Monday, August 15, 2011

Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB

The TTAB sustained Nike's opposition to registration of the mark JUST JESU IT for various items of athletic apparel, finding the mark likely to cause confusion with and likely to dilute (by blurring) the famous and registered mark JUST DO IT for overlapping clothing items. The Board jettisoned its former "substantial similarity" or "near identity" test for dilution, instead holding that the marks need only be "sufficiently similar in their overall commercial impressions" that the requisite "association" exists for a finding of blurring. Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [precedential].

Likelihood of confusion: Applicants, appearing pro se, admitted that the JUST DO IT mark is famous for Section 2(d) purposes. Moreover, as discussed below, the Board found that Nike met the even higher fame standard that applies for dilution. Of course, this du Pont factor weighed heavily in Nike's favor.

As a famous mark, JUST DO IT is entitled to a "wide latitude of protection, and the degree of similarity between the marks necessary to support a conclusion of likely confusion declines." Moreover, "[t]he degree of similarity required is also lessened in this case because the goods are identical in part." [How low can it go? - ed.]

The Board found the marks to be similar in overall appearance and pronunciation. But to meaning, not so much:

[O]pposer has shown that its mark has been viewed as a “battle cry.” The meaning of applicants’ mark is ambiguous, not just as a three-term phrase with a middle term that evokes “Jesus” (but appears not to be itself an English word), but even when that middle term “Jesu” is combined with “it” to form the word “Jesuit.” Despite this ambiguity in the meaning of applicants’ mark, the overall commercial impression of the parties’ marks is similar because given the fame of opposer’s mark, the public is likely to view applicants’ mark as similarly being a call to action, even though it is unclear what action is being urged.

The Board concluded that, despite the "potential" difference in meaning, "given the fame of opposer’s mark and the similarity of appearance, pronunciation and overall commercial impressions," the marks are similar for likelihood of confusion purposes.

As to Applicants' argument that their mark is a humorous parody [LOL - ed.], the Board was not amused:

W]here, as here, a defendant appropriates a trademarked symbol such as a word or picture, not to parody the product or company symbolized by the trademark, but only as a prominent means to promote, satirize or poke fun at religion or religious themes, this is not “parody” of a trademark. [Trademarked? What does that mean? - ed.]

Weighing the relevant du Pont factors, the Board found confusion likely and it sustained Nike's 2(d) claim.

Likelihood of dilution: The Board usually stops after sustaining a 2(d) claim and declines to consider the plaintiff's dilution claim, but in a departure from its usual practice, the Board took up Nike's Section 43(c) claim. It looked to three necessary elements: "(1) whether the opposer’s mark is famous; (2) whether the opposer’s mark became famous prior to the date of the application to register the applicant’s mark; and (3) whether the applicant’s mark is likely to blur the distinctiveness of the opposer’s famous mark.”

Famous? As to fame, the Board found that Applicants had admitted that JUST DO IT is famous, in light of these discovery responses: Applicants answered opposer’s interrogatory No. 13 regarding applicants’ awareness of the mark JUST DO IT with the response: “Who isn’t aware of Opposer’s Mark? At least in the free world.” Applicants also answered opposer’s request for production of documents regarding when applicants first learned of opposer’s mark with the response: “No such documents. Applicants don’t live under a rock.”

In any event, Nike proved its mark to be famous for dilution purposes. Third-party references and media discussion about JUST DO IT "have been pervasive, reflecting the extreme popularity of the mark and the message of compelled action that it represents." The evidence showed that JUST DO IT has "made its way into the popular culture at all levels." Several independent studies identified this slogan as among the most well-known in the country. Its popularity "resonates over a broad spectrum of the public."

Nike has spent more than $6 billion in advertising the JUST DO IT mark during its 20-year lifespan. Well known sports figures like Michael Jordan, Bo Jackson, and LeBron James, have appeared in its advertising. The mark appeared on 900 million shoeboxes in the years 2005-2010, and Nike has sold more than 27 million units of products that bear the mark JUST DO IT or include the mark JDI in the style name.

Nike owns three registration for the mark, each of which was issued without resort to Section 2(f) and each of which is incontestable.

Based on this evidence, the Board found JUST DO IT to be famous for dilution purposes.

