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

Trademark Trial and Appeal BoardOct 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 Cancellation No. 92064768 - 2 - 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.”). Cancellation No. 92064768 - 3 - 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. Cancellation No. 92064768 - 4 - 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 Cancellation No. 92064768 - 5 - 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. Cancellation No. 92064768 - 6 - 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. Cancellation No. 92064768 - 7 -  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.”) Cancellation No. 92064768 - 8 - “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. Cancellation No. 92064768 - 9 - 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. Cancellation No. 92064768 - 10 - 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 Cancellation No. 92064768 - 11 - 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 Cancellation No. 92064768 - 12 - 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). Cancellation No. 92064768 - 13 - 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. Cancellation No. 92064768 - 14 - 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. Cancellation No. 92064768 - 15 - (“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. Cancellation No. 92064768 - 16 - 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 Cancellation No. 92064768 - 17 - 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. Cancellation No. 92064768 - 18 - 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)). Cancellation No. 92064768 - 19 - 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. Cancellation No. 92064768 - 20 - 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). Cancellation No. 92064768 - 21 - 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. Cancellation No. 92064768 - 22 - (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 Cancellation No. 92064768 - 23 - 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. Cancellation No. 92064768 - 24 - 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. Cancellation No. 92064768 - 25 - 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). Cancellation No. 92064768 - 26 - (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 Cancellation No. 92064768 - 27 - 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 Cancellation No. 92064768 - 28 - 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. Cancellation No. 92064768 - 29 - 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. Cancellation No. 92064768 - 30 - 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)). Cancellation No. 92064768 - 31 - “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.” Cancellation No. 92064768 - 32 - 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 Cancellation No. 92064768 - 33 - 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). Cancellation No. 92064768 - 34 - 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). Cancellation No. 92064768 - 35 - 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). Cancellation No. 92064768 - 36 - 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, Cancellation No. 92064768 - 37 - 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 Cancellation No. 92064768 - 38 - [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 Cancellation No. 92064768 - 39 - 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. Cancellation No. 92064768 - 40 - 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 Cancellation No. 92064768 - 41 - 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 Cancellation No. 92064768 - 42 - 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 Cancellation No. 92064768 - 43 - 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 Cancellation No. 92064768 - 44 - 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.

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