.
Petitioner also objects on hearsay grounds “to all references and other evidence
submitted by [Respondent] to support third-party use of the term ‘naut’ or ‘nauti’ to
the extent that the references are submitted for the truth of any matter set forth in
the documents,” id. at 38, and objects alternatively to Respondent’s submission of
Internet search summaries as part of its attachments to its Notice of Reliance. Id. at
39. Petitioner specifically requests that the Board strike search summaries regarding
four Missouri businesses that use the term “nauti,” as well as summaries for searches
regarding “nauti,” “nauti stores,” “nauti restaurants,” “nauti apparel,” and “nauti
clothing.” Id.11 (citing 47 TTABVUE 4-7, 11-12, 14-17).

11 Petitioner objects to Ms. Laudwig’s statement in her declaration that “due to my limiting
sanctions due to my laymen attempt at defending myself.” This statement is the preamble to
her statement that she will “rely that the Board will make Nautica prove without a
reasonable doubt that consumer’s would really confuse NautiGuy with Nautica.” Laudwig
Decl. ¶ 7. 49 TTABVUE 39. We overrule Petitioner’s objection to this statement. See TBMP
Section 539. As discussed below, however, we disregard Respondent’s several requests that
we impose on Petitioner a burden of proof higher than the applicable preponderance of the
evidence standard.
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Respondent does not address Petitioner’s objections in its brief. Instead,
Respondent argues that it “proved that if a true ‘incognito’ search was done via Google
with searches like ‘Nauti Apparel’, The Water Soul Website that has NautiGuy
apparel on their website, is organically found on the first page of Google along with
several other ‘Nauti’ brands that are not owned by Nautica,” 50 TTABVUE 3, and
that “if Google doesn’t even recognize Nautica as the root of Nauti, the public doesn’t
as their searches are based on data collected from organic searches,” which “proves
that the public doesn’t associate any ‘Nauti’ businesses with ‘Nautica.’” Id. at 4.12
We overrule as moot Petitioner’s hearsay objections to Respondent’s third-party
use evidence. As Petitioner itself notes, we always consider such Internet evidence
only for “‘what the documents show on their face,’” not “to demonstrate the truth of
what has been printed.’” 49 TTABVUE 38 (quoting TBMP Section 704.08(b)). We also
overrule as moot Petitioner’s objections to the statements in paragraphs a) and c) of
Respondent’s Notice of Reliance because such statements are not evidence.
As context for our disposition of Petitioner’s remaining objections to Ms. Laudwig’s
statement that “However, several businesses do come up including The Water Soul,
where NautiGuy is sold,” Laudwig Decl. ¶ 5, to the statements in the Notice of
Reliance regarding The Water Soul, 46 TTABVUE3, and to the results of the Google
search engine searches attached to Respondent’s Notice of Reliance at 47 TTABVUE

12 We decline Respondent’s request in its brief that the Board “open their computers, click on
Google . . . and do a search for a few terms such as ‘Nauti Apparel,’ ‘Nauti Clothes,’ ‘Nauti
businesses.’” 50 TTABVUE 4. Each party is responsible for the submission of evidence to
support its arguments.
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4-7, 11-17, we display below the page of results from Respondent’s search of the term
“nauti stores”:

Id. at 4. These results, and the others in the record like them, are “inadmissible
because [they] merely offer[ ] links to information not otherwise of record.” Edom
Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (quoting Calypso Tech.,
Inc. v. Calypso Capital Mgmt., 100 USPQ2d 1213, 1219 (TTAB 2011) (“Google search
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results 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,’ may not be
made of record by notice of reliance.”)).13 We sustain Petitioner’s objection to the
search results at 47 TTABVUE 4-7, 11-17, and to Ms. Laudwig’s and Respondent’s
related statements, and have given them no consideration in our decision.
III. Entitlement to a Statutory Cause of Action14
To establish entitlement to a statutory cause of action under Section 13 or 14, a
plaintiff must demonstrate a real interest in the proceeding and a reasonable belief
of damage. Australian Therapeutic Supplies Pty Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837, *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco
v. Gen. Cigar Co., 753 F.2d 1270, 111 USPQ2d 1058, 1061 (Fed. Cir. 2014); Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed.
Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999)).15

13 As the Board noted in Edom Labs., even if the results were admissible, many of “the web
pages have limited probative value” because they appear to pertain to businesses selling
goods other than those at issue here. Edom Labs., 102 USPQ2d at 1550 n.10. See Omaha
Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1695 (Fed.
Cir. 2018) (where involved goods are identical, third-party uses “on unrelated goods are
properly understood as having no real probative” value on the issue of the strength of the
plaintiff’s mark).
14 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” The parties here have
done so as well. 49 TTABVUE 13; 50 TTABVUE 4. We now refer to this inquiry as entitlement
to a statutory cause of action. Despite the change in nomenclature, our prior decisions and
those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable.
15 Respondent argues that Petitioner does “not have a true belief that they will suffer
damages by the confusion of the marks or they would have opposed the mark in the given
timeframe of the notice of publication period or the 30 day extension of time that the Board
granted them.” 50 TTABVUE 4. Respondent claims that Petitioner “has no respect for the
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Petitioner properly made of record its numerous pleaded registrations of its
various NAUTICA and NAUTICA-formative marks pursuant to Trademark Rules
2.122(d)(1) and (2), 37 C.F.R. § 2.122(d)(1) and (2). Because Petitioner’s pleaded
registrations are of record, Petitioner has established a real interest in the proceeding
and a reasonable belief of damage. New Era, 2020 USPQ2d 10596 at *6 (citing Lipton
Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982)).
IV. Petitioner’s Section 2(d) Claim
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Petitioner must prove, by a

