TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing
Footwear behemoth Nike, Inc. ran roughshod over Applicant Barbara Lorenzo in her attempt to registered the mark DON’T JUST DO IT, GET IT DONE for various clothing items. The Board sustained Nike's likelihood of confusion and likelihood of dilution claims based on the famous JUST DO IT mark for overlapping clothing items. One may wonder how this application got past the examination stage. Nike, Inc. v. Barbara Lorenzo, Opposition No. 91286066 (May 21, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).
Likelihood of Confusion: A claim of fame under Section 2(d) must be clearly proven. Nike's evidence established use of the JUST DO IT mark since 2018, with staggering sales figures and advertising expenditures, substantial interactions on social media, and frequent unsolicited media attention. The Board concluded that the mark JUST DO IT "is not only famous, but remarkably so. It is entitled to the highest level of protection against confusion. This factor weighs heavily in favor of finding a likelihood of confusion."
The overlap in goods and the presumed overlap in channels of trade and classes of consumers "not only weigh heavily in favor of finding a likelihood of confusion under these factors, but also reduces the degree of similarity between the marks necessary to find a likelihood of confusion."
Not surprisingly, Applicant Lorenzo focused her argument on the differences between the marks, but the Board was not impressed.
We are not persuaded by Applicants’ argument that the differences between the numbers of words, letters, syllables, vowels, consonants and spaces are sufficient to distinguish the marks. A determination of likelihood of confusion is not made on a purely mechanical basis, counting the number of words, syllables, or letters that are similar or different.
The Board concluded that the marks are more similar than dissimilar. Thus, all the DuPont factors favored a finding of likelihood of confusion, and so the Board sustained that claim.
Likelihood of Dilution: Usually the Board declines to reach a dilution claim if it has already found confusion likely. Not this time.
The Board found that the testimony and evidence "are more than sufficient to prove that JUST DO IT is famous for purposes of dilution," and establish that the mark became famous "well before Applicant’s 2022 filing date."
All of the factors in regard to the Section 43(c) dilution by blurring claim weigh in Opposer’s favor or are neutral. Accordingly, we find that Applicant’s mark is likely to dilute Opposer’s JUST DO IT Mark under Trademark Act 43(c)(2)(B), 15 U.S.C. § 1125(c)(2)(B).
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TTABlogger comment: Nike submitted the results of a fame survey, but the Board refused to consider them. More about that in an upcoming blog post.
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 6/05/2024
5 comments
5 Comments:
Interesting fact: The Letter of Protest Nike, Inc. filed against the pending application on January 17, 2023 referenced the wrong trademark. How did that happen?
Before law school, I worked in the industry. Nike has always understood the value of its brand and was highly protective going back decades.
It's absolutely appalling that Nike and the board had to waste what appear to be a great deal of resources (read, money and time) on this opposition when the application never should have been allowed. Notably, the application faced another opposition by a different registrant for the other classes of goods, which the applicant conceded. And this can't be explained away as poor search technique by the examiner, who not only was surely familiar with JUST DO IT, but also have evidence from a letter of protest. Yet she didn't even issue an OA and make the applicant argue anything. #examinerlottery
What are the (hopefully severe) consequences for an examining attorney in this situation?
Lawrence H. Binderow, why do you think the LOP cited the wrong trademark? I don't see that in the file history.
Correction. When I initially reviewed the USPTO Attorney Advisor’s LOP Memo to the examining attorney, I noted (a) the LOP appeared to have been disregarded by the EA (i.e. the application was approved for publication); and (b) Exhibit D (“Just Say It”); and Exhibit E (“Just Jesu It”) appeared to lack a connection with the underlying application. Hence, my first impression was that the LOP must have been deficient. What else could explain the EA's disregard? In hindsight, it’s clear that the EA just got it wrong by not adhering to the LOP.
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