This Opinion is Not a
Precedent of the TTAB

Mailed: January 3, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Nautica Apparel, Inc.
v.
Majestique Corporation
_____

Opposition No. 91212653
_____

Stephen L. Baker of Baker and Rannells PA,
for Nautica Apparel, Inc.

Gino Negretti of Gino Negretti Law Offices,
for Majestique Corporation.

_____

Before Bergsman, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Majestique Corporation (“Applicant”) seeks registration on the Principal Register

of the mark shown below for the goods listed below:
Opposition No. 91212653

Adult novelty gag clothing item, namely, socks; athletic
apparel, namely, shirts, pants, jackets, footwear, hats and
caps, athletic uniforms; athletic footwear; belts; belts for
clothing; bottoms; clothing shields, namely, pads applied to
the underarms of shirts, blouses and sweaters; footwear;
footwear for men and women; footwear not for sports;
headbands for clothing; jackets; leather belts; short sets;
ties; tops; travel clothing contained in a package
comprising reversible jackets, pants, skirts, tops and a belt
or scarf; wearable garments and clothing, namely, shirts;
women’s clothing, namely, shirts, dresses, skirts, blouses.1

The application includes the following description of the mark: “The mark consists of

a ‘Sailboat.’”

Nautica Apparel, Inc., (“Opposer”) opposed the registration of Applicant’s mark

under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

Applicant’s mark so resembles Opposer’s registered mark shown below for the goods

listed below as to be likely to cause confusion:

Men’s, women’s and children’s wearing apparel, namely,
hosiery, shoes, sneakers, boots, moccasins, undershirts,
boxer shorts, shirts, blouses, trousers, pants, jackets, coats,
suits, bathing suits, bathrobes, slippers, shorts, ties,
neckwear, scarves, socks, hats and caps, gloves and

1 Application Serial No. 85883577 was filed on March 23, 2013, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as June 27, 2012.

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Opposition No. 91212653

mufflers, belts and suspenders and foul weather gear, in
Class 25.2

Opposer also pleaded that Applicant’s mark is likely to dilute the distinctiveness

of Opposer’s marks pursuant to Section 43(c) of the Trademark Act, 15 U.S.C.

§1125(c). However, because Opposer did not discuss this claim in its brief, it is waived.

Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6

(TTAB 2013).

Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.

I. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), Applicant’s application file. Only Opposer introduced testimony

and evidence, specifically:

A. Notice of reliance on copies of its pleaded registrations printed from the

USPTO electronic database showing the current status of and title to the

registrations;3

2 Registration No. 2769600, registered September 30, 2003; renewed.
In its Notice of Opposition, Opposer pleaded ownership of 16 registrations for its sailboat
design in various classes. Because the description of goods in the above-noted registration is
in part identical to the description of goods in the application, we focus the likelihood of
confusion analysis on that registration. If we do not find likelihood of confusion with respect
to the marks at issue for goods that are, in part, identical, then there would be no likelihood
of confusion with the other pleaded marks for goods that are not identical. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
3 36 TTABVUE.

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Opposition No. 91212653

B. Notice of reliance on Applicant’s responses to Opposer’s Interrogatory Nos. 1,

6, 8, 9, 12, 16, 20 and 24 and Applicant’s written response to Opposer’s Request

for Production No. 12;4 and

C. The testimony declaration of Margaret Bizzari, Director of Intellectual

Property and Product Liability for VF Sportswear, Inc., Opposer’s parent

corporation.

Only Opposer filed a brief.

II. Standing

Opposer’s pleaded registrations are of record and establish Opposer’s standing.

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189

(CCPA 1982).

III. Priority

Because Opposer has properly made of record its pleaded registrations, and

because Applicant has not filed a counterclaim to cancel any of Opposer’s pleaded

registrations, Section 2(d) priority is not an issue in the opposition as to the marks

and the goods covered by the pleaded registrations. King Candy Co. v. Eunice King’s

Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).

4 37 TTABVUE.

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Opposition No. 91212653

IV. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the

probative facts in evidence that are relevant to the factors bearing on the issue of

likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis

Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic

Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have

considered each du Pont factor that is relevant or for which there is evidence of record.

See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947

(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242

(TTAB 2015) (“While we have considered each factor for which we have evidence, we

focus our analysis on those factors we find to be relevant.”). In any likelihood of

confusion analysis, two key considerations are the similarities between the marks

and the similarities between the goods or services. See In re Chatam Int’l Inc., 380

F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re

i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The

likelihood of confusion analysis considers all DuPont factors for which there is record

evidence but ‘may focus … on dispositive factors, such as similarity of the marks and

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Opposition No. 91212653

relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d

1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).

