NIKE, Inc.v.John K. Muntean

Trademark Trial and Appeal BoardSep 10, 2020

91247956 (T.T.A.B. Sep. 10, 2020)

This Opinion is not a Precedent of the TTAB Mailed: September 10, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Nike, Inc. v. John K. Muntean ________ Opposition No. 91247956 _______ Helen Hill Minsker of Arnold & Porter Kaye Scholer LLP, for Nike, Inc. Todd Wengrovsky of the Law Offices of Todd Wengrovsky, PLLC, for John K. Muntean. _____ Before Shaw, Greenbaum and Lebow, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: John K. Muntean (“Applicant”), seeks to register the standard character mark “JUST BELIEVE IT.” for “Business consultation services for others in the field of fundraising; business consultation services to assist businesses, organizations and individuals in the planning, management and conducting of fundraising activities via Opposition No. 91247956 - 2 - the sale of new and recycled products, namely, apparel, pens, decals, stickers, home goods, and other fundraising products,” in International Class 35.1 In its Notice of Opposition,2 Opposer Nike, Inc. alleges prior use of “the JUST DO IT Mark as a slogan in highly successful advertising and promotional campaigns over the course of many years.”3 Opposer pleaded ownership of registrations for JUST DO IT for clothing,4 footwear and bags,5 and ancillary products such as eyeglass frames,6 cell phone cases,7 bottles sold empty,8 and retail store services.9 As grounds for opposition, Opposer alleges that Applicant’s mark is likely to cause confusion with, 1 Application Serial No. 87888720, filed April 23, 2018 pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s bona fide intention to use the mark in commerce. 2 1 TTABVUE. 3 Id. at 7. Opposer has registered both “JUST DO IT.” and “JUST DO IT”, that is, with and without a period after the mark. We refer to Opposer’s marks collectively as the “JUST DO IT mark”. 4 Registration No. 1875307, issued January 24, 1995; renewed. This registration is for “clothing, namely t-shirts, sweatshirts and caps.” 5 Registration No. 4764071, issued June 30, 2015. This registration is for “footwear; headbands; headwear; pants; shorts; sports bras; tank tops; tights; warm up suits” and “all purpose sport bags; backpacks.” 6 Registration No. 4350316, issued June 11, 2013; Section 8 Affidavit accepted, Section 15 Affidavit acknowledged. This registration is for “eyeglass frames; sunglasses.” 7 Registration No. 4704671, issued March 17, 2015. This registration is for “Cell phone cases; parts and accessories for cell phones, namely, cell phone covers; specialty carrying cases for cell phones; cases for hand-held computing devices; protective covers for hand-held computing devices; eyewear; sunglasses.” 8 Registration No. 4902036, issued February 16, 2016. This registration is for “Bottles, sold empty.” 9 Registration No. 5727940, issued April 16, 2019. This registration is for “Retail store services and on-line retail store services featuring apparel, apparel accessories, footwear, footwear accessories, headwear, eyewear and accessories, sporting goods and equipment, bags, sports bags, sports and fitness products and accessories.” Opposition No. 91247956 - 3 - and dilute (by blurring), Opposer’s famous mark. In his Answer, Applicant denied key allegations in the Notice of Opposition but admitted the following:10 1. Opposer is a leading provider of a broad range of clothing, footwear, accessories, equipment, and other products and services relating to sports, fitness, lifestyle and fashion. 2. Opposer is the owner of rights granted via federal registrations and common law rights for the marks “JUST DO IT.” and “JUST DO IT” (collectively the “JUST DO IT Mark”). 24. Opposer’s use and registration of its JUST DO IT Mark is long prior to the filing date of the opposed Application. 25. On information and belief, Applicant was aware of Opposer’s JUST DO IT Mark at the time that Applicant filed his application. Opposer and Applicant filed briefs on the case and Opposer filed a reply brief. We sustain the Opposition on both pleaded grounds. I. The Record The parties filed a joint stipulation to have this case decided by the accelerated case resolution (“ACR”) procedure discussed in Section 702.04 of the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) (June 2020).11 The parties’ stipulation provides for, inter alia: all witness testimony via affidavit or declaration, with exhibits attached thereto; waiver of expert testimony; use of the Board summary judgment format in lieu of trial with evidence submitted five days prior to briefs; main briefs limited to twenty-five pages, and a rebuttal brief limited 10 8 TTABVUE 2-5. 