Nautica® v. Nautica Thorn

The adoption of a nom de plume is a time-honored tradition. Francois Marie Arouet became Voltaire, Samuel Clemens became Mark Twain, Theodore Geisel is known to us all as Dr. Seuss.

Movie actors ran with this tradition from the earliest time that celluloid fell to a cutting room floor. Moses Horwitz, Louis Feinberg, Jerome Horwitz, and/or Samuel Horwitz, couldn’t get a reservation at Denny’s. Moe Howard, Larry Fine, Curly Howard and/or Shemp Howard, on the other hand, would soitanly be seated, reservations or not — and certainly somewhere better than the big D. Ramón Gerard Antonio Estévez, Carlos Irwin Estevez, went with Martin and Charlie Sheen. (Charlie’s younger brother Emilio seems to have a little more Latino pride).

Actors and actresses choose screen names for any number of reasons, but Wikipedia says, “The Actors’ Equity Association (AEA) advises performers to select a name that is easy for others to pronounce, spell and remember. (source)”

Ms. Tokumi, for whatever reason, upon her entrée into adult entertainment chose to reinvent herself as “Nautica Thorn.” This is more original than most exotic dancers’ stage names, and she has never, to the best of my knowledge, claimed that she is “just doing this until she finishes nursing school.” (FN1) (By the way, her favorite foods are sushi, steak, pasta, spam musubi, and ketchup. (source).

After 37 years of spelling “R-A-N-D-A-Z-Z-A” (to say nothing for trying to get people to spell my FIRST name right), I can sympathize with Shauna Tokumi if she thinks that her given name isn’t exactly going to work for entertainment purposes. It might, but Nautica Thorn rolls off the tongue in a more fluid and pleasing manner — and it certainly is easier to both remember and spell. Not that there’s anything wrong with Shauna Tokumi, as a name. Personally, I’m a big fan of keeping one’s ethnic name, but a girl has to think of her career.

As part of a growing trend — Shauna/Nautica filed for a trademark registration for her stage name (serial no. 78968551) for “Entertainment services in the nature of live acting, dancing performances and modeling for adult performances, and public appearances of a star of adult movies; entertainment services, namely providing visual pictures and images in the field of adult entertainment via the internet.” (International Class 41) The Examining Attorney didn’t find anything wrong with it, and moved it along to publication.

Enter Nautica®. (cue the music for the villain or the hero, depending on which side you want to take in this little tiff). They filed an opposition to Ms. Tokumi’s registration. (Link to Opposition)

Nautica® describes itself as follows:

Nautica, a modern American classic, offers quality, design and value while capturing the essence of an active, adventurous and spirited lifestyle.(source)

My “fashion consultant” describes Nautica® as “preppy, conservative, with kind of a nautical theme, I guess. You know, white boy clothes.”

Regardless of my opinion of Nautica’s® marketing or their products, their lawyers are thorough. Nautica® has somewhere in the neighborhood of 30 registered trademarks containing the term “Nautica.” Another sidebar, their attorney of record in this opposition, Brian Gaynor, is one of those opposing counsels that makes you really enjoy practicing law. He and I have had occasion to be on opposite sides in a matter related to this one, and he is professional, courteous, and cool… so I certainly come into this discussion with no anti-Nautica® bias. Nevertheless, I’m putting my money on Nautica Thorn to win this one.

Problem number 1 for Nautica®: Nautica is a common word (not in English, but a common word). I agree that Nautica® should be able to protect its mark. I even agree that a dictionary word can be a trademark. Even so, it seems to be just slightly overreaching to say that Nautica® can “own” or “control” every trademark use of the word “Nautica.” Nevertheless, with a stack of trademark registrations thicker than a deck of cards and deep market penetration, Nautica® might be able to overcome this problem. The line: even money.

Problem number 2 for Nautica®: Is there really any likelihood of confusion here? If you hear that “Nautica Thorn” is going to be in a new movie, do you think for a second, (use the Jim Gaffigan “voice of the woman who doesn’t get his jokes“) that some soccer mom from Minneapolis is going to say “ohhh, well, I just love Nautica towels. And by golly, if they are makin’ porn now, perhaps its time for me to stop listening to Mary Kiffmeyer and just give the ol’ DVD player some thrills.”