Board’s time or small business owners and the time and money spent to develop a brand
name with limited resources or the Petitioner would have filed their cancellation immediately
if they truly felt it was in conflict with their trademark.” Id. According to Respondent, the
“fact that they terminated the 30 day window shows that it wasn’t of importance to their
company. To the defendant, it is everything.” Id. Petitioner’s election to petition to cancel
Respondent’s registration rather than to oppose its issuance has no bearing on whether
Petitioner is entitled to bring a statutory cause of action in this proceeding. See TPI Holdings,
Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1413 (TTAB 2018) (pleaded laches
defense considered separately from threshold issue of standing). To the extent that
Respondent’s argument is construed as an assertion of the equitable defense of laches, see,
e.g., Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1609-12 (TTAB 2018), Respondent did
not plead laches as an affirmative defense in its Answer to Petitioner’s Amended Petition for
Cancellation, and we can give no consideration to an unpleaded defense. See, e.g., Moreno v.
Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1030 n.9 (TTAB 2017) (unpleaded claim of
laches given no consideration); H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1720
(TTAB 2008).
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preponderance of the evidence,16 that it has priority in the use of its marks, and that
Respondent’s use of its mark is likely to cause confusion, mistake, or deception as to
the source or sponsorship of the goods identified in the application. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000); New Era,
2020 USPQ2d 10596 at *2-3.
A. Priority
“Merely because [Petitioner] properly submitted its [NAUTICA] registration[s]
into evidence does not mean that it has established priority on its likelihood of
confusion claim. ‘In a cancellation proceeding such as this one where both parties own
registrations, priority is in issue.’” Double Coin Holdings Ltd. v. Tru Dev., 2019
USPQ2d 377409, *4 (TTAB 2019) (quoting Couch/Braudsdorf Affinity, Inc. v. 12
Interactive, LLC, 110 USPQ2d 1458, 1474 (TTAB 2014)).
As discussed below, we focus in our analysis of Petitioner’s Section 2(d) claim on
the NAUTICA, NAUTICA BOYS, NAUTICA GIRLS, and NAUTICAKIDS marks in
four of Petitioner’s 47 pleaded registrations. Petitioner may establish priority by
showing that the constructive use filing dates of the applications that matured into
these four registrations precede May 1, 2016, the deemed first use date under the

16 In its brief, Respondent argues that it “does not feel that the Petitioner has proven its
burden of proof as there is no strong evidence showing NautiGuy is in fact confused by the
public with any of [sic] Nautica marks,” 50 TTABVUE 3, and that “[i]f the Board is going to
allow the Petitioner to cancel another’s trademark, they must have undeniable evidence that
the public would be confused by these two marks.” Id. at 5. As noted above, Ms. Laudwig
states in her declaration that she “will rely that the Board will make [Petitioner] prove
without a reasonable doubt that consumers would really confuse NautiGuy with Nautica.”
Laudwig Decl. ¶ 7. We reject, as unfounded under the controlling law, all of these suggestions
that we impose a higher burden of proof on Petitioner than a preponderance of the evidence.
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Board’s preclusion order, 28 TTABVUE 1-2,17 or that it has priority of actual use of
the marks. Double Coin Holdings, 2019 USPQ2d 377409 at *5. The applications that
matured into the four registrations were all filed before May 1, 2016. 37 TTABVUE
9-16, 29-32, 111-14. Moreover, Ms. Moeen testified that “the information set forth in
each of the [pleaded] registrations is true and accurate according to [Petitioner’s]
corporate business records which I personally reviewed,” Moeen Decl. ¶ 13, and the
claimed dates of first use in each of the four registrations vouched for by Ms. Moeen
long pre-date May 1, 2016. 37 TTABVUE 9-16, 29-32, 111-14. We find that Petitioner
proved its priority of use with respect to the four marks on which we focus. Id.
B. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all probative facts in evidence that are relevant to the factors set forth in In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)

17 Respondent complains in its brief that “NautiGuy was in use May 1st 2015 as the
Defendant put on the application for the trademark,” 50 TTABVUE 3, and that “Petitioner
took advantage of a mistype and the laymen defendant in one of the proceedings as the
mistype [sic] later date would not be possible as a website was presented at the time of the
application that had ecommerce proof that NautiGuy apparel along with a specimen to prove
its use at that date.” Id. Respondent claims that “all parties including the Board know that
[the mark] was in use May 1st, 2015,” and concludes that the “fact that the defendant doesn’t
have the resources or legal know how to properly handle these proceedings shouldn’t negate
the fact that the evidence speaks for itself.” Id. Separate and apart from the effect of the
preclusion order, the application file evidence cited by Respondent, specifically the May 1,
2015 claimed date of first use, does not “speak[ ] for itself” to establish Respondent’s first use
of its mark because the “allegation in an application for registration, or in a registration, of
a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark
must be established by competent evidence.” 37 C.F.R. § 2.122(b)(2). The specimen to which
Respondent refers is also not such evidence, as “[s]pecimens in the file of an application for
registration, or in the file of a registration, are not evidence on behalf of the applicant or
registrant unless identified and introduced in evidence as exhibits during the period for the
taking of testimony.” Id.
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(“DuPont”). See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800
(Fed. Cir. 2018) (DuPont “articulated thirteen factors to consider when determining
likelihood of confusion”). “‘Not all of the DuPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered,’” id.
(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir.
2010)), but all factors “‘must be considered’ when [they] are of record.” In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (quoting In re
Dixie Rests, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (internal
quotation omitted)).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”). Petitioner discusses these two key factors,
as well as the third, fourth, fifth, sixth, seventh, eighth, tenth, eleventh, and twelfth
factors. 49 TTABVUE 19-36. Petitioner claims that the
primary, controlling factors of record are (1) that the marks
in issue are very similar; (2) the parties’ respective goods
are legally identical and otherwise highly similar; (3)
[Petitioner’s] NAUTICA marks and name are well-known
and famous; and (4) for purposes of this proceeding, the
parties’ respective goods are considered sold to and through
many of the same channels of trade, and to the same
potential customers for the goods.
Id. at 19-20.
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As noted above, Petitioner made of record 47 registrations of its NAUTICA and
NAUTICA-formative marks. 49 TTABVUE 8-9. We need not consider each pleaded
mark, however, because we may focus in our analysis of likelihood of confusion only
on “the most relevant of [Petitioner’s] pleaded registrations.” Fiserv, Inc. v. Elec.
Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015) (citing In re Max
Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)). We will confine our analysis
to the marks in the following registrations (collectively the “Nautica Marks”):
 Registration No. 3837562 of NAUTICA for “T-shirts” and other goods in
Class 25 (37 TTABVUE 111-14);
 Registration No. 5048453 of NAUTICA BOYS (BOYS disclaimed) for
“shirts” and other goods in Class 25 (37 TTABVUE 9-12);
 Registration No. 5048446 of NAUTICA GIRLS (GIRLS disclaimed) for
“shirts” and other goods in Class 25 (37 TTABVUE 13-16); and
 Registration No. 3168753 of NAUTICAKIDS for “T-shirts” and other goods
in Class 25 (37 TTABVUE 29-32).
If we find a likelihood of confusion as to any of the Nautica Marks, and the goods
identified in the respective registration(s), we need not find it as to Petitioner’s other
pleaded NAUTICA and NAUTICAKIDS marks for other goods and services, or as to
Petitioner’s other pleaded marks NAUTICA LIFE, NAUTICA COMPETITION,
NAUTICA BERMUDA BLUE, NAUTICA ISLAND, NAUTICA VOYAGE, NAUTICA
BLUE, NAUTICA GOLF, PURE NAUTICA, NAUTICA OCEANS, NAUTICA
JEANS, and NAUTICA JEANS COMPANY. Conversely, if we do not find a likelihood
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of confusion as to any of the Nautica Marks, we would not find it as to the other
marks. Fiserv, 113 USPQ2d at 1917.
1. The Fifth and Sixth DuPont Factors
To determine the strength of Petitioner’s NAUTICA house mark, we may consider
the fifth DuPont factor, the “fame of the prior mark (sales, advertising, length of use),”
DuPont, 177 USPQ at 567, in tandem with the sixth DuPont factor, the “number and
nature of similar marks in use on similar goods.” Id. See Bell’s Brewery, Inc. v.
Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017).
a. The Fifth DuPont Factor
We begin with the fifth DuPont factor because the “[f]ame of [a plaintiff’s] mark,
if it exists, plays a ‘dominant role in the process of balancing the DuPont factors.’”
Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting Recot, Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). “A mark ‘with extensive public
recognition and renown deserves and receives more legal protection than an obscure
or weak mark,” Omaha Steaks, 128 USPQ2d at 1689 (quoting Kenner Parker Toys
Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)),
and a “very strong mark receives a wider latitude of legal protection in the likelihood
of confusion analysis.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d
1043, 1056 (TTAB 2017) (citing Palm Bay Imps., 73 USPQ2d at 1694).
Unlike dilution fame, which Petitioner does not claim, and which “is an either/or
proposition—fame either does or does not exist—likelihood of confusion fame ‘varies
along a spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v.
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Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017)
(quoting Palm Bay Imps., 73 USPQ2d at 1694). In placing Petitioner’s NAUTICA
mark on that spectrum, our “applicable viewpoint is that of the relevant market,” not
necessarily that of the general public. Id. (citing Palm Bay Imps., 73 USPQ2d at 1694
(“Fame for confusion purposes arises as long as a significant portion of the relevant
consuming public . . . recognizes the mark as a source indicator,” and “a mark’s
renown within a specific product market is the proper standard.”)). “Because of the
wide latitude of legal protection accorded a famous mark and the dominant role fame
plays in the likelihood of confusion analysis, the party asserting fame must clearly
prove it.” Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1353
(TTAB 2014), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. 2014).
“In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and, if there is evidence in the record of
marketplace recognition of the mark, its commercial strength.” New Era, 2020
USPQ2d 10596 at *10.
i. Inherent Strength
Petitioner does not address the inherent strength of the Nautica Marks, but their
“inherent or conceptual strength . . . is not seriously at issue.” Id. The Nautica Marks
are “inherently distinctive as evidenced by [their] registration on the Principal
Register without a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act.” Id. (citing Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881,
1889 (TTAB 2006)).
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ii. Commercial Strength
The commercial strength of a mark “may be measured indirectly by the volume of
sales and advertising expenditures in connection with the goods or services sold
under the mark,” and may be “supported by other indicia such as length of time of
use of the mark; widespread critical assessments; notice by independent sources of
the goods or services identified by the marks; and the general reputation of the goods
or services.” Id. at *10-11. “‘Direct evidence of fame, for example from widespread
consumer polls, rarely appears in contests of over likelihood of confusion,” id. at *12
(quoting Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed.
Cir. 2002)), but Petitioner offers it here.
Petitioner argues that its “marks and name have achieved a remarkable public
recognition and renown and are famous, at least as regards the 5th DuPont factor,”
49 TTABVUE 27,18 citing the length, extent, and geographic scope of sales of apparel
under the NAUTICA mark; Petitioner’s prominence in the apparel business in the
United States; the extent and scope of Petitioner’s advertising under the NAUTICA
mark; consumer studies regarding brand awareness; Petitioner’s charitable and
sponsorship activities; prior Board decisions in which the NAUTICA mark has been
found to be famous; and Petitioner’s policing efforts. Id. at 27-32. Respondent does
not dispute the fame of the NAUTICA mark, but claims that “Petitioner only has

