throbber
THIS ORDER IS NOT A
`PRECEDENT OF THE TTAB
`
`
`
`
`
`Mailed:
`September 15, 2011
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`______
`
`Nike, Inc.
`v.
`Peter Maher and Patricia Hoyt Maher
`_____
`
`
`
`
`
`Opposition No. 91188789
`to application Serial No. 77539642
`filed on 8/5/2008
`
`_____
`
` ERRATUM
` _____
`
`
`
`
`
`
`
`
`
`Kevin C. Parks and Michelle L. Calkins of Leydig, Voit &
`Mayer, Ltd. for Nike, Inc.
`
`Peter Maher and Patricia Hoyt Maher, pro se.
`______
`
`Before Walters, Bergsman and Wolfson, Administrative
`Trademark Judges.
`
`Opinion by Wolfson, Administrative Trademark Judge:
`
`
`The caption for the Board’s decision dated August 9,
`
`2011, is corrected to reflect the participation of Kevin C.
`
`Parks as counsel for plaintiff. The decision, as corrected,
`
`is attached hereto. Time for filing an appeal continues to
`
`run from August 9, 2011, the original date of decision.
`
`
`
`
`
`

`
`Opposition No. 91188789
`
`THIS OPINION IS A
`PRECEDENT OF THE T.T.A.B.
`
`
`
`
`
`
`Mailed:
`August 9, 2011
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`Nike, Inc.
`v.
`Peter Maher and Patricia Hoyt Maher
`_____
`
`
`
`
`
`Opposition No. 91188789
`to application Serial No. 77539642
`filed on 8/5/2008
`
`_____
`
`Kevin C. Parks and Michelle L. Calkins of Leydig, Voit &
`Mayer, Ltd. for Nike, Inc.
`
`Peter Maher and Patricia Hoyt Maher, pro se.
`______
`
`Before Walters, Bergsman and Wolfson, Administrative
`Trademark Judges.
`
`Opinion by Wolfson, Administrative Trademark Judge:
`
`Applicants, Peter Maher and Patricia Hoyt Maher, filed
`
`
`
`a trademark application for the mark JUST JESU IT for the
`
`following clothing items:
`
`athletic apparel, namely, shirts, pants, jackets,
`footwear, hats and caps, athletic uniforms;
`bermuda shorts; board shorts; boxer shorts;
`button-front aloha shirts; fleece shorts; golf
`shirts; gym shorts; hat bands; hats; hooded sweat
`shirts; knit shirts; long-sleeved shirts; night
`shirts; open-necked shirts; panties, shorts and
`
`
`
`2
`
`

`
`Opposition No. 91188789
`
`briefs; pique shirts; polo shirts; rugby shirts;
`rugby shorts; shirts; short sets; short trousers;
`short-sleeved or long-sleeved t-shirts; short-
`sleeved shirts; shorts; sleep shirts; sport
`shirts; sports shirts with short sleeves; sweat
`shirts; sweat shorts; t-shirts; tee shirts;
`toboggan hats, pants and caps; underwear, namely,
`boy shorts; walking shorts; wearable garments and
`clothing, namely, shirts; woolly hats.
`
`Nike, Inc. (“opposer”) has filed an opposition against
`
`applicants’ application, alleging prior use and ownership of
`
`the following registrations of the mark JUST DO IT, in typed
`
`drawing form:
`
`1. Reg. No. 1875307 for “clothing, namely t-shirts,
`sweatshirts and caps”; registered January 24, 1995;
`renewed.
`
`2. Reg. No. 1817919 for “paper goods and printed
`matter; namely, bumper stickers, note pads, posters
`and banners; non-metallic key chains and ornamental
`novelty buttons; mugs”; registered January 25,
`1994; renewed.
`
`
`
`
`
`3. Reg. No. 1931937 for “binders, student planners,
`portfolio covers”; registered October 31, 1995;
`renewed.
`
`Opposer further alleges that applicants’ mark JUST JESU
`
`IT so closely resembles opposer’s mark that confusion is
`
`likely under Section 2(d) of the Trademark Act, 15 U.S.C. §
`
`1052(d).1 In addition, opposer alleges that its mark is
`
`famous; that the mark became famous prior to the filing date
`
`
`1 Opposer alleges use of the mark JUST DO IT both with and without
`a final period (“.”). With the exception of Reg. No. 1931937, its
`pleaded registrations include the final period. For ease of
`reference, the form of the mark we use herein is without the final
`period.
`
`
`
`3
`
`

