`PRECEDENT OF THE TTAB
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`Mailed:
`September 15, 2011
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`______
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`Nike, Inc.
`v.
`Peter Maher and Patricia Hoyt Maher
`_____
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`Opposition No. 91188789
`to application Serial No. 77539642
`filed on 8/5/2008
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`_____
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` ERRATUM
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`Kevin C. Parks and Michelle L. Calkins of Leydig, Voit &
`Mayer, Ltd. for Nike, Inc.
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`Peter Maher and Patricia Hoyt Maher, pro se.
`______
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`Before Walters, Bergsman and Wolfson, Administrative
`Trademark Judges.
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`Opinion by Wolfson, Administrative Trademark Judge:
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`The caption for the Board’s decision dated August 9,
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`2011, is corrected to reflect the participation of Kevin C.
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`Parks as counsel for plaintiff. The decision, as corrected,
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`is attached hereto. Time for filing an appeal continues to
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`run from August 9, 2011, the original date of decision.
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`Opposition No. 91188789
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`THIS OPINION IS A
`PRECEDENT OF THE T.T.A.B.
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`Mailed:
`August 9, 2011
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`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.
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`Opinion by Wolfson, Administrative Trademark Judge:
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`Applicants, Peter Maher and Patricia Hoyt Maher, filed
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`
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`a trademark application for the mark JUST JESU IT for the
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`following clothing items:
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`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
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`2
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`Opposition No. 91188789
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`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.
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`Nike, Inc. (“opposer”) has filed an opposition against
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`applicants’ application, alleging prior use and ownership of
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`the following registrations of the mark JUST DO IT, in typed
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`drawing form:
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`1. Reg. No. 1875307 for “clothing, namely t-shirts,
`sweatshirts and caps”; registered January 24, 1995;
`renewed.
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`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.
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`3. Reg. No. 1931937 for “binders, student planners,
`portfolio covers”; registered October 31, 1995;
`renewed.
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`Opposer further alleges that applicants’ mark JUST JESU
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`IT so closely resembles opposer’s mark that confusion is
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`likely under Section 2(d) of the Trademark Act, 15 U.S.C. §
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`1052(d).1 In addition, opposer alleges that its mark is
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`famous; that the mark became famous prior to the filing date
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`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.
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`3
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`Opposition No. 91188789
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`of the application; and that applicants’ mark is likely to
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`dilute the distinctiveness of opposer’s famous mark under
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`Section 43(c), 15 U.S.C. § 1125(c), by lessening the
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`capacity of the mark to identify and distinguish opposer’s
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`goods and services. Applicants generally denied each of the
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`salient allegations in the complaint. After trial, both
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`sides filed trial briefs and opposer filed a reply brief.
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`The Record
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`By rule, the record includes applicants’ application
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`file and the pleadings. Trademark Rule 2.122(b), 37 CFR
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`§2.122(b).
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`I. Opposer’s Evidence
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`Opposer introduced the following testimony of its
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`employees and the following evidence during its testimony
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`period:
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`1. The testimony deposition of Jaime Schwartz, Assistant
`General Counsel, with attached exhibits Nos. 1-11.
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`2. The testimony deposition of Melanie Sedler, Trademark
`Paralegal, with attached exhibits Nos. 12-27.
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`3. The testimony deposition of Jessica Shell, Trademark
`Paralegal, with attached exhibits Nos. 28-32.
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`4. The testimony deposition of Mark Thomashow, Global
`Director, Business Affairs.
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`Opposer also filed notices of reliance on certified
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`copies of its pleaded registrations prepared by the USPTO
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`showing the current status of and title to the
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`4
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`Opposition No. 91188789
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`registrations; applicants’ answers to opposer’s first set of
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`interrogatories, requests for admissions, and requests for
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`production of documents and things;2 and newspaper and other
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`periodical articles divided by year, starting with 1989 and
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`continuing through 2010, purporting to show the fame of
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`opposer’s mark.
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`II. Applicants’ Evidence
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`During their testimony period, applicants filed a
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`notice of reliance on certified copies of five third-party
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`registrations showing the current status of and title to the
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`registrations. Applicants did not introduce any testimony.
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`Evidentiary Objections
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`Opposer objected to the introduction of one of the
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`third-party registrations introduced by applicants on
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`grounds that it has been cancelled.3
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`While a cancelled registration “does not provide
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`constructive notice of anything,” Action Temporary Services
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`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.
