August/September 2011 Issue
Nike, Inc. v. Maher,
Opp. No. 91188789 (TTAB Aug. 9, 2011)
Applicants applied to register the mark JUST JESU IT for various types of athletic apparel. Nike, Inc. opposed the application on the grounds of likelihood of confusion and dilution based on Opposer’s alleged prior use and registration of the mark JUST DO IT for clothing, among other goods. The TTAB found that Applicants’ JUST JESU IT mark was likely to cause confusion because Opposer’s JUST DO IT mark was famous, the parties’ goods were identical in part, the goods were presumed to travel in the same trade channels and to be purchased by the same classes of consumers, and the marks were similar in their entireties. The TTAB also found for Opposer on its dilution claim because Opposer’s JUST DO IT mark was famous for purposes of dilution, that mark became famous prior to Applicants’ filing date, and an association existed between the parties’ marks that would impair the distinctiveness of the famous JUST DO IT mark. Notably, in finding that Applicants’ mark diluted the famous JUST DO IT mark, the TTAB held that the Trademark Dilution Revision Act of 2006 does not require the marks to be identical or substantially similar.
Peter Maher and Patricia Hoyt Maher (collectively “Applicants”) applied to register the mark JUST JESU IT for various types of athletic apparel. Nike, Inc. (“Opposer”) opposed Applicants’ application on the ground of likelihood of confusion, alleging prior use and ownership of three registrations for the mark JUST DO IT, one of which covered clothing. Opposer also alleged that its JUST DO IT mark became famous prior to the filing date of Applicants’ application, and that the JUST JESU IT was likely to dilute the distinctiveness of Opposer’s JUST DO IT mark.
The TTAB first found that Opposer had established standing and priority based on its prior registration and use of the JUST DO IT mark since 1989, which predated Applicants’ August 5, 2009, filing date.
Regarding likelihood of confusion, the TTAB found that the JUST DO IT mark was famous based on Applicants’ admission of such fame and the other evidence discussed below in connection with Opposer’s dilution claim. The TTAB further held that the similarity of the parties’ goods, trade channels, and classes of consumers favored Opposer. The TTAB noted the identity of certain goods covered by Applicants’ application and Opposer’s registration, and relied on the presumption that the parties’ trade channels and classes of consumers were the same. As to the similarity-of-marks factor, the TTAB found that the marks were similar because they started and ended with the same words (“just” and “it”); both marks contained three words; the sound of the first and third words in the parties’ marks were identical and the second term in the parties’ marks had a similar sound (“u” versus “do”); and the marks had similar overall commercial impressions because Opposer’s mark has been viewed as a “battle cry” and the public was also likely to view Applicants’ mark as a call to action (i.e., it can be pronounced “Just Jesuit”). The TTAB dismissed Applicants’ argument that the marks were different because Applicants intended to use their mark in connection with a “crown of thorns,” noting that the issue of likelihood of confusion must be decided based on a comparison of Applicants’ mark set forth in the application and the cited registration, not upon a comparison of Applicants’ mark as it may appear on the goods. Additionally, the TTAB noted that, to the extent that Applicants had argued that their mark was a protected parody, parody is not a defense if the marks would otherwise be considered confusingly similar. Further, where, 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, the TTAB will not find a “parody” of a trademark. Based on the above, the TTAB found a likelihood of confusion.
As to Opposer’s dilution claim, the TTAB analyzed the three elements of a dilution-by-blurring claim:
(1) whether Opposer’s mark is famous; (2) whether Opposer’s mark became famous prior to Applicants’ filing date; and (3) whether Applicants’ mark is likely to blur the distinctiveness of Opposer’s famous mark.
Regarding fame, the TTAB noted again that Applicants had admitted fame, and that their admissions extended to fame for purposes of dilution, not just likelihood of confusion. For example, in addition to admitting that Opposer’s mark was famous, Applicants answered Opposer’s interrogatory regarding Applicants’ awareness of Opposer’s JUST DO IT mark 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 do not live under a rock.” In addition to Applicants’ admissions, the TTAB noted that “perhaps the most significant of the four elements set forth in the Act to determine fame is the extent of actual public recognition of the mark as a source-indicator for the goods and services in connection with which it is used,” and here, third-party references to and discussions about the mark JUST DO IT were pervasive, reflecting the extreme popularity of the mark and the message of compelled action that it represented. The TTAB cited numerous articles in print publications referring to Opposer’s JUST DO IT mark and Opposer’s success under that mark, as well as various independent sources that identified the slogan as among the most well known in the country. For example, surveys conducted by third parties had ranked JUST DO IT among the most memorable/best/highly recognized slogans, books had been written about the value of the mark, and celebrities such as LeBron James had endorsed products under the mark.
The TTAB also found that Opposer’s advertising and publicity of the JUST DO IT mark and sales of products under that mark supported a finding of fame. Opposer showed that it has spent approximately $6 billion in advertising the JUST DO IT mark, and it had advertised in network and cable-television commercials and print advertising, including having produced several award-winning ads, throughout the United States. Many of these advertisements and commercials featured famous athletes, such as Michael Jordan, John McEnroe, Bo Jackson, Tiger Woods, and LeBron James. Additionally, in 2006, Opposer started placing the JUST DO IT mark on the bottom of its shoe boxes, and has distributed and sold over 900 million shoe boxes bearing the mark. Opposer has also sold over 27 million units of products, including t-shirts, that either bear the JUST DO IT mark or include the mark “in the style name” of the product. Net sales for those products at the retail level have been close to $175 million.