`
`Opposition No. 91188789
`
`of the application; and that applicants’ mark is likely to
`
`dilute the distinctiveness of opposer’s famous mark under
`
`Section 43(c), 15 U.S.C. § 1125(c), by lessening the
`
`capacity of the mark to identify and distinguish opposer’s
`
`goods and services. Applicants generally denied each of the
`
`salient allegations in the complaint. After trial, both
`
`sides filed trial briefs and opposer filed a reply brief.
`
`The Record
`
`
`
`By rule, the record includes applicants’ application
`
`file and the pleadings. Trademark Rule 2.122(b), 37 CFR
`
`§2.122(b).
`
`I. Opposer’s Evidence
`
`Opposer introduced the following testimony of its
`
`employees and the following evidence during its testimony
`
`period:
`
`1. The testimony deposition of Jaime Schwartz, Assistant
`General Counsel, with attached exhibits Nos. 1-11.
`
`2. The testimony deposition of Melanie Sedler, Trademark
`Paralegal, with attached exhibits Nos. 12-27.
`
`3. The testimony deposition of Jessica Shell, Trademark
`Paralegal, with attached exhibits Nos. 28-32.
`
`4. The testimony deposition of Mark Thomashow, Global
`Director, Business Affairs.
`
`Opposer also filed notices of reliance on certified
`
`copies of its pleaded registrations prepared by the USPTO
`
`showing the current status of and title to the
`
`
`
`4
`
`

`
`Opposition No. 91188789
`
`registrations; applicants’ answers to opposer’s first set of
`
`interrogatories, requests for admissions, and requests for
`
`production of documents and things;2 and newspaper and other
`
`periodical articles divided by year, starting with 1989 and
`
`continuing through 2010, purporting to show the fame of
`
`opposer’s mark.
`
`II. Applicants’ Evidence
`
`During their testimony period, applicants filed a
`
`notice of reliance on certified copies of five third-party
`
`registrations showing the current status of and title to the
`
`registrations. Applicants did not introduce any testimony.
`
`Evidentiary Objections
`
`
`
`Opposer objected to the introduction of one of the
`
`third-party registrations introduced by applicants on
`
`grounds that it has been cancelled.3
`
`
`
`While a cancelled registration “does not provide
`
`constructive notice of anything,” Action Temporary Services
`
`
`2 Opposer also attached copies of documents applicants submitted
`in response to opposer’s request for production of documents and
`things. Such documents cannot be submitted by notice of reliance
`alone except to the extent that they are admissible under the
`provisions of § 2.122(e). 37 C.F.R. § 2.120(j)(3)(ii). None of
`the documents submitted by opposer in connection with applicants’
`answers to the document production request are admissible under
`this rule, and accordingly they have not been considered.
`However, applicants’ responses, in connection with several of the
`requests, that no such documents exist, have been treated as being
`of record. See L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 n.5
`(TTAB 2008); TBMP § 704.11 (3d ed. 2011).
`3 Reg. No. 2980221.
`
`
`
`5
`
`

`
`Opposition No. 91188789
`
`Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307,
`
`1309 (Fed. Cir. 1989), it is admissible under 37 C.F.R. §
`
`2.122(e) as an official record. In addition, third-party
`
`registrations may be used to indicate that a commonly
`
`registered element has a suggestive meaning. Spoons
`
`Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740
`
`(TTAB 1991), aff’d unpub’d, No. 92-1086 (Fed. Cir. June 5,
`
`1992). To the extent the registrations, including the
`
`cancelled registration, have been offered for the purpose of
`
`showing the suggestive nature of any commonly registered
`
`element, we have considered them for whatever probative
`
`value they may have.4
`
`Standing and Priority
`
`Because opposer has properly made of record certified
`
`copies of its pleaded registrations, opposer has established
`
`its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
`
`55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
`
`Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
`
`(CCPA 1982). Moreover, priority of use for Section 2(d)
`
`purposes is not an issue in this proceeding. King Candy Co.
`
`v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
`
`110 (CCPA 1974).
`
`
`4 To the extent the cancelled registration has any evidentiary
`value, it is limited to the short time that the mark was
`registered; i.e., from July 26, 2005 to April 5, 2006.
`
`
`
`6
`
`

