Written by Mark Terry 

Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office agreed with Nautica Apparel’s that the GET NAUTI trademark should not be registered. As a Miami Trademark Lawyer, this case is interesting because it illustrates the criteria an opposer must meet when seeking to oppose the registration of a trademark that may negatively affect him.

This case involved the well-known and registered NAUTICA trademarks which have been historically used in connection with a variety of products, such as clothing and toiletries, dating back many years. Recently, a party applied to register the mark GET NAUTI in connection with clothing and toiletries. NAUTICA opposed this trademark application on the basis that it was confusingly similar to NAUTICA’s mark. As an aside, Nautica Apparel also filed a trademark infringement suit against the users of the GET NAUTI mark in federal district court, which litigation occurred parallel to this opposition.

The TTAB agreed with Nautica Apparel’s arguments. The decision of the TTAB involved the use of a test to determine whether the opposition to the trademark application at issue should be sustained. The test involved an evaluation of six main factors, the preponderance of which weighed in favor of the opposer, thereby leading to the opposition being sustained. Briefly, the test included the evaluation of: 1) fame of the opposer’s marks, 2) similarity of the goods sold by the applicant and the opposer, 3) the channels of trade in which the goods of applicant and opposer are sold, 4) the variety of opposer’s goods, 5) the conditions (such as sales price) applicable to sales of the goods of applicant and opposer and 6) the number and nature of similar marks in use on similar goods.

As a Miami Trademark Lawyer, I am sometimes faced with a situation where a party seeks to oppose my client’s trademark application. This case shows that the criteria the opposer must meet in order to successfully oppose a trademark application is rather stiff. The six-part test above provides at least six areas in which the trademark applicant can argue against the opposition. The opposer, therefore, has his work cut out for him when staging an opposition.