Famous when? Applicants' earliest available first-use date was August 5, 2008, their filing date. Nike established that its mark, used continuously since 1989, became famous well before that date.

Likely blurring? The Board next looked to the six factors set forth in Section 43(c)(2)(B). It found that Nike's "continued long use and promotion of the brand have created an extremely well-recognized mark."

As to exclusivity, Nike vigorously enforces its rights in the mark and denies all requests for permission to use the mark, even in connection with religious activities. Applicant proffered four registrations for "JUST ... IT" marks for clothing [JUST JEW IT, JUST BREW IT, JUST BE IT, and JUST GRAB IT] but the Board pooh-poohed them, since there was no evidence whether the marks are actually in use, or to what extent. Moreover, the existence of those registrations did not persuade the Board that "the phrase 'just ... it' would be considered a commonly registered element such that a mark following this pattern but with a different middle term would thereby be rendered, as a whole, distinguishable from opposer's famous mark."

As mentioned, Nike's mark was registered on the Principal Register without a 2(f) claim, and no other uses of the phrase by third parties were proven. Nike established that its mark is "so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner’s goods or services."

Turning to the degree of similarity between the marks, prior to the Trademark Dilution Revision Act of 2006, the TTAB generally held that the diluting mark and the diluted mark had to be "identical or very or substantially similar." However, the TDRA made substantial changes to the law of dilution, creating a list of factors to determine blurring. Congress did not include the terms "substantial" similarity, "identity," or "near identity," but referred only to the "similarity" between the marks. The 9th Circuit's recent decision in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 97 USPQ2d 1947, 1958 (9th Cir. 2011), followed that reasoning, and concluded that the two marks at issue need not be "substantial" in order for the dilution-by-blurring claim to succeed.

The Board then turned to its own consideration of the two marks involved here:

While we are not concerned in this context with whether a likelihood of confusion exists, we still consider the marks, not on the basis of a side-by-side comparison, but rather in terms of whether the marks are sufficiently similar in their overall commercial impressions that the required association exists. Also, in determining the similarity or dissimilarity of the marks, "we will use the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis, that is, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." (quoting Coach Services, Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 , 1613 (TTAB 2010) [precedential].)

The Board concluded that the marks are sufficiently similar here to "trigger consumers to conjure up" Nike's famous mark." "Upon encountering applicants' mark, consumers will be immediately reminded of opposer's JUST DO IT mark and associate applicant's mark with opposer's mark."

There was no proof of an "actual association" between the parties' marks, since Applicants have yet to use their mark. Nor was there direct evidence that Applicants "intended to create an association with opposer's famous mark."

Finally, under the "all relevant factors" umbrella, the Board noted that although Applicants have a "very small company," an exception in Applicant's case would impair the ability of the JUST DO IT mark to uniquely point to Nike as a single source. This "small company" defense "does not assist applicants."

Applicant's parody defense failed again, since they are not making any joke as to Nike's mark, but are merely trying to take a "free ride" on their mark's association with Nike's famous mark, for financial gain. "This is not protectable parody."

Finally, the TDRA did not preclude application of the dilution doctrine when the goods are related or competing. Indeed, some courts have said that the closer the products, the greater the likelihood of both confusion and dilution.

Balancing the relevant factors, the Board concluded that "an association exists between the parties' marks that would impair the distinctiveness of opposer's famous mark." Therefore the Board sustained Nike's Section 43(c) claim.

TTABlog comment: This is only the third dilution claim sustained by the TTAB since 1999, when dilution became available as a ground for opposition and cancellation. [Can you name the other two cases?]

When the goods are overlapping and the mark is famous for Section 2(d) purposes, isn't the dilution claim superfluous? Isn't the Board just piling on here? I think the Board just wanted a chance to address the issue of the "similarity" of the marks required for dilution purposes, and consequently the Applicants here had to endure an extra pounding.

Text Copyright John L. Welch 2011.


At 10:23 AM, Anonymous Joe said...

Keeping in the spirit of dilution (of case names): 1) NASDAQ v. Antarctica, June 30, 2003, and 2) National Pork v. Supreme Lobster, June 11, 2010. Now, where's my parting gift?

At 12:51 AM, Blogger BrandGeek said...

I bet you get a TTABlog buoy, at least! Mr. Welch is known for his gifts, you know.

Great article, John.


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