`
`Opposition No. 91188789
`
`In addition, the evidence establishes opposer’s use of
`
`its registered mark from at least as early as 1989,5 which
`
`predates the earliest date upon which applicants may rely
`
`(August 5, 2008, the filing date of their application), as
`
`applicants have not yet commenced actual use of their mark.6
`
`Likelihood of Confusion
`
`Opposer contends that applicants’ mark is likely to
`
`cause confusion among consumers under Trademark Act § 2(d),
`
`15 U.S.C. § 1052(d). Our determination as to whether there
`
`is a likelihood of confusion is based on an analysis of all
`
`of the probative facts in evidence that are relevant to the
`
`factors bearing on the issue of likelihood of confusion. In
`
`re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
`
`563, 567 (CCPA 1973). See also, In re Majestic Distilling
`
`Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
`
`Cir. 2003). In this case, the facts in evidence bear on the
`
`following factors: fame of opposer’s mark, the similarity
`
`between the marks, the identity of the goods and relatedness
`
`of trade channels, and the classes of purchasers.
`
`
`
`
`5 Thomashow Dec., pp. 14-15.
`6 Applicants’ Brief, p. 1; Opposer’s Second Notice of Reliance,
`Ex. 4.
`
`
`
`7
`
`

`
`Opposition No. 91188789
`
`I. Fame of Opposer’s Mark
`
`Applicants have admitted that opposer’s mark is famous
`
`for likelihood of confusion purposes.7 Lacoste Alligator
`
`S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB
`
`2009)(admission that plaintiff’s mark is famous sufficient
`
`for likelihood of confusion purposes). Moreover, we have
`
`found opposer’s mark famous for dilution purposes. See
`
`discussion infra. In view of the foregoing, we find that
`
`opposer’s mark is famous for likelihood of confusion
`
`purposes. See Palm Bay Imports Inc. v. Veuve Clicquot
`
`Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1694 (Fed.
`
`Cir. 2005); Cf. Coach Services Inc. v. Triumph Learning LLC,
`
`96 USPQ2d 1600, 1610 (TTAB 2010) (“Fame for dilution
`
`requires a more stringent showing.”).
`
`This factor strongly favors opposer.
`
`II. The Similarity or Dissimilarity and Nature of the Goods;
`The Similarity or Dissimilarity of Likely-To-Continue Trade
`Channels and Classes of Consumers.
`
`
`Applicants have applied to register their mark for
`
`various articles of clothing, including “hats and caps,”
`
`“hooded sweat shirts,” “short-sleeved or long-sleeved t-
`
`shirts,” and “sweat shirts.” Opposer’s Reg. No. 1875307
`
`covers “t-shirts,” “sweatshirts,” and “caps.” The goods are
`
`
`7 Opposer’s Second Notice of Reliance, Exhibit 2: Request for
`Admissions, No. 4 seeks an admission that “Opposer’s mark “JUST DO
`IT” is famous.” Response: “Admit.”
`
`
`
`8
`
`

`
`Opposition No. 91188789
`
`identical in part. Moreover, both applicants’ and opposer’s
`
`clothing are broadly identified without any restrictions or
`
`limitations as to the type of clothing (with the exception
`
`that applicants’ description of t-shirts excludes sleeveless
`
`t-shirts), channels of trade or classes of consumers.
`
`Therefore, we must assume that both applicants’ and
`
`opposer’s clothing encompass all types of shirts, caps, t-
`
`shirts (except sleeveless) and sweat shirts, and that they
`
`are sold in the same channels of trade and to the same
`
`classes of consumers. See Genesco Inc. v. Martz, 66 USPQ2d
`
`1260 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d 1531,
`
`1532 (TTAB 1994) (“Because the goods are legally identical,
`
`they must be presumed to travel in the same channels of
`
`trade, and be sold to the same class of purchasers.”).
`
`This factor favors opposer.
`
`III. Similarity of the Marks
`
`We now consider the similarity of the marks, comparing
`
`the marks in their entireties as to appearance, sound,
`
`connotation and commercial impression in order to determine
`
`the similarity or dissimilarity between them. Palm Bay
`
`Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
`
`1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
`
`Because opposer’s mark is famous, it enjoys a wide latitude
`
`of protection, and the degree of similarity between the
`
`
`
`9
`
`