A. The strength and fame of Opposer’s sailboat design mark.

In determining the strength of a mark, we consider both its inherent strength,

based on the nature of the mark itself, and its commercial strength, based on

marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d

1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both

by its conceptual strength (distinctiveness) and its marketplace strength (secondary

meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-

72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent

strength and its commercial strength); Tea Board of India v. Republic of Tea Inc., 80

USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition

§ 11:83 (4th ed. 2017) (“The first enquiry focuses on the inherent potential of the term

at the time of its first use. The second evaluates the actual customer recognition value

of the mark at the time registration is sought or at the time the mark is asserted in

litigation to prevent another’s use.”). Market strength is the extent to which the

relevant public recognizes a mark as denoting a single source. Tea Board of India v.

Republic of Tea Inc., 80 USPQ2d at 1899.

1. The inherent strength of Opposer’s sailboat design trademark.

Because Opposer’s sailboat design mark has no apparent meaning when used in

connection with clothing, it inherently distinctive and, thus, a conceptually strong

trademark. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En

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Opposition No. 91212653

1772, 396 F.23d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (citing Nautilus Grp.,

Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir.

2004) (defining an arbitrary mark as “a known word used in an unexpected or

uncommon way” and observing that such marks are typically inherently distinctive)).

2. The commercial strength of Opposer’s sailboat design trademark.

Opposer contends that its sailboat design mark “meets all the criteria for being

‘famous.” Fame, if it exists, plays a dominant role in the likelihood of confusion

analysis because famous marks enjoy a broad scope of protection or exclusivity of use

because they have extensive public recognition and renown. Bose Corp. v. QSC Audio

Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.

Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys,

Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).

“[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very

weak.’” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323,

122 USPQ2d 1733, 1734 (Fed Cir. 2017) (quoting Palm Bay Imps., Inc. v. Veuve

Clicquot Ponsardin Maison Fondee en 1772, 73 USPQ2d at 1694 (quoting In re Coors

Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003))). Fame may be

measured indirectly by the volume of sales of and advertising expenditures for the

goods and services identified by the mark at issue, “the length of time those indicia

of commercial awareness have been evident,” widespread critical assessments and

through notice by independent sources of the products identified by the marks, as

well as the general reputation of the products and services. Bose Corp. v. QSC Audio

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Opposition No. 91212653

Prods. Inc., 63 USPQ2d at 1305-06 and 1309. Although raw numbers of product sales

and advertising expenses sometimes suffice to prove fame, raw numbers alone may

be misleading. Some context in which to place raw numbers may be necessary (e.g.,

the substantiality of the sales or advertising figures for comparable types of products

or services). Id. at 1309.

Finally, because of the extreme deference that we accord a famous mark in terms

of the wide latitude of legal protection it receives, and the dominant role fame plays

in the likelihood of confusion analysis, it is the duty of the party asserting that its

mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning LLC, 668

F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild

Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).

Opposer introduced the following evidence to prove that its sailboat design is a

famous mark:5

• Opposer has been using the sailboat design mark on all of its products, including

clothing, since 2001;6

• The sailboat design mark is featured in Opposer’s advertising and promotional

materials;7

5We have not considered Opposer’s evidence regarding unsolicited media attention because
the evidence refers to the NAUTICA word mark and not the sailboat design. Bizzari
Testimony Decl. ¶¶47-50 (53 TTABVUE 13-14) and Exhibit 8 (53 TTABVUE 104). For the
same reason, the non-precedential cases cited by Opposer have little probative value. Bizzari
Testimony Decl. Exhibit 13 (53 TTABVUE 130-230).
6 Bizzari Testimony Decl. ¶13 (53 TTABVUE 4). Opposer’s products include, but are not
limited to, jewelry, watches, eyeglasses, sunglasses, wallets, bags, trunks, sheets, blankets,
and curtains. Id. at ¶¶10 and 15 (53 TTABVUE 4).
7 Bizzari Testimony Decl. ¶¶31 and 32 (53 TTABVUE 10).