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`5
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`Opposition No. 91188789
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`Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307,
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`1309 (Fed. Cir. 1989), it is admissible under 37 C.F.R. §
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`2.122(e) as an official record. In addition, third-party
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`registrations may be used to indicate that a commonly
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`registered element has a suggestive meaning. Spoons
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`Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740
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`(TTAB 1991), aff’d unpub’d, No. 92-1086 (Fed. Cir. June 5,
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`1992). To the extent the registrations, including the
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`cancelled registration, have been offered for the purpose of
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`showing the suggestive nature of any commonly registered
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`element, we have considered them for whatever probative
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`value they may have.4
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`Standing and Priority
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`Because opposer has properly made of record certified
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`copies of its pleaded registrations, opposer has established
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`its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
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`55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
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`Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
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`(CCPA 1982). Moreover, priority of use for Section 2(d)
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`purposes is not an issue in this proceeding. King Candy Co.
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`v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
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`110 (CCPA 1974).
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`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.
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`Opposition No. 91188789
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`In addition, the evidence establishes opposer’s use of
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`its registered mark from at least as early as 1989,5 which
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`predates the earliest date upon which applicants may rely
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`(August 5, 2008, the filing date of their application), as
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`applicants have not yet commenced actual use of their mark.6
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`Likelihood of Confusion
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`Opposer contends that applicants’ mark is likely to
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`cause confusion among consumers under Trademark Act § 2(d),
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`15 U.S.C. § 1052(d). Our determination as to whether there
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`is a likelihood of confusion is based on an analysis of all
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`of the probative facts in evidence that are relevant to the
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`factors bearing on the issue of likelihood of confusion. In
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`re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
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`563, 567 (CCPA 1973). See also, In re Majestic Distilling
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`Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
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`Cir. 2003). In this case, the facts in evidence bear on the
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`following factors: fame of opposer’s mark, the similarity
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`between the marks, the identity of the goods and relatedness
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`of trade channels, and the classes of purchasers.
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`5 Thomashow Dec., pp. 14-15.
`6 Applicants’ Brief, p. 1; Opposer’s Second Notice of Reliance,
`Ex. 4.
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`7
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`Opposition No. 91188789
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`I. Fame of Opposer’s Mark
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`Applicants have admitted that opposer’s mark is famous
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`for likelihood of confusion purposes.7 Lacoste Alligator
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`S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB
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`2009)(admission that plaintiff’s mark is famous sufficient
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`for likelihood of confusion purposes). Moreover, we have
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`found opposer’s mark famous for dilution purposes. See
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`discussion infra. In view of the foregoing, we find that
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`opposer’s mark is famous for likelihood of confusion
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`purposes. See Palm Bay Imports Inc. v. Veuve Clicquot
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`Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1694 (Fed.
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`Cir. 2005); Cf. Coach Services Inc. v. Triumph Learning LLC,
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`96 USPQ2d 1600, 1610 (TTAB 2010) (“Fame for dilution
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`requires a more stringent showing.”).
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`This factor strongly favors opposer.
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`II. The Similarity or Dissimilarity and Nature of the Goods;
`The Similarity or Dissimilarity of Likely-To-Continue Trade
`Channels and Classes of Consumers.
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`Applicants have applied to register their mark for
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`various articles of clothing, including “hats and caps,”
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`“hooded sweat shirts,” “short-sleeved or long-sleeved t-
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`shirts,” and “sweat shirts.” Opposer’s Reg. No. 1875307
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`covers “t-shirts,” “sweatshirts,” and “caps.” The goods are
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`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.”
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`8
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`Opposition No. 91188789
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`identical in part. Moreover, both applicants’ and opposer’s
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`clothing are broadly identified without any restrictions or
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`limitations as to the type of clothing (with the exception
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`that applicants’ description of t-shirts excludes sleeveless
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`t-shirts), channels of trade or classes of consumers.
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`Therefore, we must assume that both applicants’ and
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`opposer’s clothing encompass all types of shirts, caps, t-
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`shirts (except sleeveless) and sweat shirts, and that they
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`are sold in the same channels of trade and to the same
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`classes of consumers. See Genesco Inc. v. Martz, 66 USPQ2d
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`1260 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d 1531,
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`1532 (TTAB 1994) (“Because the goods are legally identical,
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`they must be presumed to travel in the same channels of
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`trade, and be sold to the same class of purchasers.”).
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`This factor favors opposer.
