Nike successfully opposes JUST JESU IT
United States of America
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In Nike Inc v Maher (Opposition 91/188,789, August 9 2011), the Trademark Trial and Appeal Board (TTAB) has sustained Nike Inc’s opposition, finding that the mark JUST JESU IT was likely to cause confusion with and dilute Nike's famous JUST DO IT mark.
On August 5 2008 Nike filed an opposition against Peter Maher and Patricia Hoyt Maher’s application for JUST JESU IT for various clothing items in Class 25 of the Nice Classification based on several of its registrations for the mark JUST DO IT. The TTAB found for Nike on likelihood of confusion and dilution grounds. While the TTAB carefully reviewed many factors relevant to each of the two separate grounds for the opposition, its decision overall was heavily influenced by the admitted (and obvious) fame of the JUST DO IT mark.
The applicants admitted that Nike’s JUST DO IT was famous. In response to one of Nike’s interrogatories, the applicants responded: “Who isn’t aware of opposer’s mark? At least in the free world.”
The record was also replete with additional evidence of fame (referred to by the TTAB as “extreme popularity”), including eye-popping advertising spends, references to third-party surveys (eg, JUST DO IT was “No 2 in [Ad Age’s] survey of the most memorable slogans of the 20th Century”), very substantial product sales under the mark, and lists of laudatory quotes from third parties about the fame and success of the slogan. Accordingly, the TTAB found the standard of fame met not only for likelihood of confusion purposes, but also for purposes of the “more rigorous” standard of fame under the Trademark Dilution Revision Act of 2006 (TDRA). The TTAB also found that Nike’s mark was famous prior to the earliest rights of the applicants.
Given the fame of JUST DO IT, the similarity of the marks (the TTAB noted that a purchaser is less likely to perceive differences from a famous mark), the identity of the goods and relatedness of trade channels (the TTAB noted that, when goods are legally identical, they are presumed to travel in the same channels of trade), and the classes of purchasers, the TTAB found for Nike on likelihood of confusion.
The TTAB also found that the Mahers’ mark was likely to dilute JUST DO IT by blurring, because the association arising from the similarity of the marks impaired the distinctiveness of Nike’s famous mark. To determine whether the association of the marks was likely to impair the distinctiveness of Nike’s mark, the TTAB looked at the six factors of Section 43(c)(2)(b) of the Trademark Act. As noted above, the TTAB easily found JUST DO IT to be a famous mark.
The TTAB considered the fact that JUST DO IT and JUST JESU IT are not identical, and expressly noted the legislative intent with the adoption of the TDRA, which recognised that dilution is not only caused by 'lookalike' marks, but also by marks that are “close enough to the famous mark that consumers will recall the famous mark and be reminded of it... even if they do not believe the goods come from the famous mark’s owner”. The TTAB then found that JUST JESU IT and JUST DO IT were sufficiently similar to “trigger consumers to conjure up” Nike’s mark when faced with the Mahers’ mark.
The TTAB considered other relevant factors such as:
- the size of the Mahers' business (and found insufficient evidence on this point, and noted a registrant’s concern about a “death by a thousand cuts”);
- the Mahers’ parody defence (which the TTAB rejected, saying the factors that supported a registration for CHEWY VUITON did not apply in this case); and
- the relatedness of the goods (where the TTAB noted that the TDRA did not preclude the application of the dilution doctrine where goods are related or competing).
The opposition was thus sustained and the Mahers’ application was refused based on a likelihood of confusion and dilution.
Ron N Dreben and Monique E Liburd, Morgan Lewis & Bockius LLP, Washington DC
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