Suffolk Law Students Help Sink Nautica's Fight Against 'NautiGirl' Trademark
Suffolk University Law School in Boston successfully represented a Washington state businesswoman in a trademark fight with Nautica Apparel Inc. over a cheeky marine-themed logo. The law school's Intellectual Property & Entrepreneurship Clinic won for Christine Palmerton at the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board. Nautica had petitioned to cancel Palmerton's "NautiGirl Dare to be naughty" trademark.
November 02, 2015 at 02:05 PM
5 minute read
During Christina Mott's final year at Suffolk University Law School in Boston, a Washington state businesswoman's trademark fight with Nautica Apparel Inc. over a cheeky marine-themed logo was never far from Mott's mind.
Mott had participated in the law school's Intellectual Property & Entrepreneurship Clinic win for Christine Palmerton at the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board.
After a three-year battle, the board dismissed Nautica's petition to cancel Palmerton's trademark on Oct. 21.
Palmerton's logo features the words “NautiGirl Dare to be naughty” and a drawing of a woman with a sailor cap and blue hair styled with 1920's-era waves and curls. The woman has one hand on a ship's wheel and holds a martini glass aloft in the other.
Palmerton's NautiGirl Brands LLC business in Bellingham, Washington, uses the logo on tote bags, beverage glasses, mugs and playing cards, among various items.
The case was “always in the back of my mind,” said Mott, who graduated in 2014 and is now a judicial law clerk for the Massachusetts Superior Court.
“You end up writing yourself a Post-it note to research something the following day. It was an intense process,” Mott said.
Mott was one of 10 students who worked on the pro bono case, said clinic director Anne Hulecki, who became director of the clinic in July and did not personally work on the matter.
“When you learn by doing, you never forget,” Hulecki said. “Suffolk's focus is really on experiential learning.”
The students on the case worked on discovery, interrogatories, deposition questions, and one student drew on a linguistics degree to analyze the sounds of the NautiGirl mark, according to a Suffolk Law press release.
The trademark board held that Nautica did not establish a likelihood of confusion. It also found that Palmerton's mark was visually distinct from that of Nautica.
The board also ruled that “the sound of the marks is dissimilar” because the “I” in Nautica and NautiGirl are likely to be pronounced differently.
Administrative Trademark Judge David K. Heasley wrote the opinion, with Chief Administrative Trademark Judge Gerard F. Rogers and Deputy Chief Administrative Trademark Judge Susan M. Richey joining.
|'A tugboat playing chicken with an ocean liner'
Palmerton said she is grateful for the clinic's work. “I felt like a tugboat playing chicken with an ocean liner. To know I've had a couple of tugboats fighting with me is empowering,” Palmerton said.
In an email, a spokesperson for Nautica parent company VF Corp. of Greensboro, North Carolina, said the company does not comment on legal matters.
Mott began working on the case a year into it by drafting a request for a document. She said she learned quickly about the nuances of requesting information in a way that the opposing party will produce it, she said.
“So often discovery is a game. I have a much better understanding of that discovery game now,” Mott said.
Researching prior trademark board cases and complying with its local rules was also a “steep learning curve,” Mott said.
Ultimately, the experience was a great way to prepare for her current job, Mott said.
“I often get case files after they've been pending for months or years. Learning how to pick something up and run with it [is important],” Mott said.
Palmerton said she'd initially consulted with an intellectual property lawyer, who said bringing a case would “bankrupt” her. A trademark lawyer she contacted through an Internet search gave her a list of clinics that could potentially help her.
With the Nautica battle behind her, Palmerton said she can seek investment money to fund a national launch. “I'm not in limbo or on hold,” Palmerton said.
Eve Brown, who led Suffolk Law's clinic during the proceedings, said the case was important to Palmerton. “This is her entire livelihood. Losing the brand would ruin the business,” said Brown, who now directs the Entrepreneurship & Intellectual Property Clinic at the Boston University School of Law.
Brown said continuity was one of the biggest challenges for the legal team. Students only participate in the clinic for a year, so each new group had to get up to speed in a complex case that ultimately involved some 140 filings, Brown said. “It was a hard won battle,” she said.
Although each student could only be involved in a snippet of the case, they were all very dedicated, Brown said.
“It's not learning from a textbook. It's something really tangible and really real and connected to a person they care about,” Brown said.
Correction: An earlier version of this story misidentified the state location of Nautica parent company VF Corp. The company is based in Greensboro, North Carolina.
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