Conversely, is anyone going to watch a Nautica Thorn movie and then say “ewww, I’m not buying that ugly yellow and blue jacket. That company endorses smut!”

I know that Nautica® says that stuff about the “adventurous and spirited lifestyle,” but if you get “confused” between Nautica Thorn and the company that makes the white boy clothes, I do believe that you are proof that the gene pool needs just a little chlorine. Nevertheless, Nautica’s® lawyers had to make this argument. It shouldn’t fly, but it might. The line: Tokumi by six.

Problem number 3 for Nautica®: More of a “consideration” than a “problem” — Laches. If this were a cancellation proceeding, Ms. Tokumi could certainly raise the laches defense, which would require her to prove that there was an unreasonable delay in enforcement of Nautica’s® rights resulting in prejudice to her.

This does not matter in the opposition context, but will be helpful if there is a collateral infringement suit. Nautica Thorn has been engaged in her “adventurous and spirited lifestyle” on screen since 2002. She’s become very well known and well-respected in the industry. If this boils over into an infringement action, I think she will have a pretty good laches defense. Registration or not, she has built a brand name for herself for five years and dozens of movies.

But, lets not get ahead of ourselves. In this proceeding, laches won’t help. The defense of laches is generally not available in an opposition proceeding. National Cable Television Association v. American Cinema Editors Inc., 937 F.2d 1572 (Fed. Cir. 1991) (Laches, with respect to protesting the issuance of the registration for the mark, could not possibly start to run prior to when . . . [the] application for registration was published for opposition.”); Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1312 (TTAB 1999) (“In an opposition or cancellation proceeding, where the objection is to the issuance of a registration of a mark, laches starts to run when the mark in question is published for opposition.”); Barbara’s Bakery, Inc. v. Barbara Landesman, 82 U.S.P.Q.2D 1283 (TTAB 2007) (same). (See FN2 for critique). The line, if Tokumi raises laches in the opposition proceedings, she will clearly lose.

My only criticism of Nautica’s® claim stems from Count III of the complaint. Nautica® claims that the Nautica Thorn mark should be barred under Section 2(a). Oh, see, now they went and made me mad.

Applicant’s services consist of and comprise immoral and scandalous matter, and matter which may disparage or falsely suggest a connection with Opposer, and will bring Opposer into contempt or disrepute, in violation of §2(a) of the Lanham Act, 15 U.S.C. §1052(a), all to Opposer’s irreparable damage.

In my opinion, this claim should subject Nautica® to sanctions. I have my well-documented issues with §2(a) itself. (See, e.g, here). Setting those aside, it appears that Nautica’s® attorneys went way overboard with that claim. Section 2(a) only applies to the mark itself — not the services provided or identified by the mark. The USPTO isn’t supposed to delve into whether the product or services are immoral or scandalous, but solely whether the mark itself is (much to the chagrin of some examiners). This was a gross overreach and Nautica® should have to pay Shauna Tokumi’s fees for dismissing that count. It won’t happen, but they should.

On balance, it isn’t a bad complaint, and really Nautica® had to bring it, lest they lose control over a brand that seems to be policed as heavily as Orchard Road in Singapore. That said, the Section 2(a) count is dead wrong. The point spread is low, but Nautica Thorn should get her trademark – and Nautica® can go on and make its white boy clothes. Even if Tokumi loses, I can’t see Nautica® being able to stop Tokumi from using the name Nautica Thorn.

Don’t worry, Nautica®, the consuming public can keep the two straight.

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FN1 – Conventional wisdom is that you come up with your “porn name” by using the name of your first pet as your first name, and your mom’s maiden name as your last name.

FN2 – For an excellent critique of the National Cable Television Association decision and its progeny, see Albert Robin & Howard B. Barnaby, Equitable Defenses in Opposition Proceedings — Where did they Go?, 36 IDEA 55 (1995).

The policy governing interpretation of the Lanham Act should be to encourage registration of marks that are in use. The NCTA decision is contrary to this policy, and for this reason alone should be reconsidered. In addition, to the extent that the decision did not take into consideration inconsistent statutory intent and all relevant precedent, its conclusions as to the scope of equitable defenses in inter partes cases needs to be reexamined. (source)