For the past three years, students
in the Suffolk University Law School Intellectual Property &
Entrepreneurship Clinic have represented their client, Christine Palmerton, in
a trademark battle against Nautica. And after a decision this month from the
Trademark Trial and Appeal Board, the students won on Palmerton’s behalf.
Palmerton has run her own privately held business since 2008. She sells tote bags for nautical supplies and other items with the distinctive trademark “NautiGirl Dare to be naughty” and a logo depicting a determined-looking woman with a blue, 1920s-era hair style, a sailor’s cap and a scarf flying in the wind, holding a martini in one hand and guiding the wheel of a ship with the other.
The Nautica apparel company, which according to the decision document, has 47 federally registered trademarks, petitioned to cancel Palmerton’s trademark. Losing the clever logo might well have been the end of Palmerton’s business, and students in the Suffolk Law clinic took on the case at no charge to the client, who is based in Washington state.
A "monopoly" on a prefix
The Trademark Trial and Appeal Board looked at whether the NautiGirl mark as a whole so resembled the Nautica mark that it was likely to cause confusion, mistake, or deception and rejected Nautica’s petition. The board said that Nautica was attempting to “secure a monopoly over the generic prefix ‘Naut’ and the entire nautical theme.”
Recent Suffolk Law graduate Christina Mott, now working as a clerk for the Superior Court of Massachusetts, worked on discovery and interrogatories in the case in 2013 and 2014. Nine other students also worked on the case.
Rajat Bhardwaj, a 2015 graduate, says he and the other students “really put our blood, sweat and tears into the litigation.” The students researched case law and drafted deposition questions, requests for production, interrogatories, briefs and even a phonetic and phonological analysis of the sounds of the mark, drawing from a student’s degree in linguistics.
Can you own the root of a common word?
“It’s a very important case, because it reinforces the idea that, just because a large company invests resources into registering multiple trademarks, that alone doesn’t give it carte blanche to push small businesses out of the arena,” said Mott. “There will be other similar cases where a large company wants to own the root of a common word, and here TTAB has ruled against overreach. They’ve said that Nautica doesn’t own the nautical theme.”
Eve Brown, who led Suffolk Law’s clinic during the proceedings, said the victory is significant because many similar Nautica matters involving small businesses never made it to trial. Many other small businesses challenged by Nautica have been forced to surrender their rights because they lacked the resources to battle the company, said Brown, now director of the IP Clinic at Boston University. “If Christine Palmerton did not have pro bono representation, it would have cost her thousands to fight to save her brand. We were able to take it all the way, and that was a huge victory.”