TTAB Sustains Nike's Opposition to "4IR", Finding Confusion Likely with "AIR" For Shirts

Footwear behemoth Nike, Inc. ran over pro se Applicant Timothy Jinks in this opposition to registration of the mark 4IR for "shirts." The Board found confusion likely with Nike's common law mark AIR for various types of shirts. Not a single DuPont factor weighed in applicant's favor. NIKE, Inc. v. Timothy Jinks, Opposition No. 91278263 (July 9, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant Jinks did not submit any testimony or evidence, and did not file a trial brief.  Of course, he was not required to do so. It was up to Nike to prove its case.

Jinks admitted that Nike "has continuously used marks consisting of or incorporating the word AIR in connection with footwear and apparel in interstate commerce for decades." He did not dispute that Nike had priority of use for its AIR marks, nor did he dispute the inherent distinctiveness of AIR.

The Board focused its analysis on Nike’s prior common law rights in the mark AIR, in various stylized fonts, on apparel, including shirts. [See example above].

The Board observed that because the involved goods are legally identical, it must be presumed that they travel in the same trade channels. [Does that presumption apply to Nike's common law marks? -ed.]. "[G]iven the goods are legally identical in part, the DuPont factors involving relatedness of the goods and their trade channels weigh heavily in favor of likely confusion."

Based on Jinks's admissions, Nike's sales figures, and long use of the AIR mark, the Board found the mark to be "commercially strong in connection with apparel, including shirts," and meriting "a broader scope of protection than marks without any demonstrated commercial strength."

Turning to a comparison of the marks, the Board agreed with Nike that the numeral "4" may be presented in a variety of manners that closely approximate the letter "A."

Indeed, Applicant seeks to register its mark in standard character format, meaning that, if registered, it is conferred rights in the mark depicted in any font style, size or color. Trademark Rule, 2.52(a), 37 C.F.R. § 2.52(a). In other words, we must anticipate Applicant’s mark being displayed in a manner that where the numeral 4, in 4IR, can appear in a manner such that the overall mark will look quite similar to Opposer’s AIR mark. Thus, we find that the marks are similar in appearance.

Finally, the Board observed that, if Jinks were to use a stylized version of his 4IR mark in which the number 4 closely resembles the letter A, consumers might mistakenly believe that to be another fanciful use by Nike of its AIR mark on apparel. "In sum, the first DuPont factor weighs in favor of finding confusion likely."

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TTABlogger comment: What if Jinks filed to register his mark with a stylized "4" that did not look like the letter "A"?

Text Copyright John L. Welch 2024.