18 Petitioner purports to combine its argument under the fifth DuPont factor with its
argument under the ninth DuPont factor, the “variety of goods on which a mark is or is not
used (house mark, ‘family mark’, product mark,” DuPont, 177 USPQ at 567, 49 TTABVUE
27, but does not separately discuss the ninth factor. We thus find that the ninth factor is
neutral in our analysis of the likelihood of confusion.
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proven that they are famous, but famous for being NAUTICA, not NAUTI . . .” 50
TTABVUE 4. Notwithstanding Respondent’s concession, we will examine the record
to determine whether Petitioner clearly proved the fame of its mark.
(a) Sales, Advertising, and Promotion Under the
NAUTICA Mark
The NAUTICA mark was first used in 1983 in connection with coats, and the line
of NAUTICA products has since expanded into a variety of clothing and other goods.
Moeen Decl. ¶ 9. Ms. Moeen characterized the NAUTICA mark as a “lifestyle brand”
selling “lifestyle products,” Moeen Decl. ¶ 9, which she defined as “the variety of
products one uses in normal life.” Moeen Decl. ¶ 10.
Petitioner’s NAUTICA products are sold throughout the United States in
hundreds of department stores such as Macy’s, Dillard’s, and Bed Bath & Beyond,
and “big box” stores such as Costco, in specialty stores and in Petitioner’s company
stores, and over the Internet. Moeen Decl. ¶ 15. Petitioner realized combined
wholesale and retail sales in the United States well in excess of $8 billion between
2011 and 2019. Moeen Decl. ¶¶ 19-20.19
Petitioner expended in excess of $170 million between 2011 and 2019 in
advertising and promotional expenditures for goods bearing all o f Petitioner’s marks.

19 Petitioner introduced evidence regarding its market share in various channels of trade in
the apparel business in the United States between 2004 and 2007, and in 2012. Moeen Decl.
¶¶ 29-32; Ex. 4. This stale evidence has no probative value regarding Petitioner’s market
share at the time of trial, and little, if any, probative value regarding the strength of its
NAUTICA mark today. Cf. Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d
1041, 1049 (Fed. Cir. 2018) (acquired distinctiveness survey conducted more than five years
before the close of trial found to have questionable probative value on the issue of whether
the involved mark had acquired distinctiveness at the time of trial).
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Moeen Decl. ¶ 19. Petitioner’s print advertising has appeared in publications such as
GQ, In Style, People, Sports Illustrated, Men’s Health, Elle Decor, and House
Beautiful, Moeen Decl. ¶ 27, and Petitioner’s television advertising has appeared on
programs such as NCIS, Friends, Everybody Loves Raymond, Grey’s Anatomy, and
Ugly Betty. Moeen Decl. ¶ 28. Petitioner’s licensees also advertise and promote
products bearing the NAUTICA mark in multiple media, including print, outdoor,
radio, television, digital online, social media, email blasts, and mall advertising.
Moeen Decl. ¶ 26. Petitioner has sponsored various athletic events at which the
NAUTICA mark has been exposed. Moeen Decl. ¶¶ 36-38; Exs. 6-7.
(b) Print and Social Media Exposure
Petitioner’s NAUTICA mark is prominently featured on Petitioner’s website at
nautica.com, Moeen Decl. ¶ 25; Ex. 1 (39 TTABVUE 16-47), and Ms. Moeen testified
that Petitioner “receives daily unsolicited and unpaid media attention . . . in various
media channels as it relates to our products, our events, and our brand story,” on the
order of “over 1,000 such references each year.” Moeen Decl. ¶ 42.20 Some of the
unsolicited electronic, print, and social media coverage pertains to events and
athletes sponsored by Petitioner. Moeen Decl. ¶¶ 37, 41; Exs. 6, 8 (39 TTABVUE 79-
115, 124-33).21