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Opposition No. 91212653

• Opposer “advertises and promotes its products in practically every media

channel, including without limitation, print, outdoor (e.g., billboards, bus shelters,

taxi tops, etc.), radio, TV, digital online, POS [point of sale], social media, email blasts,

and mail advertising. [Opposer] also participates in sponsorships and cause

marketing.”;8

• Opposer has advertised in magazines such as GQ, In Style, People, Sports

Illustrated, ESPN, Men’s Health, Elle Décor, House Beautiful, and Coastal Living;9

• The number of “impressions” annually from Opposer’s advertising in print

media exceeds 1 billion;10

• Opposer’s clothing products are sold throughout the United States in

department stores and specialty stores, including, but not limited to, Opposer’s own

stores, Amazon.com, Macy’s, Dillard’s, Belk, Bloomingdales, Costco, and other

independent stores;11

• Between 2011 and 2016, Opposer’s annual sales in the United States have

ranged between $731,981,000 and $870,291,000;12

8 Bizzari Testimony Decl. ¶34 (53 TTABVUE 11).
9 Bizzari Testimony Decl. ¶36 (53 TTABVUE 11).
10 Bizzari Testimony Decl. ¶41 (53 TTABVUE 12). “The magazine industry publishes
impressions as well as circulation numbers based on one’s media buy. Circulation data
calculates the number of pages of media that are circulated. To estimate impressions, the
industry standard is to use about four times a publication’s circulation number. It would say
that if you have an ad in People Magazine, four people would see the ad in each physical
magazine.” Id. at ¶39 (53 TTABVUE 12).
11 Bizzari Testimony Decl. ¶19 (53 TTABVUE 7).
12 Bizzari Testimony Decl. ¶25 (53 TTABVUE 9).

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Opposition No. 91212653

• Between 2011 and 2016, Opposer’s annual advertising expenses in the United

States have ranged between $19,116,000 and $27,875,000;13 and

• Between 2004 and 2007, Opposer ranked second in total sales volume in the

men’s sportswear category in the department store channels of trade according to

NPD Group.14

On this record, Opposer’s sailboat design mark is not famous because there is no

testimony or evidence that refers to the sailboat design mark separate and apart from

the word mark. A design mark does not acquire fame simply because it is associated

with a famous word mark. Cf. Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d at

1308 (“we think those who claim fame for product marks that are used in tandem

with a famous house mark can properly be put to tests to assure their entitlement to

the benefits of fame for the product marks.”). There is simply no testimony or evidence

regarding the independent trademark significance of Opposer’s sailboat design mark.

Opposer contends, to the contrary, that the fame of its NAUTICA word mark

establishes that its sailboat design mark is famous by association.

There is a symbiotic, reciprocal, concurrent and conjoint
relationship between the NAUTICA word mark and the
Nautica Design Mark. The two marks are used in
conjunction with each other and as a result have become
synonymous with each other. All of [Opposer’s] products
are marketed with the NAUTICA word mark and with the
Nautica Logo Mark (either on the product, or on labels

13 Bizzari Testimony Decl. ¶25 (53 TTABVUE 9).
14Bizzari Testimony Decl. ¶44 (53 TTABVUE 13). NPD Group is a “recognized data compiling
company” that “tracks market share in the U.S. for various brands, monitoring consumer
purchase data from over 165,000 stores.” Id. at ¶42 (53 TTABVUE 12).

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Opposition No. 91212653

attached to the product, or on hangtags, or on product
packaging).15

Although there is a uniform coupling of the NAUTICA word mark with the

sailboat design mark, the testimony and evidence do not indicate that the sailboat

design alone is recognized by consumers. See Am. Lebanese Syrian Assoc. Charities,

Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1030 (TTAB 2011) (while

consumers have been exposed to CURE4KIDS, it has not been as a standalone mark

and it is not clear to what extent consumers have had an opportunity to disassociate

CURE4KIDS from ST. JUDE’S CHILDREN’S HOSPITAL and, therefore, the

evidence does not support that CURE4KIDS is commercially strong); H.D. Lee Co. v.

Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008) (“there is no evidence from

which to infer from opposer’s advertising expenses and revenues the extent to which

consumers recognize the ONE TRUE FIT mark standing alone and outside the

context of the LEE trademark.”). Compare Bose Corp. v. QSC Audio Prods. Inc., 63

USPQ2d at 1306-07 (consumer presented with frequent references to the product

marks WAVE and ACCOUSTIC WAVE separate and apart from the BOSE house

mark). In situations involving words and designs, the words are normally accorded

greater weight because the words are likely to make an impression upon purchasers,

would be remembered by them, and would be used by them to request the services.

Cf. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)

(citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir

15 Bizzari Testimony Decl. ¶18 (53 TTABVUE 7).

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Opposition No. 91212653

1983)); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,

1798 (Fed. Cir. 1987).