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`III. Similarity of the Marks
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`We now consider the similarity of the marks, comparing
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`the marks in their entireties as to appearance, sound,
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`connotation and commercial impression in order to determine
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`the similarity or dissimilarity between them. Palm Bay
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`Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
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`1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
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`Because opposer’s mark is famous, it enjoys a wide latitude
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`of protection, and the degree of similarity between the
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`9
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`Opposition No. 91188789
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`marks necessary to support a conclusion of likely confusion
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`declines. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
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`1303, 1305 (Fed. Cir. 2002). The degree of similarity
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`required is also lessened in this case because the goods are
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`identical in part. Century 21 Real Estate Corp. v. Century
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`Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.
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`Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-
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`Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen
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`Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
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`With these principles in mind, we consider the marks,
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`not as they would compare if subjected to a side-by-side
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`comparison, but rather in terms of whether the marks are
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`sufficiently similar in their overall commercial impression
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`so that confusion as to the source of the goods offered
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`under the respective marks is likely to result. See San
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`Fernando Electric Mfg. Co. v. JFD Electronics Components
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`Corp., 565 F.2d 683, 196 USPQ 1,3 (CCPA 1977); Spoons
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`Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
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`(TTAB 1991), aff’d unpub’d, No. 92-1086 (Fed. Cir. June 5,
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`1992).
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`We find that the marks are similar in their overall
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`appearance. Both applicants’ and opposer’s marks start and
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`end with the same words “just” and “it.” Both are only
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`three words long. This gives the marks a similar look. As
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`10
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`Opposition No. 91188789
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`to pronunciation, the second term in applicants’ mark ends
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`in the vowel “u,” as does the middle word in opposer’s mark:
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`“do,” and both marks start and end with the same word, thus
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`the same sounds: JUST and IT. Applicants’ mark may be
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`pronounced “Just Jesuit,” varying only slightly the cadence
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`of opposer’s mark. In meaning, opposer has shown that its
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`mark has been viewed as a “battle cry.”8 The meaning of
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`applicants’ mark is ambiguous, not just as a three-term
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`phrase with a middle term that evokes “Jesus” (but appears
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`not to be itself an English word), but even when that middle
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`term “Jesu” is combined with “it” to form the word “Jesuit.”
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`Despite this ambiguity in the meaning of applicants’ mark,
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`the overall commercial impression of the parties’ marks is
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`similar because given the fame of opposer’s mark, the public
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`is likely to view applicants’ mark as similarly being a call
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`to action, even though it is unclear what action is being
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`urged. “[A] purchaser is less likely to perceive
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`differences from a famous mark.” B.V.D. Licensing v. Body
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`Action Design, 846 F.2d 727, 730, 6 USPQ2d 1719, 1722 (Fed.
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`Cir. 1988)(Nies, J., dissenting)(emphasis in original), and
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`quoted with approval in Kenner Parker Toys Inc. v. Rose Arts
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`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.”
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`11
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`Opposition No. 91188789
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`Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
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`Cir. 1992).
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`Thus, despite the potential differences in meaning,
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`given the fame of opposer’s mark and the similarity of
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`appearance, pronunciation and overall commercial
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`impressions, we find the marks to be similar for likelihood
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`of confusion purposes.
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`Applicants argue that the marks are dissimilar in
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`appearance because their mark is to be used in conjunction
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`with a “crown of thorns.” This argument is unavailing. The
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`issue of likelihood of confusion must be decided based upon
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`a comparison of applicants’ mark as set forth in the
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`application and the cited registrations, and not upon a
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`comparison of applicants’ mark as it may appear on the
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`goods. See Ultracashmere House Ltd. v. Springs Mills Inc.,
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`4 USPQ2d 1252, 1254 (Fed. Cir. 1987).
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`To the extent applicants argue that their mark is a
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`protected parody, we note that parody is not a defense if
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`the marks would otherwise be considered confusingly similar.
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`See, e.g., Starbucks U.S. Brands, LLC and Starbucks
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`Corporation D.B.A. Starbucks Coffee Company v. Marshall S.
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`Ruben, 78 USPQ2d 1741, 1754 (TTAB 2006); Columbia Pictures
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`Industries, Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981)
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`(“The right of the public to use words in the English
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`12
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`Opposition No. 91188789
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`language in a humorous and parodic manner does not extend to
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`use of such words as trademarks if such use conflicts with
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`the prior use and/or registration of the substantially same
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`mark by another.”).
