Nike Crushes Pro Se Applicants in JUST DREW IT! Opposition

The TTAB sustained this opposition to registration of the proposed mark JUST DREW IT! for athletic apparel, finding a likelihood of confusion with, and likely dilution of, Nike's famous mark JUST DO IT for clothing, footwear, bags, and a variety of ancillary products. Pro se Applicants Jamin Caldwell and Courtney Miles submitted no testimony or evidence. Let's face, they never stood a chance. Nike, Inc. v. Jamin Caldwell and Courtney Miles, Opposition No. 91240394 (April 28, 2020) [not precedential] (Opinion by Judge Albert Zervas).

Fame: The applicants admitted that Nike's JUST DO IT mark is famous within the meaning of Lanham Act Section 43(a), the dilution provision. Admission of dilution fame also means that the JUST DO IT mark is strong and famous for likelihood-of-confusion purposes, since dilution fame requires a stronger showing than Section 2(d) fame. When fame is established under Section 2(d), it "plays plays a ‘dominant role in the process of balancing the DuPont factors,’ ... and ‘[f]amous marks thus enjoy a wide latitude of legal protection.’”

Despite applicants' admission regarding fame, the Board reviewed Nike's evidence of fame, concluding that JUST DO IT is a household name or phrase. [In my household, when the Brat Brothers would complain about doing their homework, I would say "Just Do It!" - ed.]. The Board also noted that it has previously found the mark famous on a similar record. Nike Inc. v. Maher, 100 USPQ2d 1018, 1024-27 (TTAB 2011) (JUST JESU IT). [That fact, I submit, should have no probative value here since Applicants Jamin Caldwell and Courtney Miles were not parties to that proceeding - ed.].

Likelihood of Confusion: The goods identified in the opposed application overlapped with Nike's goods (shirts, pants, hats and caps, etc.). The Board must presume that those overlapping goods travel through the same trade channels to the same classes of consumers. Moreover, there were no price limitations on the goods, and these are the type of inexpensive goods that are purchased without a great deal of care.

As to the marks, each consists of three short words, beginning with JUST and ending with IT. Each is unspecific as to what the IT may be. Applicants stated that IT may refer to a drawing or work of art. The exclamation point at the end of applicant's mark does not change the meaning or commercial impression.

The main dissimilarity between the marks is that the middle word in Opposer’s mark is DO while the middle word in Applicants’ mark is DREW. But both DO and DREW are verbs, with DO being more general, in that it conveys performing an action of some unspecified type. The verb DREW is more specific, and is the past tense of the verb to draw. Thus, the command JUST DO IT could implore the listener to DO something, such as to DRAW something, depending on the circumstances. In short, while DO and DREW look different, their meanings -- and sound too -- are not necessarily significantly different.

Applicants pointed out that JUST in Nike's mark means "to act without hesitation" while in their mark it means "moments ago or recently." The Board, however, found that these subtle differences do not detract from the overall similarity in meaning, sound and commercial impression. The marks are more similar than dissimilar, which is "particularly significant in this case given how famous and strong Opposer's mark is."

And so the Board concluded that confusion is likely and it sustained the Section 2(d) claim.

Dilution by Blurring: Unlike its usual approach, the Board proceeded to consider opposer's dilution claim even though it had already found likelihood of confusion.

Applying the six factors under Section 43(c)(2)(B)(i-vi), the Board found that applicant's mark will cause consumers to "conjure up" Nike's famous mark. N.Y. Yankees, 114 USPQ2d at 1507. The JUST DO IT mark is either inherently distinctive or has high acquired distinctiveness. Nike enforces its rights vigorously and has substantially exclusive use of its mark. The JUST DO IT mark enjoys the highest level of fame. The factors of applicants' intent and evidence of actual association were neutral.

The Board concluded that "[a]ll of the factors weigh in favor of finding a likelihood of dilution or are neutral. Therefore, dilution is likely."

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Text Copyright John L. Welch 2020.