`
`Opposition No. 91188789
`
`marks necessary to support a conclusion of likely confusion
`
`declines. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
`
`1303, 1305 (Fed. Cir. 2002). The degree of similarity
`
`required is also lessened in this case because the goods are
`
`identical in part. Century 21 Real Estate Corp. v. Century
`
`Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.
`
`Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-
`
`Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen
`
`Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
`
`With these principles in mind, we consider the marks,
`
`not as they would compare if subjected to a side-by-side
`
`comparison, but rather in terms of whether the marks are
`
`sufficiently similar in their overall commercial impression
`
`so that confusion as to the source of the goods offered
`
`under the respective marks is likely to result. See San
`
`Fernando Electric Mfg. Co. v. JFD Electronics Components
`
`Corp., 565 F.2d 683, 196 USPQ 1,3 (CCPA 1977); Spoons
`
`Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
`
`(TTAB 1991), aff’d unpub’d, No. 92-1086 (Fed. Cir. June 5,
`
`1992).
`
`We find that the marks are similar in their overall
`
`appearance. Both applicants’ and opposer’s marks start and
`
`end with the same words “just” and “it.” Both are only
`
`three words long. This gives the marks a similar look. As
`
`
`
`10
`
`

`
`Opposition No. 91188789
`
`to pronunciation, the second term in applicants’ mark ends
`
`in the vowel “u,” as does the middle word in opposer’s mark:
`
`“do,” and both marks start and end with the same word, thus
`
`the same sounds: JUST and IT. Applicants’ mark may be
`
`pronounced “Just Jesuit,” varying only slightly the cadence
`
`of opposer’s mark. In meaning, opposer has shown that its
`
`mark has been viewed as a “battle cry.”8 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. “[A] purchaser is less likely to perceive
`
`differences from a famous mark.” B.V.D. Licensing v. Body
`
`Action Design, 846 F.2d 727, 730, 6 USPQ2d 1719, 1722 (Fed.
`
`Cir. 1988)(Nies, J., dissenting)(emphasis in original), and
`
`quoted with approval in Kenner Parker Toys Inc. v. Rose Arts
`
`
`8 See, e.g., Nicholas, Jonathan, Dump Dan? Nike Nearly Just
`Did It, supra, “[Nike’s] slogan, ‘Just Do It,’ has become
`the world’s best-known battle cry.”
`
`
`
`
`11
`
`

`
`Opposition No. 91188789
`
`Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
`
`Cir. 1992).
`
`Thus, despite the potential differences in meaning,
`
`given the fame of opposer’s mark and the similarity of
`
`appearance, pronunciation and overall commercial
`
`impressions, we find the marks to be similar for likelihood
`
`of confusion purposes.
`
`Applicants argue that the marks are dissimilar in
`
`appearance because their mark is to be used in conjunction
`
`with a “crown of thorns.” This argument is unavailing. The
`
`issue of likelihood of confusion must be decided based upon
`
`a comparison of applicants’ mark as set forth in the
`
`application and the cited registrations, and not upon a
`
`comparison of applicants’ mark as it may appear on the
`
`goods. See Ultracashmere House Ltd. v. Springs Mills Inc.,
`
`4 USPQ2d 1252, 1254 (Fed. Cir. 1987).
`
`To the extent applicants argue that their mark is a
`
`protected parody, we note that parody is not a defense if
`
`the marks would otherwise be considered confusingly similar.
`
`See, e.g., Starbucks U.S. Brands, LLC and Starbucks
`
`Corporation D.B.A. Starbucks Coffee Company v. Marshall S.
`
`Ruben, 78 USPQ2d 1741, 1754 (TTAB 2006); Columbia Pictures
`
`Industries, Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981)
`
`(“The right of the public to use words in the English
`
`
`
`12
`
`

`
`Opposition No. 91188789
`
`language in a humorous and parodic manner does not extend to
`
`use of such words as trademarks if such use conflicts with
`
`the prior use and/or registration of the substantially same
`
`mark by another.”).
`
`In this regard, we do not see, nor do applicants
`
`explain, how JUST JESU IT parodies JUST DO IT. Thus, 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,9 this is not “parody” of a trademark. See Elvis
`
`Presley Enterprises Inc. v. Capece, 141 F.3d 188, 46 USPQ2d
`
`1737, 1745-46 (5th Cir. 1998); Dr. Seuss Enterprises L.P. v.
`
`Penguin Books USA, Inc., 109 F.3d 1394, 42 USPQ2d 1184 (9th
`
`Cir. 1977).
`
`This factor weighs in opposer’s favor.
`
`IV. Balancing the factors
`
`
`
`Opposer’s famous mark, JUST DO IT, is entitled to a
`
`wide scope of protection. See, e.g., Bose Corp. v. QSC
`
`Audio Prod.’s Inc., 63 USPQ2d 1303, 1309 (Fed. Cir. 2002);
`
`Recot Inc. v. M.C. Becton, 54 USPQ2d 1894, 1897 (Fed. Cir.
`
`2000)(“Famous marks are accorded more protection precisely
`
`
`9 Applicants state their intent is to sell “humorous Jesus-themed
`t-shirts and sweatshirts and other apparel….” Applicants’ Brief,
`p. 1.
`
`
`
`13
`
`

`
`Opposition No. 91188789
`
`because they are more likely to be remembered and associated
`
`in the public mind than a weaker mark.”) The goods involved
`
`are identical in part and are presumed to travel through the
`
`same trade channels and be purchased by the same classes of
`
`consumers. The marks are similar in their entireties,
`
`giving due weight to their appearances, sound, meaning and
`
`commercial impressions. In view of the foregoing, we find
`
`that applicants’ mark JUST JESU IT is likely to cause
`
`confusion with opposer’s mark JUST DO IT.
`
`Although we have found sufficient basis for refusing
`
`registration to applicants on this ground, for the sake
`
`of completeness, we proceed to consider opposer’s dilution
`
`claim, including consideration of opposer’s claim that its
`
`mark JUST DO IT is not merely famous for our likelihood of
`
`confusion analysis but also sufficiently famous to warrant
`
`protection from dilution.
`
`Dilution by Blurring
`
`Opposer contends that applicants’ mark will dilute
`
`
`
`opposer’s famous JUST DO IT mark under the Trademark
`
`Dilution Revision Act of 2006 (“TDRA”), Trademark Act §
`
`43(c), 15 U.S.C. § 1125(c), by blurring its distinctiveness.
`
`Dilution by blurring is an “association arising from the
`
`similarity between a mark or trade name and a famous mark
`
`that impairs the distinctiveness of the famous mark,” 15
`
`
`
`14
`
`

`
`Opposition No. 91188789
`
`U.S.C. §1125(c)(2)(B), and may be found “regardless of the
`
`presence or absence of actual or likely confusion, of
`
`competition, or of actual economic injury,” 15 U.S.C.
`
`§1125(c)(1).
`
`“When an application to register a mark is challenged
`
`on grounds of dilution [by blurring], we look to three
`
`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.” National
`
`Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d
`
`1479, 1494-5 (TTAB 2010).
`
`I. Fame of Opposer’s JUST DO IT Mark
`
`
`We first turn to the factor of fame. A mark is defined
`
`under §1125(c)(2)(A) as “famous” for dilution purposes -
`
`… if it is widely recognized by the general
`consuming public of the United States as a
`designation of source of the goods or services of
`the mark’s owner. In determining whether a mark
`possesses the requisite degree of recognition, the
`court may consider all relevant factors, including
`the following:
`
`
`(i) The duration, extent, and geographic
`reach of advertising and publicity of
`the mark, whether advertised or
`publicized by the owner or third
`parties.
`
`
`
`
`15
`
`

