Cancellation Proceeding: Nautigirl Defeats Nautica

In David versus Goliath fashion, Christine Palmerton, owner of a small business and the brand Nautigirl, overcame a challenge to her trademark registration by mega brand Nautica. Palmerton had a U.S. trademark registration for her Nautigirl logo, which included the word Nautigirl and an image of a sassy looking sailor woman. Nautica claimed that Palmero’s brand was too similar to its brand and sought cancellation of her mark. After nearly three years of litigation and the support of a law school pro bono clinic, the U.S. Patent and Trademark Office sided with Palmerton.

This story starts with Palmerton recognizing early on the value of branding. She filed a trademark application for her logo in 2008. Her logo, which is a woman in sailing clothing standing behind a ship’s wheel and holding a martini glass, was granted trademark registration in 2009 in several classes including tote bags, mugs, and playing cards. Nautica apparently didn’t notice here filing at that time as the mark went through the USPTO without opposition.

But Nautica did take notice in 2013. That’s when Nautica’s trademark attorneys sent Palmerton a cease-and-desist notice. The notice demanded that Palmerton stop using the Nautigirl name and logo, and destroy any merchandise that referenced the brand. Nautica claimed that the Nautigirl name was too similar to its name and that consumers would be confused as to whether there was some connection between Nautigirl and Nautica.

Nautica probably expected little resistance from a small company like Nautigirl, but Palmerton wasn’t going to back down without a fight. She enlisted the help of the Intellectual Property and Entrepreneurship Clinic at Suffolk University Law School. The group took on Palmerton’s case pro bono and utilized the help of 3rd year law students. In arguments before the Trademark Office, they pointed out how because of the differences in branding and logo design, there was really no likelihood of consumer confusion. Their arguments persuaded the Trademark Trial and Appeal Board to side with the small business and grant victory to the little guy.

Trademark fights against large corporations can be difficult because of the costs which are more difficult to absorb by small businesses. The Nautigirl case, though, demonstrates how a small businesses may develop and protect their brand even against some of the largest companies. Large companies have big budgets and can try to quickly squash up-and-coming competitors. In some cases the large companies may have reasonable grounds for enforcing their trademark rights, but not always.

That’s why it there is great value in involving a trademark attorney early on in the development of your business. If you are starting a new business or launching a new product, please contact the attorneys at Trademark Access. Let our experience protect you.

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