Based on the above, and the registration of Opposer’s JUST DO IT mark on the Principal Register, the TTAB concluded that the mark was famous. The TTAB also found that the mark had been famous prior to Applicants’ August 5, 2008, priority filing date based on the articles referencing the fame of the mark published long prior to Applicants’ filing date.
Lastly, the TTAB examined the relevant dilution-by-blurring factors: (1) the degree of similarity between the mark or trade name and the famous mark, (2) the degree of inherent or acquired distinctiveness of the famous mark, (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark, (4) the degree of recognition of the famous mark, (5) whether the user of the mark or trade name intended to create an association with the famous mark, and (6) any actual association between the mark or trade name and the famous mark.
With respect to these factors, the TTAB found that the JUST DO IT mark was extremely well recognized by a broad spectrum of the public; Opposer had engaged in substantially exclusive use of the JUST DO IT mark based on its vigilant enforcement of its rights and its refusal of all third-party requests to use the mark; Opposer’s JUST DO IT mark was distinctive; Applicants’ JUST JESU IT mark was sufficiently similar to Opposer’s JUST DO IT mark to “trigger consumers to conjure up” Opposer’s famous mark, and thus the similarity factor favored Opposer; the “actual association” factor was neutral because Applicants had not yet used their mark; and the factor relating to Applicants’ intent was neutral because there was no direct evidence that Applicants intended to create an association with Opposer’s mark.
The TTAB explained that, in determining the similarity or dissimilarity of the marks for purposes of dilution, “[it] 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.” Moreover, the TTAB noted that “the harm dilution does to the selling power of a mark is not only caused by a third-party use or registration of an identical mark. It may be caused by a ‘look-alike’ mark, one that is close enough to the famous mark that consumers will recall the famous mark and be reminded of it . . . ‘even if they do not believe that the goods come from the famous mark’s owner.’” (Citation omitted.) Although the parties’ marks were not identical or substantially similar, the TTAB concluded that the parties’ marks were sufficiently similar that an association between them was established.
The TTAB dismissed Applicants’ argument that the certified status and title copies of four active third-party registrations for “JUST . . . IT” marks for clothing weighed against a finding that Opposer’s use was substantially exclusive. The TTAB explained that no evidence or testimony had been introduced to show that the marks were actually in use. Further, the four registrations were insufficient to show that “just . . . it” would be considered a commonly registered element. The TTAB also dismissed Applicants’ arguments that no dilution was likely because of the small size of their business and because Applicants intended to use their mark for “humorous, religious-themed apparel.” The TTAB explained that the size of Applicants’ business actually weighed in Opposer’s favor because, if Opposer made an exception to its policy of not allowing third parties to use marks with the structure “just . . . it” for any reason, Opposer’s mark’s ability to uniquely identify Opposer as a single source would be impaired. Further, Applicants’ marks did not constitute a parody because Applicants did not intend to use their mark to parody or to make any type of social commentary regarding Opposer, Opposer’s famous mark, or Opposer’s goods. Instead, Applicants were seeking to use their mark for religious social commentary and had attempted to take a “free ride” on the mark’s association with the famous mark for economic gain, which is not protectable parody. Finally, the TTAB noted that, although the dilution doctrine was designed to provide a remedy where the goods or services involved were neither competitive nor necessarily related, the doctrine may apply where goods are related and competing, as in the present case.
Thus, the TTAB concluded that the parties’ marks were sufficiently similar that an association between them was established; Opposer’s mark was inherently distinctive and the degree of public recognition of the mark was extremely high; Opposer engaged in substantially exclusive use of its mark; and the goods were, in part, identical. These factors established a likelihood of dilution and outweighed the facts that there did not appear to be an actual association between the marks (nor could there be, because Applicants’ mark was not yet in use), and the record did not reflect a bad-faith intent on the Applicants’ part in adopting the marks.
Accordingly, the opposition was sustained and registration to Applicants was refused based on a likelihood of confusion and dilution.
Under the Federal Trademark Dilution Act of 1996, the TTAB had generally held that for a dilution claim to lie, a defendant’s mark needed to be identical or substantially similar to the plaintiff’s famous mark. In this case, the TTAB followed the Ninth Circuit Court of Appeals and the Second Circuit Court of Appeals, however, in finding that the Trademark Dilution Revision Act of 2006 does not require marks to be identical or substantially similar. Rather, the TTAB found that “the harm dilution does to the selling power of a mark is not only caused by a third-party use or registration of an identical mark. It may be caused by a ‘look-alike’ mark, one that is close enough to the famous mark that consumers will recall the famous mark and be reminded of it,” even if the consumers do not believe that the goods come from the famous mark owner. In determining the similarity or dissimilarity of the marks for purposes of dilution, the TTAB will use the same test as in the likelihood-of-confusion analysis (i.e., the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression).