It’s a classic David and Goliath scenario: NautiGirl, a startup based in Washington state, received a trademark cancellation notice from Nautica and its parent, VF Corp. Instead of backing down like many other small businesses have in the past, NautiGirl chose to fight and came out victorious.
But the West Coast startup didn’t go it alone. Its secret weapon for defeating the famous brand was Suffolk University Law School’s Intellectual Property and Entrepreneurship Clinic. And after a legal battle lasting three years, the school’s organization succeeded not only in protecting NautiGirl’s trademark pro bono, but also in setting a precedent for future cases where big businesses try to bulldozer startups with little cause.
Christine Palmerton, NautiGirl’s founder, has been running her business since 2008. Her company offers totes for carrying boating gear and other nautically themed items catered to women. The startup’s logo is a martini-tippling woman clad in a scarf and a sailor hat at the wheel of a ship, and its trademark has been, “NautiGirl Dare to be Naughty,” since its inception.
Despite having little in common with NautiGirl – except for their mutual maritime theme – Nautica petitioned to cancel the startup’s trademark. But last week, the Trademark Trial and Appeal Board (TTAB) shot the corporation down, ruling in favor of Suffolk’s clinic and its client. The TTAB asserted that Nautica was trying to “secure a monopoly over the generic prefix ‘Naut’ and the entire nautical theme.”
Law students fuel startup empowerment
With this win, the clinic’s administrators feel it has restored a sense of hope to startups.
“There have been about 134 actions where Nautica did the same thing to other small businesses,” explained Christina Mott, a former Suffolk Law student who had been working on the case. “None of them went to trial, and that’s astonishing.”
“It’s very apparent that when you’re a small business and you get a cancellation letter from an international business like Nautica, it’s terrifying,” she continued.
A Nautica representative could not immediately be reached for comment.
Anne Hulecki, the Practitioner in Residence at the clinic as of this summer, explained that smaller companies typically back down because of cost. “People like Christine Palmerton, who have closely held businesses, cannot afford $100,000 or more to bring a lawsuit or send a lawsuit,” Hulecki said. “Whereas the Nauticas of the world can afford that, and they proceed really without thinking. They want to mow down everything remotely close to their companies.”
Suffolk identified the apparent, growing need for legal services amongst entrepreneurs and small businesses with limited funds. At the same time, the school saw this as an opportunity to give its law students hands-on learning experiences to make them better lawyers.
Through the clinic, third-year students are now able to immerse themselves in real IP cases, all while supporting the Boston startup space – as well as individuals across the U.S.
“In Boston, there are so many startups,” Hulecki said to me. “Boston is IP intensive, and we want to support entrepreneurs within the community. But because trademark and copyright laws are largely federal, we also take clients from all over the country.”
IP clinics are the next big thing
Hulecki sees room to grow at Suffolk’s clinic. There are currently 8 law students working IP cases, but there were 40 people who had applied. As the need for free IP legal services increases, she sees an opportunity to expand. In the meantime, the pro bono trend is catching on, and entrepreneurs can also look to other law schools for assistance.
“Other schools are seeing the same needs in their own communities, and the opportunity of other IP clinics popping up gives startups the power of law students, who will work for free and get favorable outcomes for clients,” Mott told me. “This is a hopeful development for people who don’t have unlimited resources, who don’t have the means to hire traditional law firms.”