Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

The Board granted Applicant Palm Beach Crossfit's motion to dismiss two of Nike's four claims in this opposition proceeding, finding that Nike had inadequately pleaded claims under Section 2(a) and 2(c) of the Lanham Act. Nike asserted that applicant's design mark shown below left, for athletic clothing and athletic training services, would falsely suggest a connection with former hoopster Michael Jordan, and further that the mark comprises a portrait of a living individual (Jordan) without his consent. Nike, Inc. v. Palm Beach Crossfit Inc. d/b/a Crossfit CityPlace, 116 USPQ2d 1025 (TTAB 2015) [precedential].

Nike's Section 2(d) and 43(c) (dilution-by-blurring) claims, which were based on Nike's ownership of registrations for the mark shown above right, survived the motion to dismiss. Applicant argued that the marks are so dissimilar that, as a matter of law, these two claims must be jettisoned, but the Board disagreed. The Board ruled that applicant's services are not so unrelated to Nike's sporting goods that the issue can be determined on a motion to dismiss.

Turning to the Section 2(a), the "initial and critical requirement" for a false association claim is that the identity allegedly being misappropriated is unmistakably associated with the person or institution identified. Nike alleged that applicant's "handstand" mark falsely suggests a connection not with Nike, but with Michael Jordan - but the hoop star was not a party to the proceeding.

While Opposer alleges generally its relationship with Michael Jordan has led to a close association between the two in the minds of the public, Opposer does not assert that the public would recognize Applicant’s marks as pointing uniquely to Opposer (or to Michael Jordan), or that Applicant’s Handstand marks are a close approximation of Opposer’s (or Michael Jordan’s) identity or “persona,” an element necessary to a false suggestion of a connection claim.

The Board therefore dismissed Nike's Section 2(a) claim.

As to the Section 2(c) claim, a plaintiff must allege that the marks "consists of or comprises" the name, image, likeness, or signature of a particular living individual, and that "he or she is so well known that the public would that the public would reasonably assume a connection between the mark and the individual, or that, because the individual is publicly connected with the business or field of the identified goods or services, such connection would be assumed."

Section 2(a) may be invoked by an entity, but Section 2(c) requires reference to "a particular living individual." Opposer alleged that it has a licensing relationship with Michael Jordan and that it has developed and used trademarks comprising Jordan's image, giving Nike a monetary interest in the image of Michael Jordan. However, Nike did not assert that the "licensing relationship" gives it a proprietary right to assert a Section 2(c) claim on Jordan's behalf.

Accordingly, the Board dismissed the Section 2(c) claim for insufficient pleading.

The Board allowed Nike 20 days within which to file an amended notice of opposition, if it "believes sufficient grounds exist to re-plead its Section 2(a) and 2(c) claims."

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TTABlog comment: Seems like the 2(a) claim may be easily fixed, but what about 2(c)? I suppose you'd have to look at the licenses.

Text Copyright John L. Welch 2015.