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`In this regard, we do not see, nor do applicants
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`explain, how JUST JESU IT parodies JUST DO IT. Thus, where,
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`as here, a defendant appropriates a trademarked symbol such
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`as a word or picture, not to parody the product or company
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`symbolized by the trademark, but only as a prominent means
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`to promote, satirize or poke fun at religion or religious
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`themes,9 this is not “parody” of a trademark. See Elvis
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`Presley Enterprises Inc. v. Capece, 141 F.3d 188, 46 USPQ2d
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`1737, 1745-46 (5th Cir. 1998); Dr. Seuss Enterprises L.P. v.
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`Penguin Books USA, Inc., 109 F.3d 1394, 42 USPQ2d 1184 (9th
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`Cir. 1977).
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`This factor weighs in opposer’s favor.
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`IV. Balancing the factors
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`Opposer’s famous mark, JUST DO IT, is entitled to a
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`wide scope of protection. See, e.g., Bose Corp. v. QSC
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`Audio Prod.’s Inc., 63 USPQ2d 1303, 1309 (Fed. Cir. 2002);
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`Recot Inc. v. M.C. Becton, 54 USPQ2d 1894, 1897 (Fed. Cir.
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`2000)(“Famous marks are accorded more protection precisely
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`9 Applicants state their intent is to sell “humorous Jesus-themed
`t-shirts and sweatshirts and other apparel….” Applicants’ Brief,
`p. 1.
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`13
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`Opposition No. 91188789
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`because they are more likely to be remembered and associated
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`in the public mind than a weaker mark.”) The goods involved
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`are identical in part and are presumed to travel through the
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`same trade channels and be purchased by the same classes of
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`consumers. The marks are similar in their entireties,
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`giving due weight to their appearances, sound, meaning and
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`commercial impressions. In view of the foregoing, we find
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`that applicants’ mark JUST JESU IT is likely to cause
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`confusion with opposer’s mark JUST DO IT.
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`Although we have found sufficient basis for refusing
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`registration to applicants on this ground, for the sake
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`of completeness, we proceed to consider opposer’s dilution
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`claim, including consideration of opposer’s claim that its
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`mark JUST DO IT is not merely famous for our likelihood of
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`confusion analysis but also sufficiently famous to warrant
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`protection from dilution.
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`Dilution by Blurring
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`Opposer contends that applicants’ mark will dilute
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`opposer’s famous JUST DO IT mark under the Trademark
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`Dilution Revision Act of 2006 (“TDRA”), Trademark Act §
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`43(c), 15 U.S.C. § 1125(c), by blurring its distinctiveness.
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`Dilution by blurring is an “association arising from the
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`similarity between a mark or trade name and a famous mark
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`that impairs the distinctiveness of the famous mark,” 15
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`14
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`Opposition No. 91188789
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`U.S.C. §1125(c)(2)(B), and may be found “regardless of the
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`presence or absence of actual or likely confusion, of
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`competition, or of actual economic injury,” 15 U.S.C.
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`§1125(c)(1).
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`“When an application to register a mark is challenged
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`on grounds of dilution [by blurring], we look to three
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`elements: (1) whether the opposer’s mark is famous; (2)
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`whether the opposer’s mark became famous prior to the date
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`of the application to register the applicant’s mark; and (3)
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`whether the applicant’s mark is likely to blur the
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`distinctiveness of the opposer’s famous mark.” National
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`Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d
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`1479, 1494-5 (TTAB 2010).
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`I. Fame of Opposer’s JUST DO IT Mark
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`We first turn to the factor of fame. A mark is defined
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`under §1125(c)(2)(A) as “famous” for dilution purposes -
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`… 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:
`
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`(i) The duration, extent, and geographic
`reach of advertising and publicity of
`the mark, whether advertised or
`publicized by the owner or third
`parties.
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`Opposition No. 91188789
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`(ii) The amount, volume, and geographic
`extent of sales of goods or services
`offered under the mark.
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`(iii) The extent of actual recognition
`of the mark.
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`(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.
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`As noted supra, applicants have admitted that opposer’s
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`mark is famous for likelihood of confusion purposes.10 Even
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`under the “higher and more rigorous standard for dilution
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`fame required under the FTDA [Federal Trademark Dilution
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`Act],” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
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`Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
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`(Fed. Cir. 2005), applicants have admitted the fame of
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`opposer’s mark. Applicants answered opposer’s interrogatory
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`No. 13 regarding applicants’ awareness of the mark JUST DO
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`IT with the response: “Who isn’t aware of Opposer’s Mark?
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`At least in the free world.” Applicants also answered
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`opposer’s request for production of documents regarding when
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`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