Nautica Apparel, Inc.v.Kevin Crain

Trademark Trial and Appeal Board

Sep 21, 2001

No. 91113893 (T.T.A.B. Sep. 21, 2001)

9/21/01

Paper No. 27
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nautica Apparel, Inc.
v.
Kevin Crain.
_____

Opposition No. 113,893
to application Serial No. 75/328,137
filed July 21, 1997
_____

Carol A. Witschel of White & Case LLP for Nautica
Apparel, Inc.

Kevin Crain, pro se.
______

Before Hanak, Chapman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

Kevin Crain (applicant) filed an application to
register the mark NAUTI BODY (typed drawing) for goods
ultimately identified as “men's and women's clothing,
namely, T-shirts, swimwear, sweatshirts, elastic tops and
bottoms, tank tops, hats, and caps”1 In International
Class 25.2

1 Opposer incorrectly refers to the application’s original
identification of goods in its discussion of likelihood of
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,893
2
On February 16, 1999, Nautica Apparel, Inc.
(opposer) filed a notice of opposition to the
registration of applicant’s mark alleging that
applicant’s mark was confusingly similar to various
trademark registrations it owned under Section 2(d) of
the Trademark Act. 15 U.S.C. § 1052(d). Opposer
ultimately based its opposition on its ownership of the
following nine registrations.
Opposer’s first registration is for the mark NAUTICA
for “footwear” in International Class 25.3 Opposer also
relies on registrations for the mark shown below for the
following goods:

confusion. The identification of goods was amended during the
prosecution of the application as indicated above.
2 Serial No. 75/328,137 filed on Jul 21, 1997, and based on an
allegation of a bona fide intent to use the mark in commerce.
3 Registration No. 1,862,585 issued November 15, 1994. Section
8 and 15 affidavits have been accepted and acknowledged,
respectively.
Opposition No. 113,893
3
“umbrellas, luggage, trunks, duffle bags, garment bags
for traveling, travel kits and leather boxes in the
nature of jewelry boxes” and “notebooks, desk top
organizers, calendars, and phonebook covers made of
leather or imitation leather” and “belts and suspenders”
in International Classes 16, 18, and 25.4 Opposer’s third
registration is for the same mark for “hosiery, shoes,
undershirts, undershorts, shirts, blouses, trousers,
jackets, pants, coats, suits, bathing suits, bathrobes,
slippers and shorts” in International Class 25.5
Opposer’s fourth registration is for the same mark for
“ties, neckware [sic], scarfs, socks, hats and caps, foul
weather clothing” in International Class 25.6
Opposer’s fifth registration is for the following
mark:

4 Registration No. 1,580,007 issued January 30, 1990. Renewed.
5 Registration No. 1,464,663 issued November 10, 1987. Section
8 and 15 affidavits have been accepted and acknowledged,
respectively.
6 Registration No. 1,687,919 issued May 19, 1992. Sections 8
and 15 affidavits have been accepted and acknowledged,
respectively.
Opposition No. 113,893
4
for “caps and hats, robes, loungewear, T-shirts and knit
shirts, jackets, sweaters, ties, hosiery, sport jackets
and slacks” in International Class 25.7 Opposer’s sixth
registration is for the same mark for “men’s suits” in
International Class 25.8
Opposer’s seventh registration is for the mark:

for “men[’s], women[’s] and children's wearing apparel,
namely, hosiery, shoes, sneakers, boots, moccasins,
undershirts, undershorts, shirts, blouses, trousers,
pants, jackets, coats, suits, bathing suits, bathrobes,
slippers, shorts, ties, neckware [sic], scarfs, socks,
hats and caps, gloves and mufflers, and all weather (foul
weather) gear, belts and suspenders” in International
Class 25.9
Opposer’s eighth registration is for the mark:

7 Registration No. 2,043,895 issued March 11, 1997.
8 Registration No. 1,988,708 issued July 23, 1996.
9 Registration No. 2,104,034 issued October 7, 1997.
Opposition No. 113,893
5

“fabric for use in the manufacture of wearing apparel,
namely, shirts, vests, jackets, coats, and outerwear” and
“clothing, namely, shirts and vests and outerwear,
namely, jackets, coats, and anoraks” in International
Classes 24 and 25. 10
Opposer’s ninth registration is for the mark:

for “clothing, namely, jackets, vests, pants and woven
and knit shirts” in International Class 25.11
Applicant denied that its marks and opposer’s marks are
confusingly similar.
The Record
The record consists of the file of the involved
application; the trial testimony deposition, with
accompanying exhibits, of Shira Berger, opposer’s legal

