IP Law Daily, TRADEMARK—TTAB: Nike successfully challenges ‘JUST DON IT!’ mark for face masks, (May 3, 2023)

By Brian Craig, J.D.

The applied-for “JUST DON IT!” mark is likely to dilute Nike’s famous “Just Do It” mark.

Concluding that the proposed mark “JUST DON IT!” for face masks is likely to dilute Nike’s famous “JUST DO IT” mark, the Trademark Trial and Appeal Board has sustained Nike’s opposition to registration of the proposed mark. While the Board found that no likelihood of confusion exists between the two marks based on the relevant factors, the Board sustained the opposition based on dilution by blurring an existing famous mark. Nike demonstrated that its “JUST DO IT” mark is famous, that its mark became famous before the filing date of the proposed mark, and that an association exists between the competing marks that would impair the distinctiveness of Nike’s famous mark (Nike, Inc. v. DeRicco, April 14, 2023, Bergsman, M.).

An individual applied to register on the Principal Register the mark JUST DON IT! in standard characters for face masks for use by dental care providers and health care providers, in International Class 10. Nike filed an opposition based on its existing mark of JUST DO IT. Nike owns registrations in various classes of the JUST DO IT mark. Nike argued that the proposed mark is likely to cause confusion and will dilute its famous mark.

Likelihood of confusion. The Board first analyzed whether the proposed mark will likely cause confusion among consumers based on the relevant factors. Nike’s JUST DO IT mark is inherently or conceptually strong, and it is commercially strong. The factor concerning similarity or dissimilarity of the marks also supports a likelihood of confusion because the similarities outweigh the difference, especially because Nike’s mark has a high degree of public recognition and renown. But the factors concerning the similarity or dissimilarity and nature of the goods and conditions of sale weigh against a likelihood of confusion. Nike failed to meet its burden of proving that the goods and services at issue are related and that they are offered in the same channels of trade to the same classes of consumers. The overlapping consumers are dentists and health care providers who exercise a high degree of consumer care when purchasing face masks for medical purposes. Weighing the relevant factors, the Board concluded that no likelihood of confusion exists.

Dilution. The Board concluded, however, that the proposed mark is likely to cause dilution of Nike’s famous JUST DO IT mark. In examining whether the proposed mark is likely to cause dilution by blurring, the Board looked at the relevant factors. The applicant intended to create an association with Nike’s JUST DO IT mark because the applicant was aware of Nike’s mark when he adopted JUST DON IT! The marks are sufficiently similar that an association between them is established. Nike’s mark is inherently distinctive and the degree of public recognition of the mark is extremely high. There is a high degree of similarity between the two marks. Upon encountering the applicant’s mark, consumers will immediately be reminded of Nike’s JUST DO IT mark and associate the applicant’s mark with Nike’s mark. Nike engages in substantially exclusive use of its mark, policing unauthorized uses of its mark and refusing permission to use it to all who ask. Nike demonstrated that its JUST DO IT mark is famous. Nike’s mark also became famous prior to the filing date of the application for the JUST DON IT! mark. While there does not appear to be an actual association between the marks, this factor does not outweigh the other dilution factors. Weighing the relevant factors, the Board concluded that the proposed mark would cause dilution by blurring. Therefore, the Board sustained Nike’s objection.

The Case is Opposition No. 91269468.

Attorneys: Helen Hill Minsker (Arnold & Porter Kaye Scholer, LLP) for Nike, Inc. Salvatore Dericco, pro se.

Companies: Nike, Inc.

Cases: Trademark USPTO GCNNews