20 Petitioner introduced evidence in tabular form regarding “Unsolicited Media Commercial
Impressions” showing the impressions achieved in 2007 and 2013. Moeen Decl. ¶ 43; Ex. 9.
As with Petitioner’s market share evidence, this stale media evidence has little, if any,
probative value regarding the strength of the NAUTICA mark today.
21 Some of the articles are stale and accordingly have little, if any, probative value regarding
the strength of the NAUTICA mark today.
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(c) Consumer Research
Petitioner offers two consumer studies in support of its fame argument. Ms. Moeen
described the first as “a global consumer segmentation project with the well-known
research firm Rosetta to identify consumer segments in the U.S. and other markets
that [Petitioner] trades in and the consumer who purchase Nautica products in those
markets.” Moeen Decl. ¶¶ 33-34; Ex. 5 (39 TTABVUE 77-78). According to Ms. Moeen,
this study “evidenc[es] a very high awareness for our Nautica brand,” Moeen Decl.
¶ 34, and “the fame and notoriety of the brand over a spread of many different product
types.” Moeen Decl. ¶ 35.
The chart page from the study attached to Ms. Moeen’s declaration and shown
below purports to show how many NAUTICA products were purchased in various
categories by various types of consumers familiar with the brand:

Ms. Moeen testified that the study “was sent out to the general population” and that
“[t]here was a list of 40-plus well-known brands including brands like Levi’s, Ralph
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Lauren, Nautica, Tommy Bahama, and many others” shown to the respondents, who
“had to have purchased at least one of those brands in the past 12 months .” Moeen
Decl. ¶ 34. She claimed that “the awareness of the Nautica brand among the qualified
segments was 82 percent for all men, and 90 percent for all women,” Moeen Decl.
¶ 34, but we have no explanation of how these figures were derived, what questions
the respondents were asked to derive them, or what information they were provided
as the basis for their conclusions, and we have no information regarding the study’s
methodology. Because Ms. Moeen neither provided the results of the entire study,
including its methodology, nor showed that she was competent to interpret its results,
we give no weight to her testimony regarding the study’s findings or their impact on
the strength of Petitioner’s NAUTICA mark.
Ms. Moeen testified that a second study was commissioned in 2016 and conducted
by Robert L. Klein of Applied Marketing Science. Moeen Decl. ¶ 45. Mr. Klein
authored an expert report dated November 9, 2016, and entitled “Nautica Apparel,
Inc. Fame Survey Methodology and Results,” regarding the survey. Moeen Decl. ¶ 45;
Ex. 11 (39 TTABVUE 164-76).22 He stated in his report that the survey, conducted
over the Internet, was designed to “measure the degree of recognition of the
NAUTICA word mark by the general consuming public of the United States in order
to access whether or not NAUTICA is a famous mark as defined by the Trademark

22 The study was commissioned for some unidentified litigation, as Mr. Klein’s expert report
bears the designation “Trade Secret/Commercially Sensitive” and a document production
number on each page, 39 TTABVUE 165-76, and refers to the standards for litigation surveys
set forth in the MANUAL FOR COMPLEX LITIGATION published by the Federal Judicial Center
in 2004. Id. at 163.
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Dilution Revision Act of 2006, 15 U.S.C. Sec. 1125(c)(2)(A).” 39 TTABVUE 167. His
“Summary of Opinion” stated that based on the survey of a sample of the population
of the United States ages 18 and over, it was his “opinion to a reasonable degree of
professional certainty that the NAUTICA mark is famous among the general
population of consumers in the U.S.,” id., because “after controlling for the level of
guessing, 87.6% of survey respondents indicated that they recognized the NAUTICA
mark.” Id.
Mr. Klein’s survey was an “aided-awareness” study, in which respondents were
“exposed to a series of brand names in an aided test, which allows a respondent to
show familiarity with a brand name based on recognition, without requiring unaided
recall of the brand name.” Id. at 170.23 He explained that “[a]fter each word mark
[was] shown, [respondents were] asked a close-ended question to indicate their
recognition of that brand name,” id., and that “[a]fter accounting for the two control
clothing brands, the net measure of recognition for the NAUTICA mark was 87.6%,”
id. at 174, which was tied with the IZOD brand for third in the degree of recognition
of the marks, after Calvin Klein and J. Crew. Id. at 175.
“In general, the Board has discouraged heavy reliance on aided awareness to prove
fame.” ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1247 (TTAB
2015) (finding that survey showing 82% aided awareness of opposers’ mark “lack[ed]
significant evidentiary value on the question of fame.”) (citing Carefirst of Md., Inc.

23 The names included actual brands such as Calvin Klein, IZOD, DKNY, and Lacoste, as
well as two fictitious brands, Nova East and FlagHeart, that were intended to act as
“controls” to filter out survey “noise” (guessing). 39 TTABVUE 174-75.
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v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1507 (TTAB 2005)).24 The
Klein survey is also somewhat stale, having been executed a little more than three
years before Ms. Moeen’s declaration. Nevertheless, because the survey was designed
and interpreted by a qualified expert and followed the general protocols for litigation
surveys set forth in the Federal Judicial Center’s MANUAL FOR COMPLEX LITIGATION,
we will give it some weight in our analysis of the strength of the NAUTICA mark.
(d) Prior Decisions
Petitioner cites four prior non-precedential Board decisions in which panels found
that the NAUTICA mark was famous. 49 TTABVUE 31 (citing Moeen Decl. ¶ 46; Ex.
12 (39 TTABVUE 177-281)).25 Respondent references Petitioner’s success in the
Carlucci decision, noting that “the Board sided with them over NautiGirl; however,
that case was terminated,” 50 TTABVUE 4-5, but argues that in “[t]he more recent
NautiGirl case, the Board sided with NautiGirl, not” Petitioner.” Id. at 5.
Non-precedential decisions are not binding on this panel, Stawski v. Lawson, 129
USPQ2d 1036, 1048 (TTAB 2018), and while we have reviewed the decisions cited by
Petitioner, we must determine the strength of the NAUTICA mark as of the time of
trial based on the record in this case, not the records in other cases to which we are
not privy.