10 Registration No. 2,028,278 issued January 7, 1997.
11 Registration No. 2,110,027 issued October 28, 1997.
Opposition No. 113,893
6
counsel; and the trial testimony deposition, with
accompanying exhibits, of applicant.
Both parties have filed briefs, but no oral hearing
was requested.
Priority
Priority is not an issue here in view of opposer’s
ownership of nine registrations for marks containing the
word NAUTICA or similar terms. See King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).12
Bona Fide Intention to Use the Mark
Opposer alleges that applicant lacked a bona fide
intention to use the mark in commerce because he has not

12 Opposer has not introduced current status and title copies of
the nine registrations discussed above. However, applicant has
discussed these registrations on the merits in his Answer and
his Brief. Therefore, inasmuch as applicant has treated the
registrations as being of record, they are “deemed by the Board
to be of record in the proceeding.” TBMP § 703.02. See also
Tiffany and Company v. Columbia Industries, 455 F.2d 582, 173
USPQ 6, 8 (CCPA 1972) (“Since appellee had fair notice of the
case it had to meet, it would work an injustice on appellant to
deprive it of the right to rely on the statutory presumptions
flowing from [the] registration” that was not properly
submitted.); Crown Radio Corp. v. Soundscriber Corp., 506 F.2d
1392, 184 USPQ 221, 222 (CCPA 1974)(“Appellee did not submit
copies of its aforementioned registrations with the verified
petition for cancellation … We agree with the Board that
appellant has admitted the existence of appellee’s
registrations. Therefore, we agree with the board that the sole
issue to be determined in this proceeding is whether there is a
likelihood of confusion”). Nonetheless, we will not consider
Registration Nos. 1,765,287, 1,802,504, and 2,117,012, which
have been cancelled. In addition, we will not consider
Opposition No. 113,893
7
produced any objective evidence to support his claim of a
bona fide intention to use the mark as indicated in the
application. “[A]bsent other facts which adequately
explain or outweigh the failure of an applicant to have
any documents supportive of or bearing upon its claimed
intent to use its mark in commerce, the absence of
documentary evidence on the part of an applicant
regarding such intent is sufficient to prove that the
applicant lacks a bona fide intention to use its mark in
commerce.” Commodore