`
`Opposition No. 91188789
`
`(ii) The amount, volume, and geographic
`extent of sales of goods or services
`offered under the mark.
`
`(iii) The extent of actual recognition
`of the mark.
`
`(iv) Whether the mark was registered
`under the Act of March 3, 1881, or the
`Act of February 20, 1905, or on the
`principal register.
`
`As noted supra, applicants have admitted that opposer’s
`
`mark is famous for likelihood of confusion purposes.10 Even
`
`under the “higher and more rigorous standard for dilution
`
`fame required under the FTDA [Federal Trademark Dilution
`
`Act],” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
`
`Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
`
`(Fed. Cir. 2005), applicants have admitted the fame of
`
`opposer’s mark. 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.”11
`
`
`10 Opposer’s Second Notice of Reliance, Exhibit 2: Request for
`Admissions, No. 4 seeks an admission that “Opposer’s mark “JUST DO
`IT” is famous.” Response: “Admit.”
`11 Opposer’s Request for Production of Documents, No. 20.
`
`
`
`16
`
`

`
`Opposition No. 91188789
`
`We not only find applicants’ admission compelling, but
`
`we also find that under the criteria set forth in the Act,
`
`opposer has shown that its mark is famous for dilution
`
`purposes. We examine these elements in turn.
`
`A. Extent of Actual Recognition
`
`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 or services in connection with which it is used.
`
`Here, third-party references to and discussions about the
`
`mark JUST DO IT have been pervasive, reflecting the extreme
`
`popularity of the mark and the message of compelled action
`
`that it represents.12 The slogan has made its way into the
`
`popular culture at all levels, as evidenced by the following
`
`articles:
`
`Where a procrastinator might once have been
`advised, “A stitch in time saves nine,” now, a
`young dawdler could be moved by the Nike
`commercial tag line: “Just do it.”
`
`Williams, Lena, For Advice, the Media as Mom, The New York
`Times, August 2, 1989.
`
`
`The most visible thing about Nike is its
`marketing, not its matrix. The company’s “Just Do
`It” advertising slogan is one of those rare gems
`that have transcended advertising to enter popular
`culture and language.
`
`
`12 The probative value of the news articles is that they show how
`the authors perceive, or refer to, opposer’s mark, and the
`exposure of the public to the mark.
`
`
`
`17
`
`

`
`Opposition No. 91188789
`
`
`Cox, James, Shoes with an Attitude, USA Today, August 2,
`1990.
`
`
`There are other cultural trends moving in Perot’s
`direction. At a time when Nike’s “Just do it” is
`the advertising slogan of the age, Perot embodies
`that desire in a multitude of ways.
`
`Stark, Steven, Why Perot? No-Nonsense, Can-Do Savior,
`Orlando Sentinel, June 9, 1992.
`
`
`The vital difference between Warhol and
`advertising is that advertising, because it has to
`sell things, is, in the end, never ironic. The
`deadpan image of an athletic shoe, combined with a
`simple declarative Nike slogan like “Just Do It”
`became a cultural phenomenon….
`
`Lewis, Jo Ann, It’s Postmodern; and if you don’t get it, you
`don’t get it, The Washington Post, March 27, 1994.
`
`
`Nike dominates the U.S. athletic shoe industry,
`testimony to a marketing machine so successful
`that the company’s “Just Do It” slogan and
`“swoosh” logo are part of U.S. pop culture.
`
`Bloomberg Business News, Nike Just Does What Customers Want,
`Plain Dealer (Cleveland, Ohio), January 6, 1996.
`
`
`Wieden is the soft-spoken boss who brings a Zen
`like calm to the breakneck business of leading the
`world’s hottest advertising agency. He has helped
`Nike become the world’s most recognizable brand.
`Its slogan, “Just Do It,” has become the world’s
`best-known battle cry.”
`
`Nicholas, Jonathan, Dump Dan? Nike Nearly Just Did It, The
`Sunday Oregonian, November 30, 1997.
`
`
`Wieden & Kennedy crafted one memorable ad after
`another for Nike, including one of the most
`enduring slogans in advertising history: “Just Do
`It.”
`
`Sanders, Holly M., Nike Drops an Old Shoe – Longtime Ad Firm
`Just Won’t Do It, The New York Post, March 14, 2007.
`
`
`
`18
`
`