24 An “unaided awareness” survey asks respondents to list marks that come to their minds
when they think about brands for particular goods or services. See ProMark Brands, 114
USPQ2d at 1246 n.65.
25 Nautica Apparel, Inc. v. Crain, Opposition No. 91113893 (TTAB Sept. 21, 2001); Nautica
Apparel, Inc. v. Carlucci, Opposition No. 91165909 (TTAB Dec. 18, 2007); Nautica Apparel,
Inc. v. Martanna LLC, Opposition No. 91177192 (TTAB Jan. 22, 2010); Nautica Apparel, Inc.
v. Nauti Marine, Opposition No. 91205138 (TTAB June 16, 2014).
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(e) Petitioner’s Policing Efforts
Petitioner has aggressively policed the Nautica Marks, having brought more than
60 inter partes proceedings before the Board, including those that went to final
decision in the non-precedential cases discussed immediately above. Moeen Decl.
¶ 47; Ex. 13 (39 TTABVUE 282-383). These efforts appear to have succeeded because,
as discussed below, the record is devoid of third-party registrations of NAUTI-
formative marks in Class 25.
iii. Summary Regarding Fifth DuPont Factor
Petitioner’s sales and advertising are very substantial and establish that there
has been widespread and sustained exposure of the NAUTICA mark for a substantial
period of time to United States consumers of the various apparel products for which
the mark is registered. We infer from this exposure of the mark that Petitioner has
achieved a high degree of recognition for the mark, and our inference is corroborated
to some extent by the results of the Klein aided-awareness survey. We find that
Petitioner clearly proved that its NAUTICA mark for clothing falls “on the much
higher end of the commercial strength spectrum ‘from very strong to very weak.’” New
Era, 2020 USPQ 2d 10596 at *12 (quotation and citation omitted). The fifth DuPont
factor strongly supports a finding of a likelihood of confusion.
b. The Sixth DuPont Factor
The sixth DuPont factor considers “‘[t]he number and nature of similar marks in
use on similar goods.’” Omaha Steaks, 128 USPQ2d at 1693 (quoting DuPont, 177
USPQ at 567). “The purpose of introducing evidence of third-party use is ‘to show that
customers have become so conditioned by a plethora of such similar marks that
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customers ‘have been educated to distinguish between different [such] marks on the
bases of minute distinctions.’” Id. (quoting Palm Bay Imps., 73 USPQ2d at 1694).
“The Federal Circuit has held that evidence of the extensive registration and use of a
term by others can be powerful evidence of the term’s weakness.” Tao Licensing, 125
USPQ2d at 1075 (citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v.
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015);
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674
(Fed. Cir. 2015)). “Use evidence may reflect commercial weakness, while third-party
registration evidence that does not equate to proof of third-party use may bear on
conceptual weakness if a term is commonly registered for similar goods or services.”
Id. The “controlling inquiry is the extent of third-party marks in use on ‘similar’ goods
or services.” Omaha Steaks, 128 USPQ2d at 1694 (citing Century 21 Real Estate Corp.
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)).
Petitioner correctly notes that Respondent “did not submit any third -party U.S.
trademark registrations for marks containing ‘naut’ or ‘nauti’ prefixes including no
such evidence for the mark ‘nautica,’” 49 TTABVUE 32, and as discussed above,
Petitioner successfully objected to most of Respondent’s proffered evidence of third -
party use of such marks.
Petitioner did not object, however, to a listing of the results of a search on the
website of the Missouri Secretary of State for the term “nauti,” id. at 39, that was
made of record under Respondent’s Notice of Reliance , 47 TTABVUE 9-10, so we will
consider these results for whatever probative value they may have. Petitioner itself
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also made of record under its Rebuttal Notice of Reliance the results of its own Google
search engine search for the term “nauti store,” 48 TTABVUE 6-9, and we will also
consider those results for whatever probative value they may have.
As discussed below in connection with the second DuPont factor, the involved
goods, T-shirts and shirts, are actually or legally identical, and the Federal Circuit
has held that where identical goods are involved, only third-party uses of marks for
similarly related goods are probative of the possible weakness of the plaintiff’s mark.
Omaha Steaks, 128 USPQ2d at 1695. The list of about 20 Missouri companies formed
under “Nauti”-formative trade names made of record by Respondent does not include
a description of the businesses in which the companies are engaged, although we can
probably safely assume from the listings of “Nauti Cantina,” “Nauti Girl Fitness
LLC,” “Nauti Nordi Marine LLC,” “Nauti Renovations LLC,” “Nauti Rooster Hen
House Group LP,” “Nauti Tattoo L.L.C.,” “Nauti Wings Seaplane Tours, LLC,”
“NautiAuto” and “NautiAuto, LLC,” and “Nautifish Rum Bar” that those companies
are in businesses other than apparel.26 In any event, because we cannot determine
from the list itself, or from other record evidence, how many, if any, of the listed
Missouri companies sell clothing under a NAUTI-formative mark, the list has no
probative value regarding the weakness of Petitioner’s NAUTICA mark. Aerodyne
Dev. Corp. v. Aerodyne Mach. Corp., 176 USPQ 94, 95 (TTAB 1972) (listings in a trade

26 Ms. Laudwig testified that there are businesses called “Nautifish Rum Bar,” “Nauti
Tattoo,” “Nauti Rooster Bar & Grill,” and “Nauti Cantina” where she lives in Lake of the
Ozarks, Missouri. Laudwig Decl. ¶ 3. On the basis of their trade names, these businesses also
do not appear to be in the apparel business.
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name search report were “manifestly insufficient” to show weakness of common term
in subject marks “since we have no testimony regarding the fields of trade in which
these third parties are engaged.”).
The Google search results made of record by Petitioner include a “Nauti Chic”
clothing store in New York, New York, and a “NAUTI Store by Skip Town,” 48
TTABVUE 6-9, but the results provide no additional information. These two listings
have little or no probative value regarding the weakness of the NAUTI-prefix in
Petitioner’s NAUTICA mark, as they are “a far cry from the large quantum of
evidence of third-party use and third-party registrations that was held to be
significant” in both Jack Wolfskin and Juice Generation. In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019).27
The sixth DuPont factor is neutral in our analysis of the likelihood of confusion.
2. The Second and Third DuPont Factors
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor considers “the similarity or dissimilarity of established, likely-to-
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567); see also Stone Lion Capital