Registration No. 1,523,565, a copy of which was attached for the
first time to opposer’s appeal brief.
Opposition No. 113,893
8
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503,
1507 (TTAB 1993).
In this case, the application was filed on July 21,
1997, and opposer first requested an extension of time to
oppose on January 21, 1999. We are concerned with this
period because it would be expected that an applicant
would be less likely to expend resources developing a
mark that is being litigated. Applicant testified that
he is not currently in the clothing business. Crain
test. dep., pp. 12-13. He is an independent contractor
doing appraisals after automotive collisions. Crain
test. dep., p. 8. This is applicant’s first trademark
application. Crain test. dep., pp. 13-14. Applicant
testified that he obtained a sales permit from the State
Board of Equalization to sell used goods and clothing
throughout Southern California, that he obtained domain
names for “nautibody.com,” “nautibody.net” and
“nautibody.org,” and that he educated himself about the
apparel business. Crain test. dep. pp. 18, 19, 23, and
24. Applicant also contacted individuals and companies
who might be able to help him in setting up his business.
Crain test. dep., pp. 31-47. While applicant’s
activities regarding attempting to begin using his mark
are minimal and not documented, we are not convinced that
Opposition No. 113,893
9
these activities demonstrate a lack of intention to use
the mark. We take into consideration applicant’s lack of
experience in the apparel business and his presumably
reasonable belief that when “his name is lawfully
released,” he would begin more extensive activities
involving the mark. Crain test. dep., pp. 42 and 68.
There is also no evidence that applicant has in any
way abused the intent to use process by filing multiple
applications for the same mark for many goods, filing
many marks for the same goods, reserving many descriptive
terms, filing an excessive number of applications, or
filing applications lacking in specificity. 3 McCarthy
on Trademarks and Unfair Competition § 19:15 (4th ed.).
Considering applicant’s circumstances and the fact that
this is his first trademark application, we do not find
that applicant lacks a bona fide intent to use the mark
in commerce. While we consider opposer’s unpled ground
that applicant lacked a bona fide intention to use the
mark in commerce as tried by the implied consent of the
parties (TBMP § 507.03(b)), we find that opposer is not
entitled to relief on this ground.
Likelihood of Confusion
We now turn to the issue of likelihood of confusion.
We analyze this issue in light of the factors set forth
Opposition No. 113,893
10
in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
1361, 177 USPQ 563, 567 (CCPA 1973).
The first factor we will consider is the fame of
opposer’s mark because “a mark with extensive public
recognition and renown deserves and receives more legal
protection than an obscure or weak mark.” Kenner Parker
Toys v. Rose Art Industries, 963 F.2d 350, 353, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). Applicant testified that he
was unaware of opposer’s marks prior to filing his
trademark application. Crain test. dep., p. 50.
Interestingly, applicant now admits that after the
opposition was filed “I see them [ads for Nautica
clothing] everywhere now.” Crain test. dep., p. 50.
Applicant also acknowledges that “everyone seems to have
heard of Nautica, except for me. So, my friends are
pretty well informed about Nautica. It seems that
everyone that I talked to is familiar with the company.”
Crain test. dep., p. 52.
The record indicates that in years 1998-2000 opposer
spent between approximately $20 and $26 million
advertising and promoting its products. Berger test.
dep., p. 30. Opposer advertises on radio, television,
and billboards and in magazines. Berger test. dep., p.
29. These magazines include Esquire, Details, GQ, Elle,
Opposition No. 113,893
11
Glamour, Vanity Fair, Harper’s Bazaar, Sports
Illustrated, Rolling Stone, House Beautiful, Travel &
Leisure, and In Style. Id. Also, in 1998, it had sales
of almost one half billion dollars and, by 2000,
opposer’s sales reached $621 million. Berger test. dep.,
p. 38.
The Federal Circuit “has acknowledged that fame of
the prior mark, another du Pont factor, ‘plays a dominant
role in cases featuring a famous or strong mark.’”
Century 21, 23 USPQ2d at 1701, quoting, Kenner Parker
Toys, 22 USPQ2d at 1456. “Famous marks thus enjoy a wide
latitude of legal protection.” Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)
(FIDO LAY for “natural agricultural products, namely,
edible dog treats” confusingly similar to FRITO-LAY for
snack foods). Here, the opposer’s evidence shows that it
has now reached the one half billion dollar mark in sales
combined with a multimillion dollar advertising budget.
The fame of opposer’s mark is further supported by
applicant’s own admission that his friends and nearly
everyone he talked to was familiar with the NAUTICA mark.
The fame of opposer’s NAUTICA mark is a factor,
therefore, that strongly favors opposer.
Opposition No. 113,893
12
We further note that many of the other du Pont
factors favor opposer. Applicant seeks registration for
goods that are identical (hats, caps, t-shirts) or
virtually identical (swimwear vs. bathing suits) to
opposer’s goods. We must compare the goods as described
in the application and the registration(s) to determine
if there is a likelihood of confusion. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). Because the marks are used
on identical clothing items, there is a greater
likelihood that when similar marks are used in this
situation, confusion would be likely. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines”).
In addition, we must assume that identical goods
would be marketed in similar trade channels and that
clothing items would often be purchased on impulse by all
types of purchasers. There is no evidence of any third-
party uses of similar marks so this factor also favors
opposer. In addition, opposer has testified that it uses
its mark on a wide variety of goods and services. Berger
Opposition No. 113,893
13
test. dep., pp. 6-28. Furthermore, factors concerning
actual confusion and use of the marks are not pertinent
because applicant has not used its mark.
Another important consideration in any likelihood of
confusion case is the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation, and commercial impression. Opposer argues
that applicant’s mark NAUTI BODY “is virtually identical
to opposer’s NAUTICA marks.” Opposer’s Br., p. 5.
Applicant argues that:
Nautica’s name(s) and associated product lines,
implies water related or boating clothes, with a
seafaring theme to their items…. Applicant’s
proposed mark of NAUTI BODY implies sensual,
naughty, or sexy garments. “NAUTI” is a homonym for
“Naughty.” Naughty means “bad, disobedient, mildly
indecent.” Clearly, Applicant’s mark implies
slightly indecent clothes to [be] worn out in
public, rather than in the bedroom. There is
nothing in the name that remotely suggests that it
is related to Nautica.

