TTAB Sustains Nike's Section 2(d) Opposition to GOT EM KICKS for Consignment Stores for Retro Sneakers and Clothing

The Board sustained Nike's opposition to registration of the mark GOT EM KICKS for "Retail consignment stores featuring retro sneakers and clothing," in view of the Nike's common law rights in the mark GOT 'EM for retail store services featuring footwear and clothing. The Board found that "all factors weigh in favor of a likelihood of confusion or are neutral, and none weigh against it." This post will hit some of the "highlights." NIKE, Inc. v. Gotemkicks, Opposition No. 91287908 [not precedential] (Opinion by Judge Martha B. Allard).

he Board found that Nike launched its on-line SNKRS Platform in February 2015 and has used the GOT ’EM mark in connection with sales on that platform since its launch. Thus, Nike established use of its mark "at least in connection with its computer software application featuring footwear for sale since at least March 27, 2018, which is prior to any date upon which Applicant may rely."

Applicant’s brief focused mainly on the argument that Nike’s mark is a "commonly understood message [that] does not function as a trademark because it does not identify and distinguish source." However, the evidence showed that "consumers do indeed perceive the GOT ’EM phrase as identifying Opposer as the source of the online shopping platform services and computer software application."

Considering the totality of the evidence of record, the record does not demonstrate that Opposer’s mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message, such as was found to be the case in the phrases I ♥ DC, ONCE A MARINE, ALWAYS A MARINE and DRIVE SAFELY. Instead, we find that it shows that consumers perceive used with a computer software application as associated with Opposer rather than as a commonplace expression. * * * On this limited record we are simply not persuaded by Applicant’s arguments and cannot find, as Applicant argues, “widespread use and public exposure” of the phrase.

Applicant feebly argued that Nike failed to establish priority because its mark appeared on promotional items that were given away, not sold, to consumers. The Board kicked that argument to the curb: "As an initial matter, it ignores the fact that Opposer did in fact sell millions of items of footwear through its platform, where each successful sale caused the GOT ’EM mark to be displayed to the buyer. Regardless, '[t]he [Trademark Act] does not require that goods or services be sold for purposes of establishing priority.'"

Applicant also claimed that Nike's delay in seeking registration of its mark suggested that Nike itself did not consider the phrase to function as a mark. According to applicant, had Nike considered the GOT ’EM mark as a source indicator, it would have filed the application at or near the same time that it filed applications to register the SNKRS marks. The Board kicked that argument over the curb: "This is not persuasive, as there is no requirement that a mark owner apply to register its marks at all, much less that it seek to register all marks used with a particular good or service at the same time, or contemporaneously with the launch of the good or service."

Applicant did not dispute that the relatedness of the involved goods and services, nor that the parties’ channels of trade or classes of consumers are similar.

As to the conceptual strength of Nike's mark, the Board found that Nike's mark is suggestive, meaning that it is inherently distinctive. However, Nike's evidence regarding commercial strength fell short of proving that GOT 'EM is a particularly strong mark.

The record is clear that the SNKRS Platform is popular. However, with regard to the fifth DuPont factor, it is difficult to discern how many sales of footwear products were made via Opposer’s computer software application and how many of the consumers who visited the SNKRS Platform successfully purchased footwear and, as a consequence, were exposed to Opposer’s stylized mark. Even considering the unsolicited media evidence, we cannot find, on this record, that Opposer’s mark is entitled to be placed on the very high end of the fame/commercial strength spectrum; rather, we find that Opposer’s mark is entitled to the normal scope of protection

Applicant argued that the marks are dissimilar due to Applicant’s inclusion of the term KICKS and Opposer’s use of an apostrophe. The Board disagreed that these differences are enough to distinguish the marks. It found, instead, that the first DuPont factor weighed "heavily" in favor of a likelihood of confusion.

Finally, Applicant pointed to the lack of evidence of actual confusion. The Board was again unimpressed: "Here, Applicant’s co-existence as of the time of trial of about three years without evidence of actual confusion when the extent of its use is limited to services offered at a single location that has itself had low sales does not render confusion unlikely. We find the seventh and eighth DuPont factors neutral."

And so, the Board sustained the opposition.

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