`
`Opposition No. 91188789
`
`
`
`No slogan encapsulated the spirit of 20th century
`America better, perhaps, than Nike’s “Just Do It.”
`
`
`Editorial, He Just Did it; Inventiveness put Nike’s Co-
`founder on the Fast Track, Pittsburgh Post-Gazette, December
`29, 1999.
`
`
`Anyone who watches television learns to identify
`products by their logos or advertising slogans.
`We don’t need visuals to know that “Just do it!”
`is associated with Nike,….
`
`
`Rogers, Rick, Cruise in Comfort on Norwegian Ship, Daily
`Oklahoman, October 1, 2000.
`
`
`The recent rash of artists-in-ads represents a new
`era in the ongoing evolution of the advertising
`industry into a paragon of chic. … The trend began
`in the 1980s, with a handful of stylish ads, such
`as Apple’s “1984,” and accelerated in the 1990s,
`with slogans such as Nike’s “Just Do It” becoming
`centerpieces of pop culture.
`
`
`Schoenberg, Nar, Trade Chic: Top stars join seller’s market;
`they’re perfectly willing to plug products, The San Diego
`Union-Tribune, May 26, 2002.
`
`
`Nike’s ad campaigns, such as “Just Do It,” are
`icons of pop culture.
`
`
`McCarthy, Michael, Wake up consumers? Nike’s brash CEO dares
`to just do it, USA Today, June 16, 2003.
`
`
`It’s been 20 years since Portland ad man Dan
`Wieden came up with the phrase “Do It,” attached
`“Just” to the front and pitched the tagline to
`lukewarm reception from Nike executives on the
`losing side of a shoe war with Reebok. Today, the
`eight-letter phrase is among the two or three
`slogans rated most memorable in advertising
`history, and Nike is the world’s largest sporting
`goods maker.
`
`
`Hunsberger, Brent, “Just Do It” tagline still gets it done,
`The Oregonian, July 18, 2008.
`
`
`
`
`19
`
`

`
`Opposition No. 91188789
`
`In addition to articles touting opposer’s success with
`
`the mark JUST DO IT, opposer identified several independent
`
`sources, described below, that identify the slogan as among
`
`the most well known in the country, suggesting that, at the
`
`very least, most consumers are familiar with the slogan.
`
`In 1995, The Wirthlin Group, for the Association of
`
`National Advertisers, “asked a representative sample of
`
`1,002 people to recall, without any prompting, slogans and
`
`celebrity endorsers. … The top slogans were Wendy’s (Where’s
`
`the Beef?), followed by Alka-Seltzer (Plop, plop, fizz, fizz
`
`…) and Nike (Just do It)….”13
`
`In 1999, an “Historic Events and Pop Culture Survey,”
`
`conducted by Colonial Williamsburg, an entity independent
`
`from opposer, found that 79% of respondents correctly
`
`identified opposer as the source of the “advertising slogan
`
`‘Just Do It.’” See NASDAQ Stock Market Inc. v. Antartica
`
`S.r.l., 69 USPQ2d 1718, 1737 (TTAB 1998)(75% recognition
`
`among investors sufficient for finding of dilution).
`
`Also in 1999, Advertising Age magazine came out with a
`
`“special edition marking 100 years of the ad business,”
`
`ranking JUST DO IT “No. 2 in its survey of the most
`
`
`13 Casteaneda, Laura, Catchy Slogans Can Turn Splash into Cash,
`The Dallas Morning News, August 21, 1995; Opposer’s Third Notice
`of Reliance, Ex. 7.
`
`
`
`20
`
`