Nevertheless, the testimony and evidence establish that Opposer’s sailboat design

mark has achieved recognition and in view of the distinctive nature of the mark, we

find Opposer’s sailboat design mark to be commercially strong.

B. The similarity or dissimilarity and nature of the goods and established, likely-
to-continue channels of trade.16

The goods are in part identical because the descriptions of goods in the application

and Opposer’s pleaded registration both include hats and caps, belts, jackets, shirts,

blouses, pants, scarves, and footwear, slippers, shoes, sneakers, boots, or moccasins.

Under this du Pont factor, Opposer need not prove, and we need not find, similarity

as to each and every product listed in the description of goods. It is sufficient that

relatedness is established for any item encompassed by the description of goods in a

particular class in the application. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,

648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC,

110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy Processing

Indus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other

grounds, 110 USPQ2d 1679 (TTAB 2014).

16 The preface “adult novelty gag clothing items” in Applicant’s description of goods applies
only to socks because “[s]emicolons should generally be used to separate distinct categories
of goods … within a single class.” TMEP § 1402.01(a) (October 2017); see also In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166 (TTAB 2013) (finding that, because a
semicolon separated the two relevant clauses in registrant’s identification, its “restaurant
and bar services” is a discrete category of services that stands alone and independently as a
basis for likelihood-of-confusion analysis, and is not connected to nor dependent on the
services set out on the other side of the semicolon).

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Opposition No. 91212653

Because the goods described in the application and Opposer’s pleaded registration

are in part identical, we must presume that the channels of trade and classes of

purchasers are too. See In re Viterra Inc., 101 USPQ2d at 1908 (legally identical goods

are presumed to travel in same channels of trade to same class of purchasers); In re

Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there

are legally identical goods, the channels of trade and classes of purchasers are

considered to be the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039,

1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health

Research Inst., 101 USPQ2d at 1028.

C. The similarity or dissimilarity of the marks.

We now turn to the du Pont likelihood of confusion factor focusing on the similarity

or dissimilarity of the marks in their entireties as to appearance, sound, connotation

and commercial impression. du Pont, 177 USPQ at 567. However, “where the

question of likelihood of confusion to be decided involves design marks which are not

capable of being spoken, the question of the similarity of the marks must be

determined primarily on the basis of their visual similarity.” In re Vienna Sausage

Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990).

In comparing the marks, we are mindful that where, as here, the goods are in part

identical, the degree of similarity necessary to find likelihood of confusion need not

be as great as where there is a recognizable disparity between the goods. Coach

Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate

Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);

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Opposition No. 91212653

Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough

HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).

“The proper test is not a side-by-side comparison of the marks, but instead

‘whether the marks are sufficiently similar in terms of their commercial impression’

such that persons who encounter the marks would be likely to assume a connection

between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at

1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,

1905 (TTAB 2007)); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components

Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,

23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The

proper focus is on the recollection of the average customer, who retains a general

rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.

Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,

102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,

Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ

106, 108 (TTAB 1975). Because the goods are clothing items without any restrictions

or limitations as to price point, the average customer is an ordinary consumer.

The marks are shown below:

Opposer’s Mark Applicant’s Mark

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Opposition No. 91212653

The marks are displayed on the left breast of knit shirts and on hang tags as

shown below:

Opposer’s Mark Applicant’s Mark

When the marks are seen by ordinary consumers, what will be remembered is a

sailboat with billowing sails. The basic and obvious similarities between the marks

outweigh the differences. In fact, in some ways Opposer’s mark appears to be a

portion of Applicant’s mark facing the opposite direction. The differences between the

marks, if noticed, may even suggest to viewers that Applicant’s mark is another

version of Opposer’s mark adopted to identify a different line of clothing. In this

regard, the sailboat design used to identify and distinguish the source of Opposer’s

clothing is inherently distinctive, as well as commercially strong, and, therefore,

entitled to a broad scope of protection.17

We find that the marks are similar.

17 Because Applicant did not introduce any testimony or evidence, there is no testimony or
evidence regarding third-party use of sailboat designs to identify and distinguish the source
of clothing.

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Opposition No. 91212653

D. Analyzing the factors.

Because the marks are similar, the goods are in part identical and we must

presume that the goods move in the same channels of trade and are sold to the same

classes of consumers, we find that Applicant’s sailboat design mark for clothing

is likely to cause confusion with Opposer’s registered sailboat design mark for

clothing.

Decision: The opposition is sustained under Section 2(d) of the Trademark Act

and registration to Applicant is refused.

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