IP Law Daily, TRADEMARK—TTAB: Opposition sustained over diluting effect of DON’T JUST DO IT, GET IT DONE mark to Nike’s JUST DO IT mark, (Jun 6, 2024)

By Kevin M. Finson

Registration of the proposed mark DON’T JUST DO IT, GET IT DONE was denied because it was likely to be confused with and dilute Nike’s famous JUST DO IT mark.

An individual could not register the proposed mark DON’T JUST DO IT, GET IT DONE because the ark was likely to date and cause confusion with Nike’s famous mark JUST DO IT, the Trademark Trial and Appeal Board has held in sustaining Nike’s opposition to the subject application. The marks were similar, the goods identical, and Nike’s mark was famous to a remarkable degree (Nike, Inc. v. Lorenzo, Opposition No. 91286066 (TTAB May 21, 2024)).

Barbara Lorenzo sought registration on the Principal Register of the standard character mark DON’T JUST DO IT, GET IT DONE for a variety of clothing-related goods in International Class 25. Nike, Inc. (Nike) opposed registration on the ground of likelihood of confusion and dilution by blurring of its registered marks JUST DO IT for clothing in International Class 25.

Likelihood of confusion. Reviewing the DuPont factors, the Board found that the Nike’s mark was conceptually strong because it was arbitrary and that it possessed an extraordinary level of commercial success, with evidence that Nike was the largest seller of athletic footwear and apparel in the world, with millions of dollars of advertising using the mark since 1989, and extensive evidence of unsolicited media attention. The identified goods were identical in part, so the channels of trade and classes of consumers were presumed identical. The marks were more similar than dissimilar because one subsumed the other and they conveyed a similar meaning. Balancing the factors, the Board held that there was a likelihood of confusion.

Dilution. The Board also found that Nike’s mark was famous for the same reasons as in the likelihood of confusion analysis, and that it had become famous well before Lorenzo obtained any rights in the mark. The marks were similar enough that Lorenzo’s mark would impair the distinctiveness of Nike’s famous mark for the same reasons discussed in the likelihood of confusion analysis. The Board held that this was sufficient to establish dilution by blurring.

The Board sustained the opposition.

The Case is Opposition No. 91286066.

Judge: Elgin, J.

Attorneys: Helen Hill Minsker (Arnold & Porter Kaye Scholer, LLP) for Nike, Inc. Mark Terry (Mark Terry, P.A.) for Barbara Lorenzo.

Companies: Nike, Inc.

Cases: Trademark USPTO