27 In Juice Generation, there were approximately 26 third-party uses and registrations of
marks containing the words “Peace” and “Love” for restaurant services and food products
that showed the weakness of the opposer’s “Peace & Love” marks for restaurant services, 115
USPQ2d at 1673 & n.1, while in Jack Wolfskin, there were at least 14 third-party uses and
registrations of paw print marks for clothing that showed the weakness of the opposer’s paw
print marks for the same goods. 116 USPQ2d at 1136 & n.2.
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Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed.
Cir. 2014).
The goods identified in Respondent’s registration are “T-shirts; T-shirts for Men;
Tee shirts.” The goods identified in Petitioner’s registrations of the NAUTICA and
NAUTICAKIDS marks include “T-shirts,” while the goods identified in Petitioner’s
registrations of the NAUTICA BOYS and NAUTICA GIRLS marks include “shirts.”28
The “T-shirts” identified in Respondent’s registration are identical to the “T-
shirts” identified in Petitioner’s registrations of NAUTICA and NAUTICAKIDS.
With respect to the goods broadly identified in Petitioner’s NAUTICA BOYS and
NAUTICA GIRLS registrations as “shirts,” we must presume that those goods
encompass all goods of the type identified. Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115
USPQ2d 1007, 1025 (TTAB 2015); In re Hughes Furniture Indus., Inc., 114 USPQ2d
1134, 1137 (TTAB 2015); In re Jump Designs, LLC, 80 USPQ3d 1370, 1374 (TTAB
2006). Because a “T-shirt” is, by definition, a form of “shirt,” Petitioner is “entitled to
the presumption for purposes herein that such ‘shirts’ include T-shirts,” Varsity
Pajamas, Inc. v. Schackne, 143 USPQ 428, 430 (TTAB 1964), and Petitioner’s “shirts”
are legally identical to Respondent’s “T-shirts.” The second DuPont factor strongly
supports a finding of a likelihood of confusion.

28 We need not consider the relatedness of each form of T-shirt identified in Respondent’s
registration to each good identified in Petitioner’s registrations. “[I]t is sufficient if likelihood
of confusion is found with respect to any product recited in [Petitioner’s] registrations[s].”
Double Coin Holdings, 2019 USPQ2d 377409 at *6 (citing Tuxedo Monopoly, Inc. Gen. Mills
Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
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“As for channels of trade, the third DuPont factor, the legally identical goods in
the parties’ registrations are construed to include all goods of the type identified ,” and
“‘[i]t is well established that absent restrictions in the application and registration,
[identical] goods and services are presumed to travel in the same channels of trade to
the same classes of purchasers.’” Double Coin Holdings, 2019 USPQ2d 377409 at *6
(quoting Cai, 127 USPQ2d at 1801 (internal quotation omitted)). Respondent also
acknowledges that Petitioner “has proven we sell in the same channels . . . .” 50
TTABVUE 4. The third DuPont factor also strongly supports a finding of a likelihood
of confusion.
3. The First DuPont Factor
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at
567). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746 (quoting In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014)).
The proper test regarding similarity “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.” Cai, 127 USPQ2d at 1801 (quoting
Coach Servs., 101 USPQ2d at 1721 (internal quotation marks and citation omitted)).
“The proper perspective on which the analysis must focus is on the recollection of the
average customer, who retains a general rather than specific impression of marks.”
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In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).
Because the goods at issue are “t-shirts” and “shirts” without any restrictions or
limitations as to channels of trade, classes of consumers, or price, the average
customer is an ordinary consumer.
Because the marks are used “on substantially identical goods, ‘the degree of
similarity necessary to support a conclusion of likely confusion declines.’” Double Coin
Holdings, 2019 USPQ2d 377409 at *6. See also In re Viterra, Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1912 (Fed. Cir. 2012) (citing Century 21 Real Estate Corp. 23 USPQ2d
at 1700).
Petitioner’s arguments for similarity mention most of its pleaded marks, 49
TTABVUE 20, but they focus on the NAUTICA, NAUTICA BOYS, NAUTICA GIRLS,
and NAUTICAKIDS marks. Id. Petitioner argues that the “dominant element of
[Respondent’s] mark is the prefix ‘NAUT’ or ‘NAUTI’” because the “later portion of
[Respondent’s] mark is the descriptive term ‘GUY’.” Id. at 21. Petitioner further
argues that “[c]omparing the dominant portion of the parties’ respective marks, one
is encountered with the identical prefixes, namely ‘NAUT’ and/or ‘NAUTI’ which look
the same, are pronounced the same and share similar meanings and commercial
impressions,” id., and that the “remaining portion of [Respondent’s] mark is the term
‘GUY’ having the obvious highly descriptive or generic connotation of clothing
directed to boys and men.” Id. Petitioner claims that Respondent’s “mark is
synonymous and conceptually indistinguishable from [Petitioner’s] NAUTICA BOYS
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mark and is closely synonymous with [Petitioner’s] NAUTICAL GIRLS and
NAUTICAKIDS marks.” Id.
Petitioner contends that Respondent “adopted the [NAUTIGUY] mark for its
nautical meaning, and its goods are directed to the boating community,” id.,29 and
that the record does not support a claim that NAUTI is a double entendre with the
word “naughty.” Id. at 21-22. Petitioner notes that Respondent’s Google search for
the term “nauti’ disclosed a reference to Petitioner, and requests that the Board take
judicial notice of a definition of “naut” as an abbreviation for “nautical” from the
MERRIAM-WEBSTER DICTIONARY. Id. at 22. We grant Petitioner’s request. See, e.g., In
re Omniome, Inc., 2020 USPQ2d 3222, *2 n.17 (TTAB 2019); In re Cordua Rests., LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016).30 Petitioner concludes that “[a]t the very least, the parties’ respective
marks share a nautical meaning and commercial impression.” Id. at 24.
In its brief, Respondent does not directly address the issue of the similarity of the
marks. Respondent argues variously that Petitioner “lost control of the root ‘Nauti’
long before NautiGuy applied for their mark,” 50 TTABVUE 3, that “[t]here are
thousands of businesses that play on the ‘Nauti’ word and there is no confusion in the
public domain,” id. at 4, and that Petitioner has “sited [sic] the same old and dated

29 As discussed below, Ms. Laudwig testified that she created “boating shirts” with “boating
sayings,” and she referred to the “boating community” in her discussion of the meaning of
“Nauti.” Laudwig Decl. ¶ 3.
30 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed October 21, 2020).
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material like the urban dictionary that you can submit your own definition and has
zero meaning in today’s internet world.” Id.
In her declaration, Ms. Laudwig claims that NAUTIGUY is a double entendre,
testifying that she chose the NAUTIGUY mark “based on my t-shirt design being on
the naughty side with boating sayings and the fact that the boating community was
using the word ‘Nauti’ to really mean ‘naughty,”31 Laudwig Decl. ¶ 3, and that “[t]here
is [sic] way too many businesses, brands, memes, etc using ‘Nauti’ to mean ‘Naughty’
to argue otherwise.” Laudwig Decl. ¶ 5.
The marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on consideration of the marks in
their entireties.” Detroit Athletic Co., 128 USPQ2d at 1051 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). In Petitioner’s marks
NAUTICA BOYS, NAUTICA GIRLS, and NAUTICAKIDS, we give greater weight to
the house mark NAUTICA than to the disclaimed words BOYS and GIRLS and the
suffix -KIDS because NAUTICA is the first element of these marks and the words
BOYS, GIRLS, and KIDS describe the intended wearers of the clothing for which the
marks are registered. See id. at 1049.