11 15 TTABVUE. Opposition No. 91247956 - 4 - to ten pages; and consent for the Board to resolve all disputed issues of material fact and to render a final decision based on the pleadings, stipulated facts, briefs, and evidence. The record consists of the pleadings; the TSDR records submitted with Opposer’s Notice of Opposition for each of Opposer’s pleaded registrations showing active status and title in Opposer pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1); and the file of Applicant’s involved application, by operation of Trademark Rule 2.122(b). Additionally, Opposer submitted the following evidence: 1. Opposer’s Notice of Reliance (“Opposer’s NOR”) on printed publications and Internet printouts. 17-18 TTABVUE; 2. Testimony Declaration of Jennifer Reynolds, Opposer’s Assistant General Counsel, and exhibits (“Reynolds Decl.”). 19 TTABVUE; 3. Testimony Declaration of Melanie Sedler, Opposer’s Senior Trademark Paralegal, and exhibits (“Sedler Decl.”). 20 and 23 TTABVUE; 4. Testimony Declaration of Timothy J. Haugh, a Senior Litigation Paralegal with Opposer ’s former law firm, and exhibits (“Haugh Decl.”). 21-22 TTABVUE; and 5. Opposer’s Second Notice of Reliance in rebuttal to Applicant’s notice of reliance (“Opposer’s Rebuttal NOR”) on current status and title copies of third- party registrations from TSDR, and copies of Board decisions in other opposition and cancellation proceedings. 28 TTABVUE. Applicant submitted the following evidence: 1. Testimony Declaration of Applicant, John Muntean. (“Muntean Decl.”). 25 TTABVUE; and Opposition No. 91247956 - 5 - 2. Notice of Reliance (“Applicant’s NOR”) on copies of thirteen third-party registration certificates for marks that begin with “JUST” and end with “IT”. 26 TTABVUE.12 II. Entitlement to Statutory Cause of Action for Opposition13 To establish entitlement to a statutory cause of action under Sections 13 or 14 of the Trademark Act, such as a cause of action for abandonment, a plaintiff must demonstrate a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Opposer has established its entitlement to bring this proceeding because it has a “real interest” and a “reasonable belief of damage.” Australian Therapeutic, 2020 12 In his brief, Applicant states that “[t]he file histories for [Opposer’s] marks are of record by Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).” This is incorrect. Absent a counterclaim, the file histories of Opposer’s pleaded registrations are not the subject of this proceeding and are not of record, except as otherwise made of record by one of the parties. See TBMP § 704.03(b)(1)(A). Applicant also states that “Applicant has entered [copies of the thirteen third-party registrations] and the prosecution and file history therefor[.]” 27 TTABVUE 5-7. Opposer objects to Applicant’s characterization that the prosecution and file histories of the thirteen registrations are of record. 29 TTABVUE 9. Opposer is correct. The prosecution and file histories of the thirteen registrations are not of record and we have not considered them. See TBMP § 704.03(b)(1)(B). 13 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125- 26 (2014), we now refer to this inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. Opposition No. 91247956 - 6 - USPQ2d 10837 at *4. Specifically, with its notice of opposition, Opposer submitted status and title copies of its pleaded registrations for the JUST DO IT mark showing its ownership and those registrations remain valid. This is sufficient to confer entitlement to a statutory cause of action. Primrose Ret. Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016) (standing established based on pleaded registration made of record). In addition, we note that Applicant does not dispute Opposer’s entitlement to bring this opposition. III. Priority Because Applicant has not counterclaimed to cancel any of Opposer’s pleaded registrations, priority is not at issue with respect to the mark and goods or services identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). In any event, Applicant has admitted that “Opposer’s use and registration of its JUST DO IT Mark is long prior to the filing date of the opposed Application.”14 IV. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities 14 Notice of Opposition, ¶ 24, 1 TTABVUE 10; Answer, ¶ 24, 8 TTABVUE 5. Opposition No. 91247956 - 7 - between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks.”). Opposer bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 26 USPQ2d 1912, 1918 (Fed. Cir. 1993) (“The challenger’s burden of proof in both opposition and cancellation proceedings is a preponderance of the evidence.”). A. The Fame of Opposer’s Mark We first address the alleged fame of Opposer’s JUST DO IT mark. Fame, when present, plays a dominant role in a likelihood of confusion analysis because of the broad scope of protection afforded famous or strong marks. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002), Famous marks “enjoy a wide latitude of legal protection.” Id. (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). A strong mark “casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame “may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident.” Bose, 63 USPQ2d at 1305. While consumer surveys may provide direct evidence of fame, they are not necessary; indeed, they “rarely appear.” Id. Other relevant factors include Opposition No. 91247956 - 8 - “length of use of the mark, market share, brand awareness, licensing activities, and variety of goods bearing the mark.” Coach Servs., 101 USPQ2d at 1720. Applicant admits that it “does not dispute that Opposer’s ‘JUST DO IT’ mark is famous.”15 Nevertheless, because it is Opposer’s burden to establish the fame of its JUST DO IT mark, some perspective is in order as we consider whether there is a likelihood of confusion, because “likelihood of confusion fame ‘varies along a spectrum from very strong to very weak.’” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). It would be an understatement to deem Opposer ’s JUST DO IT mark merely “very strong.” JUST DO IT is a very famous slogan, and so strong that AdAge magazine deemed it the first runner-up to “Diamonds Are Forever” as the 20th century’s “Top 10 Slogans.”16 The Center for Applied Research conducted a case study on Opposer’s pleaded mark—which it described as “one of the most famous and easily recognized slogans in advertising history”—and found that “[t]he Nike brand has become so strong as to place it in the rarified air of recession-proof consumer branded giants, in the company of Coca-Cola, Gillette and Proctor & Gamble.”17 A third party’s 1999 “Historic Events” survey asked 1,000 respondents which company uses the 15 Applicant’s Br., p. 9, 27 TTABVUE 10. 16 Haugh Decl. ¶ 16 and Exh. D-15, 21 TTABVUE 7-8, 271-75. 17 Reynolds Decl. ¶ 20 and Exh. B-2, 19 TTABVUE 6, 23-26. Opposition No. 91247956 - 9 - “advertising slogan ‘Just Do It’,” and 79% correctly identified Opposer.18 Opposer’s JUST DO IT ads have featured, among many others, Michael Jordan, Bo Jackson, Carl Lewis, Pete Sampras, Tiger Woods, LeBron James, Serena Williams, and Colin Kaepernick.19 Opposer uses JUST DO IT on Facebook, where it has over thirty-three million followers; Twitter, where it has eight million followers; and Instagram, where it has seventy-six million followers.20 Since 2008, Opposer has spent over $200 million advertising the JUST DO IT mark in the United States.21 In addition, the following excerpts from printed publications reveal public perceptions concerning the strength of Opposer’s pleaded mark:22  “Nike’s ‘Just Do It’ slogan, unveiled 25 years ago this month by Wieden + Kennedy, might be the last great tagline in advertising history.” Gianatasio, David, Nike’s ‘Just Do It,’ the Last Great Advertising Slogan, AdWeek, July 2, 2013. 21 TTABVUE 10, 303-15, Haugh Decl. ¶ 25, Exh. D-24.  “Just Do It. Those three little words have inspired a whole host of people the world over to do just that. They compete. They work. They hustle. They just do it. That phrase, which has come to be synonymous with success, with strength, with perseverance, is Nike’s brand.” Wright, Meghan, Just Do It: Nike ’s Marketing Strategy and How They’re Getting it Done, Advat, May 28, 2015. 21 TTABVUE 9, 331-39, Haugh Decl. ¶ 28, Exh. D-27.  “Nike’s ‘Just Do It’ phrase is one of the most globally recognized slogans and a powerful distillation of the 18 Id. at ¶ 21 and Exh. B-3, 19 TTABVUE 7, 27-33. 19 Sedler Decl. ¶ 22, 20 TTABVUE 8. 20 Id. at ¶¶ 38-40, 20 TTABVUE 18-19. 21 Id. at ¶ 23, 20 TTABVUE 8. 22 We do not give weight to articles from foreign webpages. See, e.g., Haugh Decl. Exhs. D-25 and D-26, 21 TTABVUE 316-31. Opposition No. 91247956 - 10 - brand’s core values.” Dunne, Brendan, How ‘Just Do It’ Saved Nike, Sole Collector, August 17, 2015. 21 TTABVUE 11, 340-47, Haugh Decl. ¶ 29, Exh. D-28. The Board has previously found that Opposer ’s JUST DO IT mark is famous, on a similar record of fame. Nike Inc. v. Maher, 100 USPQ2d 1018, 1024-27 (TTAB 2011). This evidence establishes that JUST DO IT is not only famous for purposes of Opposer’s likelihood of confusion claim, 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. B. The number and nature of similar marks for similar goods and services We next address Applicant’s evidence and argument under the sixth DuPont factor, “[t]he number and nature of similar marks in use on similar goods [or services],” DuPont, 177 USPQ at 567, as this may impact the scope of protection accorded the cited registrations. The Federal Circuit has held that evidence of the extensive registration and use of similar marks by others in the field can be powerful evidence of a mark’s weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The strength of a mark may be assessed based on its conceptual strength arising out of the nature of the mark itself and its commercial strength, derived from the marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). Opposition No. 91247956 - 11 - Of course, because Opposer’s mark is registered, it is presumptively valid and distinctive for the identified goods and services. Trademark Act Sections 7(b) and 33(a), 15 U.S.C. §§ 1057(b) and 1115(a); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007). Nonetheless, we may acknowledge the weakness of a registered mark in the course of a DuPont analysis. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517-18 (TTAB 2016). Applicant argues that “many other marks that are closer to Opposer’s mark have been registered alongside Opposer’s mark without incident or harm.”23 Applicant points to thirteen marks that begin with “JUST” and end with “IT” that purportedly were registered during the active period of at least one of Opposer’s registrations. Applicant introduced copies of the registration certificates, and Opposer introduced status and title copies of the registrations.24 We do not find that the third-party registrations support Applicant’s case. Of the thirteen registrations relied on by Applicant, six have been cancelled. A cancelled registration is not evidence of anything except that it issued; any benefits conferred by the registration, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act were lost when the registration expired. “The existence of a cancelled registration—particularly one cancelled for failure to provide a declaration of continued use—does not tend to show that the cited mark is weak due to third-party use.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 23 Applicant’s Br., p. 9, 27 TTABVUE 10. 24 Applicant’s NOR, Exhs. A – M, 26 TTABVUE 10-31; Opposer’s Rebuttal NOR, Exhs. E-1 – E-13, 28 TTABVUE 10-57. Opposition No. 91247956 - 12 - 2018). Moreover, the fact that some now-cancelled marks may have registered without opposition from Opposer does not weaken Opposer’s JUST DO IT mark, particularly since Opposer has opposed or sought cancellation of numerous arguably similar marks.25 See McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899-1900 (TTAB 1989) (McDonalds’ failure to object to some other “MC” formative marks did not weaken its mark.). Nearly all of the remaining registrations are for unrelated goods or services such as construction services, residential building repair and maintenance services, or dyeing services, which are completely unrelated to either parties’ goods or services. As a result, these registrations have limited probative value in our consideration of the strength of Opposer’s JUST DO IT mark. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (third-party registrations relating to goods different from and unrelated to the goods at issue “cannot be indicative of descriptive or suggestive connotations”). Only one of the active third-party registrations is arguably for use on related goods: Registration No. 2439760, for the mark JUST BREW IT, registered for “clothing, namely, t-shirts.” But one such registration does not establish that JUST DO IT is weak. C. The Goods and Services, Channels of Trade, and Classes of Consumers As we consider the goods and services of the parties, we keep in mind that fame remains “a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods.” Recot, 54 USPQ2d at 1898. That is, 25 Reynolds Decl. ¶¶ 30–34, 19 TTABVUE 10-16. Opposition No. 91247956 - 13 - “when a product reaches the marketplace under a famous mark, special care is necessary to appreciate that products not closely related may nonetheless be confused as to source by the consumer because of the fame of the mark.” Bose, 63 USPQ2d at 1310. We also are mindful that the goods and services need not be identical or even competitive in order to find likelihood of confusion. Rather, the question is whether the goods or services are marketed in a manner that “could give rise to the mistaken belief that [they] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, 54 USPQ2d at 1898 (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007). Here, there is a strong relationship between Applicant’s services and Opposer’s goods and services. Applicant’s services include “business consultation services to assist businesses, organizations and individuals in the planning, management and conducting of fundraising activities via the sale of new and recycled products, namely, apparel, pens, decals, stickers, home goods, and other fundraising products .” Ostensibly, Applicant appears to be a business consultant, but the core of Applicant’s service is Opposition No. 91247956 - 14 - assisting others in raising funds through the sale of clothing and other products bearing the “JUST BELIEVE IT.” mark. Applicant explains that the ultimate goal of his services is to sell apparel and other goods:26 3. Specifically, I plan to market merchandise using my applied-for mark “JUST BELIEVE IT.” to Christians, Churches, and Christian Faith-Based Organizations for their internal fundraising purposes. 4. My marketing and fundraising campaign is to target Churches and Faith-Based organizations to help them raise funds for their individual causes through the purchase of apparel and other items that I develop, with portions of the proceeds that I receive going to faith-based organizations that I want to help. In essence, Applicant intends to sell “JUST BELIEVE IT.” branded goods to “businesses, organizations and individuals” that will then sell the goods as part of their charitable fund raising efforts. Opposer’s registrations cover a wide variety of clothing items, retail apparel store services, a variety of accessories, sports equipment, as well as other products and services relating to sports, fitness, lifestyle and fashion. Furthermore, while Opposer’s focus is on sports and physical fitness, it also uses JUST DO IT in connection with community initiatives and charitable causes, including on products, such as apparel, in supporting those initiatives. The Reynolds declaration states Opposer “not only uses the JUST DO IT mark on a variety of products, such as footwear, apparel, bumper stickers, keychains, water bottles, and hats, it also uses the JUST DO IT mark in connection with retail store services, community initiatives, 26 Muntean Decl., 25 TTABVUE 3. Opposition No. 91247956 - 15 - and other charitable causes.”27 Further, the Sedler declaration states Opposer is “involved in community initiatives and other programs to help people around the world reach their full potential. It partners with more than sixty organizations to create a positive impact in communities, such as Children Sport Foundation, Coaches Across Continents, Marathon Kids, MENTOR, Play International, and many more.”28 Based on the evidence of record, we find Applicant services and Opposer’s goods and services to be related inasmuch as they both encompass the sale of apparel. That is, Applicant’s services promote fundraising through the sale of clothing and “other fundraising products,” whereas Opposer is in the business of selling a wide variety of clothing articles and fitness accessories. Moreover, although the “other fundraising products” listed in Applicant’s identification of services are not defined, they certainly could include some of Opposer’s other products such as water bottles and hats.29 Applicant nevertheless argues that the goods and services of the parties are different. “Applicant is to offer business consultation services for others in the field of fundraising. Opposer’s mark is solidly based on consumer products, namely sneakers and clothing.”30 This argument is unpersuasive. The issue is not whether the goods and services are the same. As noted above, the issue is whether the goods and services are marketed in a manner that “could give rise to the mistaken belief that [they] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722. Given Opposer’s 27 Reynolds Decl. ¶ 44, 19 TTABVUE 18. 28 Sedler Decl. ¶ 8, 20 TTABVUE 5; see also Exh D-48 to Haugh Decl., 22 TTABVUE 169- 74. 29 Reynolds Decl. ¶ 44, 19 TTABVUE 18. 30 Applicant’s Br., p. 12, 27 TTABVUE 13. Opposition No. 91247956 - 16 - involvement with numerous “community initiatives, and other charitable causes,”31 and the fame of Opposer’s mark, it is possible that consumers familiar with Opposer’s goods and services could think that Applicant services were related. Bose, 63 USPQ2d at 1310 (“[P]roducts not closely related may nonetheless be confused as to source by the consumer because of the fame of the mark.”). Regarding channels of trade and classes of consumers, we base our determination regarding the similarities between the channels of trade and classes of purchasers on the goods and services as they are identified in the application and the cited registrations. Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Opposer’s registrations contain no restrictions on the channels of trade or classes of consumers. As a result, Opposer’s clothing and other goods are presumed to be sold in all normal trade channels to all the normal classes of purchasers. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017) (“In the absence of meaningful limitations in either the application or the cited registrations, the Board properly presumed that the goods travel through all usual channels of trade and are offered to all normal potential purchasers.”). Jennifer Reynolds testified that Opposer uses its JUST DO IT mark in connection with numerous community initiatives and charitable causes: “NIKE products, such as t-shirts, are often used in connection with its community initiatives and charitable causes.”32 As discussed 31 Reynolds Decl. ¶ 44, 19 TTABVUE 18. 32 Id. at ¶ 46, 19 TTABVUE 18. Opposition No. 91247956 - 17 - above, Applicant’s business consulting services are focused on the sale of clothing and other products bearing the “JUST BELIEVE IT.” mark. We find Applicant’s and Opposer’s channels of trade and classes of consumers to be related. Opposer has established that it participates in a number of community initiatives and charitable causes. Thus, Applicant’s classes of consumers— “businesses, organizations and individuals [seeking assistance] in the planning, management and conducting of fundraising activities”—and channels of trade would be related to Opposer’s classes of consumers and channels of trade involving its sale of goods in connection with its community initiatives and charitable causes. These DuPont factors strongly weigh in favor of finding a likelihood of confusion. D. Similarity of the Marks We turn next to the DuPont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746, quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, Opposition No. 91247956 - 18 - 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721). In addition, “[b]ecause Opposer’s mark is famous, it enjoys a wide latitude of protection, and the degree of similarity between the marks necessary to support a conclusion of likely confusion declines.” Maher, 100 USPQ2d at 1022 (citing Bose, 63 USPQ2d at 1305). Applicant argues that the presence of the word BELIEVE in his mark creates “insufficient similarity in appearance, sound, connotation, and commercial impression to warrant denying Applicant’s mark registration”:33 The second word of Applicant’s mark, “BELIEVE” is completely different than the second word of Opposer’s mark, “DO.” The word “BELIEVE” starts with a different letter than Opposer’s second word, does not rhyme with Opposer’s second word, and, unlike Opposer’s second word, is two syllables. Moreover, “BELIEVE” and “DO” have two completely different connotations, and create two entirely different commercial impressions.34 Opposer argues that the marks are similar in appearance because they “start and end with the same words ‘just’ and ‘it,’ and both are ‘only three words long,’ which ‘gives the marks a similar look.’”35 In terms of meaning, Opposer argues that the marks are similar as well: “[t]he JUST DO IT mark reflects a ‘call to arms,’ encouraging consumers to follow through with their goals. Applicant’s JUST BELIEVE IT mark embodies that same ‘call to arms,’ encouraging others to “believe” in something.”36 33 Applicant’s Br., p. 9, 27 TTABVUE 10. 34 Id. 35 Opposer’s Br., p. 15, 24 TTABVUE 19, quoting Maher, 100 USPQ2d at 1022. 36 Id. Opposition No. 91247956 - 19 - We find that the marks are similar in their overall connotation and commercial impression. Opposer’s mark JUST DO IT and Applicant’s mark JUST BELIEVE IT. each consist of three words, beginning with JUST and ending with IT. They are comprised of only three or four syllables, respectively. They both take the form of hortatory commands, although they are both nonspecific as to what the IT, the action to be done or thing to be believed, may be. They both convey the idea of not thinking or hesitating too much, but instead simply following the command. Obviously DO and BELIEVE are different words and have different meanings, but action and belief are intertwined concepts, particularly in sports and religion. For example, one of Opposer’s recent advertising campaigns include a reference to the importance of belief in improving athletic performance and personal development. Opposer’s advertising campaign featuring former NFL player Colin Kaepernick included the exhortation “Believe in something. Even if it means sacrificing everything.”37 Applicant’s intention to use BELIEVE as part of a merchandising program directed to Christians, churches, and Christian faith-based organizations reflects the similar importance of belief in religion, also leading to spiritual or personal development. Despite the difference in meaning as to DO and BELIEVE in the parties’ marks, the overall connotation and commercial impression of the marks is similar because, given the fame of Opposer’s JUST DO IT mark, the public is likely to view Applicant’s mark as a related command. That is, action and belief are sufficiently related so that consumers could perceive that both JUST DO IT and “JUST BELIEVE IT.” are 37 Sedler Decl. ¶ 32, Exhs. C-17 and C-18, 20 TTABVUE 17, 83-105. Opposition No. 91247956 - 20 - affiliated with Opposer. “[A] purchaser is less likely to perceive differences from a famous mark.” B.V.D. Licensing v. Body Action Design, 846 F.2d 727, 730, 6 USPQ2d 1719, 1722 (Fed. Cir. 1988) (Nies, J., dissenting), and quoted with approval in Kenner Parker, 22 USPQ2d at 1456. See generally, Maher, 100 USPQ2d at 1022-23 (finding JUST JESU IT confusingly similar to JUST DO IT). Applicant’s use of a period in his mark does not help distinguish the marks. Opposer uses a period in one of its marks (Reg. No. 1875307 for JUST DO IT. for clothing) and the lack of a period in Opposer’s other marks does not change the sound, appearance, meaning or commercial impression of the marks. Minor punctuation differences do not serve to distinguish marks. See, e.g., In re Burlington Indus., Inc. 196 USPQ 718, 719 (TTAB 1977) (“An exclamation point does not serve to identify the source of the goods”); and Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.4 (TTAB 1978) (FAST-FINDER with hyphen is in legal contemplation substantially identical to FASTFINDER without hyphen). Additionally, Opposer’s mark is in standard character or typed form,38 and Applicant’s mark is in standard character form. They thus could be displayed in the same font or size. In re Viterra, 101 USPQ2d at 1909. In sum, given the fame of Opposer’s mark and the similarity of connotation and commercial impression, we find the marks to be similar for likelihood of confusion purposes. 38 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed or typeset mark is the legal equivalent of a standard character mark. See In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2. (Fed. Cir. 2012). Opposition No. 91247956 - 21 - The DuPont factor regarding the similarity of the marks weighs in favor of finding a likelihood of confusion. E. Conclusion Regarding Likelihood of Confusion All of the DuPont factors about which there is evidence weigh in favor of finding a likelihood of confusion. Opposer ’s mark enjoys the highest level of fame and broadest scope of protection, the marks are similar, Applicant’s services and Opposer’s goods and services are related, and the trade channels and classes of consumers are related. We conclude that confusion is likely. V. Dilution Opposer also alleges dilution by blurring. To prevail, Opposer “must show that: (1) it owns a famous mark that is distinctive; (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark; (3) Applicant’s use of his mark began after Opposer’s mark became famous; and (4) Applicant’s use of his mark is likely to cause dilution by blurring[.]” Coach Servs., 101 USPQ2d at 1723-24. As with likelihood of confusion, Opposer bears the burden of proof by a preponderance of the evidence. Eastman Kodak Co., 26 USPQ2d at 1918. A. Owner of a Famous Mark As discussed above with regard to likelihood of confusion, Opposer has established, and Applicant does not dispute, that Opposer is the owner of a very famous mark entitled to the highest level of protection. Even under the “higher and more rigorous standard for dilution fame required under the FTDA [Federal Trademark Dilution Act],” Palm Bay, 73 USPQ2d at 1694, Opposer has established that its mark is famous for dilution purposes. Opposition No. 91247956 - 22 - B. Applicant’s Use of a Mark in Commerce that Allegedly Dilutes Opposer’s Mark Opposer has not directly addressed this element in its brief. Because Opposer may rely on the filing date of Applicant’s application as Applicant’s constructive use date, this second element is satisfied. Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2023 (TTAB 2014) (“[O]pposer is entitled to rely on applicant ’s filing date as applicant’s date of constructive use. Opposer has therefore satisfied this second prong”). C. When Did the Mark Become Famous Having found Opposer’s mark to be famous, we must determine whether that fame attached to the mark prior to any date upon which Applicant may rely. In this case, because we have no evidence of Applicant’s use, we must determine if Opposer’s mark became famous “prior to the filing date of the trademark application or registration against which it intends to file an opposition or cance llation proceeding.” Coach Servs., 101 USPQ2d at 1725 (citing Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1174 (TTAB 2001)). Applicant admitted that “Opposer’s use and registration of its JUST DO IT Mark is long prior to the filing date of the opposed Application.”39 Opposer established that it has been continuously using its mark since it was introduced in 1989 in connection with various clothing items and retail store services and that the mark became famous well before Applicant’s April 23, 2018 application filing date. See, e.g., various articles published long prior to Applicant’s filing date, including: (i) Cox, James, Shoes with an Attitude, USA Today, August 2, 1990, (“The company’s ‘Just Do It’ 39 Answer ¶ 24, 8 TTABVUE 5. Opposition No. 91247956 - 23 - advertising slogan is one of those rare gems that have transcended advertising to enter popular culture and language.”);40 (ii) Lewis, Jo Ann, It’s Postmodern; and if you don’t get it, you don’t get it.” The Washington Post, March 27, 1994, (“[A] simple declarative Nike slogan like ‘Just Do It’ became a cultural phenomenon[.]”);41 and (iii) Bloomberg Business News, Nike Just Does What Customers Want, Plain Dealer (Cleveland, Ohio), January 6, 1996, (“[T]he company’s ‘Just Do It’ slogan and ‘swoosh’ logo are part of U.S. pop culture.”).42 D. Likelihood of Dilution by Blurring Dilution by blurring is “an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Coach Servs., 101 USPQ2d at 1724 (quoting 15 U.S.C. § 1125(c)(2)(B)). It “occurs when a substantial percentage of consumers, on seeing the junior party ’s mark on its goods, are immediately reminded of the famous mark and associate the junior party’s mark with the owner of the famous mark, even if they do not believe that the goods emanate from the famous mark’s owner.” N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1509 (TTAB 2015). The concern is that “the gradual whittling away of distinctiveness will cause the trademark holder to suffer ‘death by a thousand cuts.’” Nat’l Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010) (citation omitted). See also Enter. Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1816 (“[D]ilution law 40 Opposer’s NOR, Exh. A-16, 17 TTABVUE 75-78. 41 Id., Exh. A-27, 17 TTABVUE 106-13. 42 Id., Exh. A-37, 17 TTABVUE 139-41. Opposition No. 91247956 - 24 - is intended to protect a mark’s owner from dilution of the mark’s value and uniqueness”). Blurring may occur “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1298 (TTAB 2016) (quoting 15 U.S.C. § 1125(c)). To determine whether Applicant’s use of his mark is likely to cause dilution by blurring, we may consider: The degree of similarity between Applicant’s mark and Opposer’s famous mark; The degree of inherent or acquired distinctiveness of Opposer’s mark; The extent to which Opposer is engaging in substantially exclusive use of its mark; The degree of recognition of Opposer’s mark; Whether Applicant intended to create an association with Opposer’s JUST DO IT mark; and Any actual association between Applicant’s mark and Opposer’s mark. 15 U.S.C. § 1125(c)(2)(B)(i-vi). a. Similarity of the Marks For the reasons stated in connection with Opposer ’s likelihood of confusion claim, the marks are similar. As a result of the marks’ similarity, and especially their connotation and commercial impression, Applicant’s mark will cause consumers to “conjure up” Opposer’s famous mark, and “associate the two.” N.Y. Yankees, 114 USPQ2d at 1507. As we held in the Maher case with respect to JUST JESU IT, “[u]pon encountering Applicant’s mark, consumers will be immediately reminded of Opposition No. 91247956 - 25 - opposer’s JUST DO IT mark and associate Applicant’s mark with opposer’s mark.” Maher, 100 USPQ2d at 1030. This factor weighs in favor of finding a likelihood of dilution. b. The Degree of Distinctiveness of Opposer’s Mark There is no evidence or basis upon which to find that Opposer’s mark is anything other than inherently distinctive, and in the Maher case we found that it is inherently distinctive on a similar record. Maher, 100 USPQ2d at 1028. 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.” N.Y. Yankees, 114 USPQ2d at 1507. See also Chanel, 110 USPQ2d at 2025 (“In any event, the discussion above regarding opposer’s extensive evidence of fame of the CHANEL mark used in connection with clothing, fashion accessories, beauty products and boutiques more than sufficiently establishes that opposer’s CHANEL mark has acquired a high degree of distinctiveness among consumers.”). This factor also weighs in favor of finding a likelihood of dilution. c. The Extent to Which Opposer is Engaging in Substantially Exclusive Use of Its Mark Opposer generally declines permission for third parties to use not only JUST DO IT, but also other marks, such as Applicant’s, in the form “JUST ___ IT.”43 Opposer has established that it enforces its rights in the JUST DO IT mark vigorously, including through numerous cease and desist letters, scores of Board opposition and 43 Reynolds Decl. ¶ 26, 19 TTABVUE 9. Opposition No. 91247956 - 26 - cancellation proceedings and civil litigation.44 This type of evidence has been found to establish “substantially exclusive use.” Chanel, 110 USPQ2d at 2025; UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1899 (TTAB 2011); Maher, 100 USPQ2d at 1028 (involving the same mark Opposer pleads in this case). This factor weighs in favor of finding a likelihood of dilution. d. Degree of Recognition of Opposer’s Mark As discussed in connection with Opposer’s likelihood of confusion claim, JUST DO IT is one of the most recognized marks of this and the last century, given, inter alia, Opposer’s extensive use, sales and promotional efforts, and the media’s attention to and recognition of the mark. As we previously held based on a similar record, “JUST DO IT is one of the most famous advertising slogans created,” and it enjoys a “broad spectrum of public recognition.” Maher, 100 USPQ2d at 1028. The evidence in this case establishes that this remains true today and that JUST DO IT enjoys the highest level of fame. This factor weighs in favor of finding a likelihood of dilution. e. Whether Applicant Intended to Create an Association with Opposer’s Mark Although Applicant admitted that he was aware of Opposer’s mark when he filed his application, there is no evidence that Applicant intended to create an association with Opposer’s mark. This factor is neutral. f. Actual Association Between the Marks There is no evidence of any actual association between the parties’ marks. This factor is neutral. 44 Id. at ¶¶ 29-34 and Exhs. B-4 and B-5, 19 TTABVUE 9-16, 34-90. Opposition No. 91247956 - 27 - g. Conclusion Regarding Dilution All of the factors weigh in favor of finding a likelihood of dilution or are neutral. Therefore, we find dilution is likely. VI. Conclusion Use of Applicant’s mark would be likely to cause confusion with, and dilute (by blurring), Opposer’s mark. Decision: The opposition is sustained on both Opposer ’s Section 2(d) claim and its claim of dilution by blurring. Registration of Applicant’s mark is refused.

NIKE, Inc. v. John K. Muntean