The TTAB sustained this opposition to registration of the
proposed mark JUST DREW IT! for athletic apparel,
finding a likelihood of confusion with, and likely dilution of,
Nike's famous mark JUST DO IT for clothing,
footwear, bags, and a variety of ancillary products. Pro se
Applicants Jamin Caldwell and Courtney Miles submitted no testimony
or evidence. Let's face, they never stood a chance. Nike, Inc. v. Jamin Caldwell and Courtney
Miles, Opposition No. 91240394 (April 28, 2020) [not
precedential] (Opinion by Judge Albert Zervas).
Fame:
The applicants admitted that Nike's JUST DO IT mark is
famous within the meaning of Lanham Act Section 43(a), the dilution
provision. Admission of dilution fame also means that the JUST DO
IT mark is strong and famous for likelihood-of-confusion purposes,
since dilution fame requires a stronger showing than Section 2(d)
fame. When fame is established under Section 2(d), it "plays
plays a 'dominant role in the process of balancing the
DuPont factors,' ... and '[f]amous marks thus
enjoy a wide latitude of legal protection.'"
Despite applicants' admission regarding fame, the Board
reviewed Nike's evidence of fame, concluding that JUST DO IT is
a household name or phrase. [In my household, when the Brat
Brothers would complain about doing their homework, I would say
"Just Do It!" - ed.]. The Board also noted that
it has previously found the mark famous on a similar record.
Nike Inc. v. Maher, 100 USPQ2d 1018, 1024-27 (TTAB 2011)
(JUST JESU IT). [That fact, I submit, should have no probative
value here since Applicants Jamin Caldwell and Courtney Miles were
not parties to that proceeding - ed.].
Likelihood of Confusion: The goods identified in
the opposed application overlapped with Nike's goods (shirts,
pants, hats and caps, etc.). The Board must presume that those
overlapping goods travel through the same trade channels to the
same classes of consumers. Moreover, there were no price
limitations on the goods, and these are the type of inexpensive
goods that are purchased without a great deal of care.
As to the marks, each consists of three short words, beginning with
JUST and ending with IT. Each is unspecific as to what the IT may
be. Applicants stated that IT may refer to a drawing or work of
art. The exclamation point at the end of applicant's mark does
not change the meaning or commercial impression.
Applicants pointed out that JUST in Nike's mark means
"to act without hesitation" while in their mark it means
"moments ago or recently." The Board, however, found that
these subtle differences do not detract from the overall similarity
in meaning, sound and commercial impression. The marks are more
similar than dissimilar, which is "particularly significant in
this case given how famous and strong Opposer's mark
is."
And so the Board concluded that confusion is likely and it
sustained the Section 2(d) claim.
Dilution by Blurring: Unlike its usual approach,
the Board proceeded to consider opposer's dilution claim even
though it had already found likelihood of confusion.
Applying the six factors under Section 43(c)(2)(B)(i-vi), the Board
found that applicant's mark will cause consumers to
"conjure up" Nike's famous mark. N.Y.
Yankees, 114 USPQ2d at 1507. The JUST DO IT mark is either
inherently distinctive or has high acquired distinctiveness. Nike
enforces its rights vigorously and has substantially exclusive use
of its mark. The JUST DO IT mark enjoys the highest level of fame.
The factors of applicants' intent and evidence of actual
association were neutral.
The Board concluded that "[a]ll of the factors weigh in favor
of finding a likelihood of dilution or are neutral. Therefore,
dilution is likely."
Article originally published on 12 May 2020
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