IP Law Daily, TRADEMARK—TTAB: JUST DREW IT! refused registration for athletic apparel, (May 12, 2020)

By Joseph Arshawsky, J.D.

Registration and use of the JUST DREW IT! mark would be likely to cause confusion with and dilute Nike’s JUST DO IT mark.

An opposition by Nike, Inc., to an application to register the mark JUST DREW IT! for athletic apparel has been sustained by the Trademark Trial and Appeal Board. The Board determined that the applied-for mark was likely to cause consumer confusion with Nike’s mark JUST DO IT and was likely to dilute Nike’s mark by blurring (Nike, Inc. v. Caldwell, April 28, 2020, Zervas, A.).

Jamin Caldwell and Courtney Miles (collectively, "Caldwell"), applied to register the standard character mark, JUST DREW IT! for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms" in International Class 25. As grounds for opposition, Nike alleged that Caldwell’s mark is likely to cause confusion with, and dilute (by blurring), Nike’s mark JUST DO IT. Nike asserted that its mark became famous prior to the filing date of the application for Caldwell’s mark and prior to any use or any use in commerce by Caldwell of Caldwell’s mark, JUST DREW IT!, as a trademark, service mark, or trade name. The TTAB granted Nike’s opposition and refused registration of Caldwell’s marks

Fame of JUST DO IT mark. Caldwell admitted that Nike’s JUST DO IT trademark is "famous within the meaning of Lanham Act Section 43(c), 15 USC § 1125(c)." That is the section of the Lanham Act which defines "fame" for purposes of dilution claims. This admission as to dilution fame also establishes that Nike’s JUST DO IT mark is strong and famous for purposes of Nike’s likelihood of confusion claim, and that the mark is entitled to a broad scope of protection against confusion. In fact, where fame exists, as it does here, it "plays a ‘dominant role in the process of balancing the DuPont factors,’ ... and ‘[f]amous marks thus enjoy a wide latitude of legal protection.’" The evidence established that JUST DO IT is not only famous for purposes of both of Nike’s claims, but exceedingly so. It is entitled to the highest level of protection against confusion. For the foregoing reasons, this factor weighs heavily in favor of finding a likelihood of confusion, the TTAB said.

Goods, channels of trade, classes of consumers, and purchasing conditions. Most of Caldwell’s and Nike’s goods as set forth in their identifications of goods in two registrations are identical in part, legally identical, or are encompassed by the other. As to trade channels and classes of purchasers, because the goods identified in the application and Nike’s registrations are in-part identical or legally identical, the TTAB presumed that the channels of trade and classes of purchasers are the same for such goods. Further, these are not the type of goods where ordinary consumers are likely to exercise great care in purchasing such inexpensive apparel. Indeed, such items may be subject to impulse purchases. These DuPont factors strongly weigh in favor of finding a likelihood of confusion, in the TTAB’s view.

Similarity of the marks. The TTAB initially noted that because some of the goods are identical or legally identical, the marks need not be as close as would be necessary if there were a disparity between the goods. Nike’s mark JUST DO IT and Caldwell’s mark JUST DREW IT! each consist of three short words, beginning with JUST and ending with IT. They are both nonspecific as to what the IT, the thing to be done or drawn, may be. Caldwell states that IT refers to a drawing or work of art. IT, in Nike’s mark, being equally indefinite, can also refer to a drawing or work of art (meaning, just do the drawing or work of art). Nike’s mark is in standard character and typed form, and Caldwell’s mark is in standard character form. They hence could be displayed in the same font or size. Caldwell’s mark includes an exclamation point, which is not in Nike’s mark, but The exclamation point does not help distinguish the marks, the TTAB said. While DO and DREW look different, their meanings and sound are not necessarily significantly different. When compared in their entireties, the TTAB found that the marks are more similar than dissimilar. This similarity is particularly significant in this case given how famous and strong Nike’s mark is.

Likelihood of confusion. All of the DuPont factors about which there is evidence weigh in favor of finding a likelihood of confusion, the TTAB said. Indeed, Nike’s mark enjoys the highest level of fame and broadest scope of protection, the marks are similar, the goods are identical, overlapping or otherwise highly related, and the trade channels and classes of consumers are identical. Further, at least some of the parties’ goods may be purchased on impulse. The TTAB concluded that confusion is likely.

Dilution. Nike alleged dilution by blurring. As discussed above, Nike has established and Caldwell conceded that Nike is the owner of a famous mark under Section 43(c). Because Nike may rely on the filing date of Caldwell’s application as Caldwell’s constructive use date, this second element is satisfied. For the reasons stated in connection with Nike’s likelihood of confusion claim, the marks are similar. As a result of the marks’ similarity, and especially their structure and cadence, Caldwell’s mark will cause consumers to "conjure up" Nike’s famous mark, and "associate the two." In any event, "[e]ven if the mark is not viewed as inherently distinctive, we found above that the mark is famous, which necessarily subsumes a finding that the mark has high acquired distinctiveness. This factor favors a likelihood of dilution." Nike produced evidence to establish "substantially exclusive use," which also weighs in favor of finding a likelihood of dilution, the TTAB said. As the TTAB had previously held based on a partially identical record, "JUST DO IT is one of the most famous advertising slogans created," and it enjoys a "broad spectrum of public recognition." The evidence in this case establishes that this remains true today and that JUST DO IT enjoys the highest "level of fame." Because all of the factors weigh in favor of finding a likelihood of dilution or are neutral, the TTAB decided that dilution is likely.

The case is Opposition No. 91240394.

Attorneys: Helen Hill Minsker and Audra C. Eiden Heinze (Banner & Witcoff, Ltd.) for Nike, Inc. Jamin Caldwell and Courtney Miles, pro se.

Companies: Nike, Inc.

Cases: Trademark GCNNews USPTO