31 We take judicial notice that “naughty” means, among other things, “lacking in taste or
propriety.” MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed October
21, 2020).
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Petitioner’s marks NAUTICA, NAUTICA BOYS, NAUTICA GIRLS, and
NAUTICAKIDS are similar in appearance and sound to Respondent’s mark
NAUTIGUY because they all share the NAUTI- prefix, which, as the first element in
the mark, is “most likely to be impressed upon the mind of a purchaser and
remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988). Those similarities outweigh the differences in appearance and sound
resulting from the differences in the marks’ suffix elements.
With respect to meaning, Petitioner’s marks NAUTICA, NAUTICA BOYS,
NAUTICA GIRLS, and NAUTICAKIDS, and Respondent’s mark NAUTIGUY, all
have a maritime connotation. The NAUT- particle in the marks is an abbreviation of
the word “nautical,” which we judicially notice means “of, relating to, or associated
with, seamen, navigation, or ships.”32 Although Ms. Laudwig argues that
Respondent’s mark is a double entendre, Respondent’s specimen of use for what Ms.
Laudwig described as “boating shirts,” Laudwig Decl. ¶ 3, shown below:

32 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on October 21,
2020).
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expressly promotes the maritime connotation of Respondent’s mark through its
formation of the letter “i” in “Nauti” by a ship’s wheel and an anchor. Neither the
standard character NAUTIGUY mark per se, nor the mark as displayed by
Respondent in its specimen, promotes or reinforces the claimed double entendre.
As noted above, Respondent argues in its brief that in the “more recent NautiGirl
case, the Board sided with NautiGirl not Nautica.” 50 TTABVUE 5. This appears to
be a reference to the Board’s non-precedential decision in Nautica Apparel, Inc. v.
Palmerton, Cancellation No. 92056754 (TTAB Oct. 21, 2015), in which the Board
found no likelihood of confusion between Petitioner’s various NAUTICA-formative
marks, and the respondent’s mark shown below for various goods in Classes 18, 21,
and 28:

The Board found that in the respondent’s mark, the “NAUTI prefix interacts with the
design elements-the sailor’s cap, the ship’s helm, the water background-to reinforce
the nautical theme,” but also interacts “with the slogan DARE TO BE NAUGHTY,
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which makes express its double entendre.” 139 TTABVUE 26 (Cancellation No.
92056754). Here, by contrast, the NAUTIGUY standard character mark is
unaccompanied by a slogan or any other element to create its claimed double
entendre. Even if such a double entendre would be understood by some consumers,
however, we find that the nautical theme of the mark is predominant, and that
NAUTIGUY is similar in connotation and commercial impression to Petitioner’s
house mark NAUTICA and its combination marks NAUTICA BOYS, NAUTICA
GIRLS, and NAUTICAKIDS.
While there are differences between Petitioner’s marks NAUTICA, NAUTICA
BOYS, NAUTICA GIRLS, and NAUTICAKIDS, and Respondent’s mark NAUTIGUY,
we find that their similarities outweigh their differences, especially taking into
account that Petitioner’s NAUTICA mark has a high degree of public recognition and
renown and that the involved marks are used on identical goods. Given the fame of
the NAUTICA mark and its use in Petitioner’s combination marks NAUTICA BOYS,
NAUTICA GIRLS, and NAUTICAKIDS, some consumers may readily believe that
NAUTIGUY T-shirts are the latest expansion of Petitioner’s clothing line into T-
shirts specifically for “guys.” We find that the first DuPont factor supports a finding
of a likelihood of confusion.
4. The Fourth DuPont Factor
The fourth DuPont factor considers “‘[t]he conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.’” Sock It to
Me, Inc. v. Fan, 2020 USPQ2d 10611, *7 (TTAB 2020) (quoting DuPont, 177 USPQ at
567). Petitioner argues that the “Board must find that [Respondent’s] goods and
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[Petitioner’s] goods are provided under all marketing conditions, and are provided to
and purchased by all classes of consumers appropriate to the goods identified (i.e., T-
shirts and related clothing products),” 49 TTABVUE 26, and that “the parties’
respective legally identical goods (i.e., t-shirts) cannot reasonably be considered goods
subject to ‘careful and/or sophisticated purchasing,’” concluding that this “DuPont
factor entirely and unequivocally favors” Petitioner. Id. at 27.
We agree with Petitioner that there is no record evidence supporting “careful
and/or sophisticated purchasing” of T-shirts. We must read Respondent’s unrestricted
identification of “T-shirts” to cover all such goods “without limitation as to their
nature and price,” and “to include [T-shirts] that are relatively inexpensive.” Sock It
to Me, 2020 USPQ2d 10611 at *8 (finding that “socks” include low-priced socks that
may be purchased on impulse). “Because the buyers to whom sales are made are all
general consumers, and the goods at issue are relatively low-priced and subject to
impulse buying, we find that the fourth DuPont factor weighs in favor of finding a
likelihood of confusion.” Id.
5. The Seventh and Eighth DuPont Factors
The seventh DuPont factor considers “the nature and extent of any actual
confusion,” DuPont, 177 USPQ at 567, while the eighth DuPont factor considers “the
length of time during and conditions under which there has been concurrent use
without evidence of actual confusion.” In re Guild Mortg. Co., 2020 USPQ2d 10279,
*6 (TTAB 2020) (quoting DuPont, 177 USPQ at 567).
Without specifically invoking these factors, Respondent argues that “there is no
strong evidence showing NautiGuy is in fact confused by the public with any of
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Nautica’s marks,” 50 TTABVUE 3, and that “Petitioner hasn’t offered any burden of
proof that there is truly any confusion with the marks.” Id. at 4. Respondent also
proffers what it seems to suggest is evidence of little or no actual confusion in the
form of responses to a “poll” posted by Respondent on the Water Soul Facebook page
that asked “Have you as a Consumer confused NautiGuy with the Nautica
Trademark?”33 Laudwig Decl. ¶ 6; 47 TTABVUE 8. The page is displayed below:

33 Petitioner describes this page as Respondent’s “own Facebook page.” 49 TTABVUE 34.
That is not apparent from the record, but for the reasons discussed below, the identity of the
situs of the poll is ultimately of no moment.
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With respect to the eighth factor, Petitioner argues that because Respondent has
been precluded from “‘submitting any evidence of use of its marks in commerce,
including any evidence of the extent of sales or advertising and promotion of goods
bearing the mark,’” 49 TTABVUE 34 (citing 33 TTABVUE 1-2), “as a matter of law,
there has not been opportunity for actual confusion to have occurred.” Id. With
respect to Respondent’s poll, Petitioner argues that it “is fatally flawed” because it is
“completely biased without a scintilla of objectivity” and “did not comply with any of
the criteria for a valid likelihood-of-confusion survey.” Id. (citing the Federal Judicial
Center’s MANUAL FOR COMPLEX LITIGATION). Petitioner argues specifically that
[t]he universe was inappropriate (limited to users of
Registrant’s own Facebook site), there is no description of
the survey construction except that it seems to have been
limited to a single biased and non-objective leading
question, namely “Have you as a Consumer ever confused
NautiGuy with the Nautica trademark”. There is no
description of how the survey data was compiled; there is
no analysis based upon accepted survey practices; it was
not conducted by qualified persons using proper
interviewing procedures (generally an expert); and nothing
in the survey procedure insured objectivity. As regards the
sole question asked, the question contained, within itself,
the clear idea that [Respondent’s] mark and the Nautica
mark are different and originate from different sources.
Notwithstanding the same, 3% of the respondents
indicated that they were confused.
Id.
With respect to the absence of actual confusion, the Board recently held that “our
analysis as to the second, third, and fourth du Pont factors . . . is based, as dictated
by precedent from the Federal Circuit, on the identifications as set forth in the
application,” Guild Mortg., 2020 USPQ2d 10279 at *6 (emphasis in original), but that
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the “eighth du Pont factor, by contrast . . . requires us to look at actual market
conditions, to the extent there is evidence of such conditions of record.” Id.
(emphasis in original). “The absence of any reported instances of confusion is
meaningful only if the record indicates appreciable and continuous use by
[Respondent] of its mark for a significant period of time in the same markets as those
served by [Petitioner] under its mark.” New Era, 2020 USPQ2d 10596 at *17 (citing
Citigroup Inc. v. Capital City Bank Grp., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d,
637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011)); see also Gillette Can. Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992)). “In other words, for the absence of actual
confusion to be probative, there must have been a reasonable opportunity for
confusion to have occurred.” New Era, 2020 USPQ2d 10596 at *17 (citing Barbara’s
Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)). We agree with
Petitioner that the record does not show that there has been such an opportunity.
With respect to the Facebook poll, “[s]urvey results may act as circumstantial
evidence of likelihood of confusion, if the survey is designed and conducted using
generally accepted principles and methodology,” ProMark Brands, 114 USPQ2d at
1247, but we also agree with Petitioner that Respondent’s poll did not meet these
standards. See also Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1828-29 (TTAB 2015). We give Respondent’s poll no weight as evidence of the
absence of actual confusion, and we find that the seventh and eighth DuPont factors
are neutral in our analysis of the likelihood confusion.
6. The Tenth DuPont Factor
The tenth DuPont factor involves the
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market interface between applicant and the owner of a
prior mark:
(a) a mere “consent” to register or use.
(b) agreement provisions designed to preclude confusion,
i.e. limitations on continued use of the marks by each
party.
(c) assignment of mark, application, registration and good
will of the related business.
(d) laches and estoppel attributable to owner of prior mark
and indicative of lack of confusion.
DuPont, 177 USPQ at 567. Petitioner argues that the “registration and any use by
[Respondent] of its mark at any time is without the consent or permission of”
Petitioner, and that “[t]here are no agreements or understandings between the
parties to the contrary. Accordingly, this DuPont factor favors [Petitioner].” 49
TTABVUE 35. We disagree. The “tenth DuPont factor argued by [Petitioner]
regarding the market interface between [Petitioner] and [Respondent] — is also
neutral” because “[t]here is no evidence that there has been any interface between
the parties.” DeVivo v. Ortiz, 2020 USPQ2d 10153, *15 (TTAB 2020).
7. The Eleventh DuPont Factor
The eleventh DuPont factor involves “the extent to which applicant has the right
to exclude others from use of its mark on its goods.” Id. Petitioner argues that this
“factor strongly favors [Petitioner]” because of the fame of its NAUTICA mark, the
similarity of the marks, the identity of the goods, and the overlap of trade channels.
49 TTABVUE 35. We again disagree. In the context of a cancellation proceeding, this
factor focuses on Respondent’s right to exclude others from the use of its mark, see
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McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1284-85 (TTAB 2014), and
the record is devoid of evidence on that issue. We find that the eleventh DuPont factor
is neutral in our analysis of the likelihood of confusion.
8. The Twelfth DuPont Factor
The twelfth DuPont factor concerns the extent of potential confusion, “i.e. whether
de minimis or substantial.” DuPont, 177 USPQ at 567. Petitioner essentially reprises
its argument under the eleventh factor in claiming that “the Board can only conclude,
based upon the evidence of record, that there is a likelihood of confusion.” 49
TTABVUE 36. Petitioner’s argument is not directed to the extent of potential
confusion, “i.e. whether de minimis or substantial,” DuPont, 177 USPQ at 567, and
we have no information regarding the extent of Respondent’s use of its mark, which
is a necessary element in determining the extent of potential confusion under the
forward confusion theory asserted by Petitioner. We find that the twelfth DuPont
factor is also neutral in our analysis of the likelihood of confusion.
9. Conclusion
The first, second, third, fourth, and fifth DuPont factors support a finding of a
likelihood of confusion, and the other DuPont factors are not to the contrary.
Petitioner’s NAUTICA mark is quite strong; the involved goods, channels of trade,
and classes of consumers are actually or legally identical; there is similarity in
appearance, sound, and connotation and commercial impression between Petitioner’s
NAUTICA, NAUTICA BOYS, NAUTICA GIRLS, and NAUTICAKIDS marks, and
Respondent’s mark NAUTIGUY; and the involved goods may be subject to impulse
purchase. We find, on the basis of the record as a whole, that Petitioner proved by a
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preponderance of the evidence that it is entitled to bring a statutory cause of action
under the Trademark Act, that it has priority of use of its marks, and that consumers
familiar with Petitioner’s NAUTICA, NAUTICA BOYS, NAUTICA GIRLS, and
NAUTICAKIDS marks for T-shirts and shirts who encounter Respondent’s mark
NAUTIGUY for T-shirts are likely to believe mistakenly that such goods originate
with, or are authorized or sponsored by, Petitioner.
Decision: Petitioner’s Amended Petition for Cancellation is granted and
Registration No. 4894811 will be cancelled in due course.