Friday, June 14, 2024

J. Michael Keyes:: "Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB"

Nike, Inc. was recently victorious in an opposition to registration of the mark DON’T JUST DO IT, GET IT DONE for various clothing items. The Board found likelihood of confusion with and likelihood of dilution of the famous JUST DO IT mark for overlapping clothing items. [TTABlogged here]. Nike submitted the results of a fame survey, but the Board refused to consider that evidence. Mike Keyes, a consumer survey expert and IP litigator at Dorsey & Whitney LLP, provides his comments below.

"Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB

Nike recently opposed the trademark application "Just Don't Do It, Get It Done" for various apparel products alleging that it would infringe and dilute Nike's "Just Do It" trademark. Nike, Inc. v. Lorenzo, 2024 TTAB LEXIS 201 (Trademark Trial & App. Bd, May 21, 2024). Nike submitted a massive amount of evidence to support its claims. The TTAB held that Nike ran away with this one. Just about all of the DuPont confusion factors and the dilution factors favored Nike. It clearly lived up to its Greek Goddess origins ("Nike" is the Greek Goddess of victory, as you may recall).

Although Nike's evidence may have been the size of a mini Mt. Olympus, the TTAB refused to consider a consumer survey Nike proffered. Why?

Because when a party submits survey evidence to the TTAB, it needs to establish that the survey was conducted according to generally accepted scientific principles.

Here, Nike simply submitted the results of an "historic events survey" from 1999. No testimony established important first-hand details such as: (1) the identity of the individual who conducted the research and his or her professional bona fides; (2) what sampling procedure was used; (3) how the data was collected; or (4) a myriad of other principles that are hallmarks of valid and reliable survey research.

Although the submission appeared to include a page of "data results" and a copy of the survey questionnaire, those are not proxies for a fulsome, detailed explanation of how the survey was conducted in the first instance.

The Takeaway. As the TTAB reminds us, survey research "is not a freestanding piece of evidence, but instead is offered as the basis for expert opinion testimony." Nike, 2024 TTAB LEXIS 201, *14. If you are going to do it, just do it with a proper witness who can testify with first-hand knowledge as to how the study was conducted and the significance of the data set. Only then will the survey gods be pleased with your offering.

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TTABlogger comment: You may subscribe to Mike Keyes newsletter, "Lanham Act Surveys for Lawyers" here).

Text Copyright John L. Welch and Michael Keyes 2024.


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