Applicant’s Br., p. 7 (reference omitted).
We cannot agree with opposer’s position that the
marks are “virtually identical.” Also, applicant’s
argument is not without merit that the marks may have
different meanings. The deletion of the letters “ca’
from opposer’s mark and the addition of the word “body”
can create the meaning of “naughty body.” However, there
are similarities between the marks. Both begin with the
Opposition No. 113,893
14
same five letters “NAUTI.” Applicant chose to use a
misspelling of the word “naughty,” and that misspelling
obviously makes the appearance of the marks more
similar.13 A famous mark “casts a long shadow which
competitors must avoid.” Recot, 54 USPQ2d at 1897,
quoting, Kenner Parker Toys, 22 USPQ2d at 1457. This
spelling also dilutes the meaning applicant claims he was
trying to create of “naughty body.” If the correct
spelling of the word “naughty” was used the meaning that
applicant was trying to create would be more readily
apparent to purchasers. By misspelling the word,
applicant’s mark, at first glance, suggests a connection
with the word “nautical” and then requires the potential
purchaser to reevaluate the word in light of the
incongruous word “body.” Only then would many
prospective purchasers appreciate the meaning that
applicant is suggesting.
Also, differences in type styles between opposer’s
mark and applicant’s stylized mark are not significant
here because applicant’s mark and one of opposer’s marks
are in typed form and, thus, not limited to any special
form. Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216
USPQ 937, 939 (Fed. Cir. 1983); Cunningham v. Laser Golf

13 Applicant testified that “naughty in a different language
Opposition No. 113,893
15
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000).
In addition, opposer’s registrations show that it is
using more that just the mark NAUTICA. Opposer also uses
the mark NAUTECH for clothing items as well as N NAUTICA
and NAUTICA COMPETITION. Thus, potential purchasers
would more likely believe that applicant’s term NAUTI
BODY is in some way related to, or sponsored by, opposer.
While it is improper to dissect a mark and marks
must be viewed in their entireties, In re Shell Oil Co.,
992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir.
1993), more or less weight may be given to a particular
feature of a mark for rational reasons. In re National
Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Based on the above, we conclude that the marks have
significant similarities in sound and appearance and
their commercial impressions would likewise have
significant similarities. National Data, 753 F.2d at
1060, 224 USPQ at 749.
Analysis of Likelihood of Confusion Factors

When we analyze the issue of likelihood of confusion
under the du Pont factors, it is apparent that this is a

meant childish.” Crain test. dep., p. 49.
Opposition No. 113,893
16
close case. Likelihood of confusion is decided upon the
facts of each case. Dixie Restaurants, 105 F.3d 1405,
1406, 41 USPQ 1531, 1533 (Fed. Cir. 1997); Shell Oil, 992
F.2d at 1206, 26 USPQ at 1688. The various factors may
play more or less weighty roles in any particular
determination of likelihood of confusion. Shell Oil, 992
F.2d at 1206, 26 USPQ2d 1688; du Pont, 476 F.2d at 1361,
177 USPQ at 567.
Applicant’s argument that his mark would have a
different meaning than opposer’s is a significant factor.
However, merely because applicant’s mark may have a
different meaning from opposer’s mark does not mean that
there is no likelihood of confusion. Recot, 54 USPQ2d at
1899 (Board erred by considering that the different
connotations of FRITO LAY and FIDO LAY avoided
confusion). See also TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315, 1318 (Fed. Cir. 1997) (GRAND SLAM
confusingly similar to GRAND AM); Crown Radio Corp. v.
Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221 (CCPA
1974) (CROWNSCRIBER confusingly similar to SOUNDSCRIBER).
In addition, when we consider the fame of opposer’s
mark, the identical nature of the goods, the strength of
opposer’s mark, the fact that applicant choose the
misspelling of his mark making it appear even more
Opposition No. 113,893
17
similar to opposer’s mark, the number of variations of
opposer’s marks, and the wide variety of goods on which
opposer uses its marks, we hold that the balance tips in
opposer’s favor.
Finally, while our determination that confusion is
likely is not free from doubt, we must resolve doubts
about confusion against the newcomer, which we do here.
Kenner Parker Toys, 963 F.2d at 355, 22 USPQ2d at 1458.
Decision: The opposition is sustained and
registration to applicant of his mark NAUTI BODY is
refused.