`
`Opposition No. 91188789
`
`memorable slogans of the 20th Century – behind De Beers’
`
`‘Diamonds are forever.’”14
`
`And in 2008, Inc.com named the mark JUST DO IT one of
`
`“The 10 Best Slogans of All Time.”15
`
`The mark’s popularity resonates over a broad spectrum
`
`of the public. Kids wear JUST DO IT t-shirts.16 A screen
`
`shot from a Cleveland Cavaliers basketball fan site showing
`
`basketball player LeBron James includes the following quote:
`
`“The pre-game ritual of LeBron has become a symbol of the
`
`ultimate JUST DO IT moment.”17 Books have been written about
`
`the value of the mark to opposer.18
`
`
`14 Hunsberger, Brent, Nike’s Seen Success From ‘Just Do It’ for 20
`Years; Famous Slogan helped the Athletic Wear Company Surpass its
`Rivals, The Post-Standard, July 27, 2008; Opposer’s Third Notice
`of Reliance, Ex. 20.
`15 Shell Dep., p. 20; Ex. 28. “This is a screen shot taken from
`Inc.com … that was pulled from the Internet in February of 2009
`and it lists JUST DO IT as one of the top slogans, top ten slogans
`of all time.”
`16 Thomashow Dep., p. 24. “It’s been my theory for a long time
`that when you do an ad, one way to show how effective the ad is
`[is] whether kids want a piece of it. [T]he fact that a kid will
`spend 20 bucks to buy a T-shirt that has Michael and Bugs on it is
`significant. … People are buying that slogan because they want a
`piece of Nike’s marketing is the best way to say it.”
`17 Shell Dep., p. 21. “It’s just an example of – says iconic
`nature of JUST DO IT as it’s been rendered in advertising
`including recent advertising.”
`18 Robert Goldman & Stephen Papson, Nike Culture, p. 19 (1998);
`and Donald Katz, JUST DO IT: The Nike Spirit in the Corporate
`World (1994); Exs. 29-30. (Ms. Shell testified that “in this
`profile of Nike as a business, this author chose to use JUST DO IT
`as the title” and that the cover included “a very familiar print
`ad similar to some of the original print ads from the campaign.”
`Shell Dep., p 23.)
`
`
`
`21
`
`

`
`Opposition No. 91188789
`
`There is widespread and extensive third-party
`
`recognition of the mark.
`
` B. Advertising and Publicity of the Mark
`
`Over its 20-plus year lifespan, opposer has spent
`
`approximately $6 billion in advertising the mark JUST DO
`
`IT.19 Opposer has advertised in network and cable television
`
`commercials and print advertising, including having produced
`
`several award-winning ads, throughout the United States.20
`
`Its print advertising has run in Elle, Runners World, Sports
`
`Illustrated, Redbook, Esquire, Rolling Stone, Entertainment
`
`Weekly, People and Time.21 Opposer’s advertising uses well-
`
`known sports figures, such as Michael Jordan, John McEnroe,
`
`Bo Jackson, Tiger Woods and LeBron James.22 Several of
`
`opposer’s television commercials have been “put out on the
`
`Internet.”23 The “Just Do It – ‘Bo Knows’ Campaign” has been
`
`viewed on YouTube in excess of 200,000 times.24 A 2009 ad
`
`campaign titled “Chalk Throw – Lebron Commercials” was made
`
`into a video that has garnered over 840,000 views on
`
`YouTube.25 And a television commercial featuring track and
`
`field athlete Carl Lewis that was aired during the 2008
`
`
`19 Sedler Dep., p. 44; Ex. 25.
`20 Id., p. 42.
`21 Id., p. 42; Exs. 20-24.
`22 Sedler Dep., pp. 39-42; Exs. 23 and 24.
`23 Id., p. 40; Ex. 23.
`24 Id., p. 40.
`25 Id., p. 41; Ex. 23.
`
`
`
`22
`
`

`
`Opposition No. 91188789
`
`Olympics was watched, as of February 2009, over 1.2 million
`
`times on YouTube.26
`
`Opposer’s advertising campaign has been extensive and
`
`widespread.
`
`C. Sales of Shoes
`
`In 2006, opposer started placing the JUST DO IT
`
`trademark on the bottom of its corporate shoe boxes.27
`
`Opposer distributes approximately 180 million shoe boxes in
`
`a year and its use of the mark on shoe boxes has continued
`
`through the present:
`
`Q. And then if we extended that math through 201

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket