Nike Inc.v.Nikepal International Inc.

Trademark Trial and Appeal Board

Apr 21, 2005

No. 91124869 (T.T.A.B. Apr. 21, 2005)

Mailed: April 21, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nike Inc.
v.
Nikepal International Inc.
_____

Opposition No. 91124869
to application Serial No. 76123346
filed on September 6, 2000
_____

Kathy J. McKnight of Shaw Pittman, LLP for Nike Inc.

Palminder Sandhu for Nikepal International Inc.
______

Before Hohein, Hairston and Holtzman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Nikepal International
Inc. to register the mark NIKEPAL for “import and export
agencies and wholesale distributorships featuring
scientific, chemical, pharmaceutical, biotechnology testing
instruments and glassware for laboratory use, electrical
instruments, paper products, and household products and
cooking appliances.”1

1 Application Serial No. 76123346, filed September 6, 2000,
alleging a date of first use anywhere of 1992 and date of first
use in commerce of May 18, 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91124869
2
Registration has been opposed by Nike, Inc., which
alleges that it is the owner of the trade name, trademark
and service mark NIKE; that long prior to the filing date of
applicant’s application, opposer has used the trade name,
trade mark and service mark NIKE for athletic and casual
footwear, clothing, sports bags, sporting goods, watches,
eyewear, digital electronic equipment, sponsorship of
sporting contests and exhibitions, and retail store
services; that opposer uses the mark NIKE in combination
with other words, including but not limited to NIKE AIR,
NIKE TOWN, NIKE GOLF, NIKE SHOP, NIKE INNER ACTIVES, NIKE
GRIND, NIKEGODDESS, NIKERUNNING, NIKE ID, NIKE QUEST,
NIKEBIZ and NIKE TECHLAB; and that applicant’s mark NIKEPAL,
when used in connection with applicant’s services, so
resembles opposer’s previously used trade name and mark NIKE
as to be likely to cause confusion.
Further, opposer alleges that its mark NIKE became
famous prior to the filing date of applicant’s application;
and that applicant’s use of the mark NIKEPAL in connection
with applicant’s services dilutes the distinctiveness of
opposer’s mark NIKE within the meaning of Section 43(c) of
the Trademark Act. Opposer has pleaded ownership of twenty-
nine registrations, most of which cover athletic footwear
and clothing. Among the registrations pleaded are:
Registration No. 978,952 for the mark NIKE for “athletic
Opposition No. 91124869
3
shoes with spikes and athletic uniforms for use with such
shoes; athletic shoes without spikes and athletic uniforms
for use with such shoes”; Registration No. 1,214,930 for the
mark NIKE for “footwear”; Registration No. 1,277,066 for the
mark NIKE for “athletic and casual clothing for men, women
and children – namely, shirts, pants, shorts, jackets, warm-
up suits, tennis wear, skirts, sweaters, underwear,
headwear, socks and wristbands;” Registration No. 1,307,123
for the mark NIKE AIR for “footwear and cushioning elements
for footwear soles”; Registration No. 1,153,938 for the mark
NIKE for “all-purpose sports bags, travel bags, hand bags
and shoulder bags”; Registration No. 1,595,356 for the mark
NIKE and swoosh design for “posters”; Registration No.
1,924,353 for the mark NIKE for “binders, student planners,
notebooks, portfolio covers, pouches for carrying school
materials;” Registration No. 2,196,735 for the mark NIKE for
“timepieces of all types, namely watches and chronographs;”
Registration No. 2,237,132 for the mark NIKE SHOP for
“retail store services in the field of footwear, clothing,
sporting goods and accessories;” and Registration No.
2,517,735 for the mark NIKE ALPHA PROJECT and design for
“footwear; clothing, namely, anoraks, bodysuits, fitness
bras, briefs, caps, dresses, fitness tops, hats, jackets,
jerseys, leotards, pants, parkas, shirts, shorts, singlets,
skirts, tights, tops, t-shirts, unitards and vests.”
Opposition No. 91124869
4
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; the testimony deposition (with
exhibits) of opposer’s in-house counsel for corporate and
business matters, John F. Coburn III; opposer’s first notice
of reliance on sixty-four articles from printed
publications; opposer’s second notice of reliance on
applicant’s responses to opposer’s interrogatories; the
testimony deposition (with exhibits) of applicant’s
president, Palminder S. Sandhu; applicant’s second notice of
reliance on opposer’s responses to applicant’s
interrogatories and request for production of documents;2
and applicant’s third notice of reliance on both a copy of a
third-party registration, namely Registration No. 1,838,592
for the mark NIKE SOUND for “audio cassette players,
combined audio cassette player and radio units and car
stereos” and a photocopy of applicant’s Articles of
Incorporation.

2 We note that in an order issued July 1, 2004 opposer’s motion
to strike applicant’s first notice of reliance was granted as
conceded. In view thereof, we have not considered the material
accompanying that notice of reliance in reaching our decision
herein. With respect to applicant’s second notice of reliance,
we note that although responses to a request for production of
documents generally are not proper subject matter for a notice of
reliance, opposer has not objected thereto. Rather, opposer
refers to the responses at page 7 of its brief on the case.
Therefore, we consider opposer to have stipulated the responses
into the record.
Opposition No. 91124869
5
The case has been fully briefed, but no oral hearing
was requested.
Evidentiary objection
Before turning to the facts and merits of the case, we
must consider opposer’s objection to much of applicant’s
cross-examination of opposer’s witness, Mr. Coburn. Opposer
contends that many of the questions asked by applicant were
improper because they were outside the scope of direct
examination. Opposer’s direct examination centered on
opposer’s adoption and use of the NIKE mark, opposer’s
registrations, and opposer’s sales and advertising. On
cross-examination, Mr. Coburn was asked to provide the
number of letters in the marks NIKE and NIKEPAL; he was
asked several questions regarding the third-party
registration of the mark NIKE SOUND and any instances of
confusion with respect to NIKE and NIKE SOUND.
Opposer has offered no case law or other support for
its contention that the cross-examination questions were
improper. Moreover, inasmuch as opposer’s witness Mr.
Coburn testified concerning the NIKE mark, we see nothing
improper in applicant asking Mr. Coburn such questions.
Thus, opposer’s objection to the cross-examination testimony
is not well-taken.

Opposition No. 91124869
6
The Parties

Opposer, Nike, Inc., was founded by Phil Knight and
Bill Bowerman in 1968. Opposer first used the NIKE mark on
footwear which was targeted to track athletes. Opposer has
since expanded use of the NIKE mark and now sells hats, T-
shirts, shorts, socks and other kinds of clothing. In
addition, opposer sells sporting goods such as balls, hockey
equipment, and protective gear; notebooks and binders;
eyewear; watches; and electronic devices under the NIKE
mark. Opposer also operates over 100 retail stores in the
United States under the NIKE mark. Opposer is a sponsor of
many sporting events, including the Olympics, and since the
late 1980’s opposer has licensed use of the NIKE mark on
many products not related to athletic footwear such as
pencils, pens, notepads, hats, cups, mugs, name tags, and
“Frisbees.” Opposer has been involved in many charitable
activities and, in particular, activities designed to
promote sports and physical education in school systems
throughout the United States.
Opposer sells its NIKE products throughout the world
and in 140 different countries. Between 1979 and 2003
opposer’s worldwide sales totaled $103,350,955,000 and for
the same period its U.S. sales totaled $57,876,260,000.
Opposer advertises its NIKE products and retail store
services in magazines, newspapers, and leaflets and on
Opposition No. 91124869
7
billboards, radio, and television. Opposer also uses
endorsements with such athletes as Tiger Woods (golf),
Michael Jordan (basketball), Derek Jeter (baseball) and Mia
Hamm (soccer). Between 1985 and 2003 opposer’s worldwide
advertising figures (which exclude athletic endorsement
expenditures) totaled $3,080,600,000 and between 1979 and
2003 opposer’s U.S. advertising figures totaled
$10,517,162,000.
Since 1996 opposer has received intense scrutiny and
media attention because of concerns about the working
conditions in the foreign factories where opposer’s products
are manufactured. Opposer also receives considerable
attention as the result of its association with famous
athletes.
Over the years, opposer has acquired Cole Haan, which
is a premier producer of footwear; Hurley International,
which is a teen lifestyle and alternative action sports
brand apparel and footwear company; and Converse, which is
an athletic footwear, apparel and equipment company.
Under notice of reliance, opposer submitted sixty-four
articles from printed publications which discuss opposer’s
enormous success and rapid sales growth since 1968; and its
relationships with famous athletes such as Tiger Woods and
Michael Jordan.
Opposition No. 91124869
8
In July 2000 Financial Times ranked the NIKE brand no.
30 in the world among “billion dollar brands” with a brand
value of $8.0 billion; and in August 2003 Business Week
magazine ranked the NIKE brand no. 33 in the world with a
brand value of $8.17 billion.
Applicant Nikepal International Inc. is in the business
of supplying products, equipment and instruments to
scientific laboratories and utility companies. Among the
items applicant supplies are syringes, fluid sampling pumps,
syringe carrying cases, valves and plug caps, scales and
balances and gas cylinders. According to opposer’s
president, Mr. Sandhu, the products are used by skilled
personnel only such as technicians and lab personnel. The
products range in price from $5.00 to $10,000.00.
Mr. Sandhu testified that he settled on the mark
NIKEPAL because he “was inspired by [the] meaning [of the
word Nike]” and he combined the word Nike with the first
three letters of his given name. (Dep., p. 8).
Applicant promotes its services by sending emails to
existing customers and distributing catalogs and brochures
to both existing and potential customers.
Priority
During the testimony of opposer’s witness Mr. Coburn,
opposer introduced copies of the twenty-nine registrations
pleaded in the notice of opposition. Further, Mr. Coburn
Opposition No. 91124869
9
testified that opposer is the owner of each of the
registrations and that each registration is in full force
and effect. Thus, priority is not in issue with respect to
the marks consisting of and/or comprising NIKE for the goods
and services identified in the pleaded registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
This brings us to the issue of likelihood of confusion.
Our likelihood of confusion determination is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. duPont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
At the outset, we note that in its brief on the case,
applicant has focused its arguments on the likelihood of
confusion between its mark NIKE and applicant’s mark
NIKEPAL. In this regard, we acknowledge that the
substantial sales and advertising by opposer of its NIKE
brand products and the many years opposer has continuously
used such mark for athletic shoes, clothing and sporting
goods establish the fame of the mark. The fame of opposer’s
NIKE mark entitles it to a broad scope of protection against
competing marks. See Nina Ricci S.A.R.L. v. E.T.F.
Enterprises, 889 F.2d 1070, 1074, 12 USPQ2d 1901, 1904 (Fed.
Cir. 1989).
Opposition No. 91124869
10
Nonetheless, based upon careful consideration of the
record and arguments before us, we find that opposer’s goods
and services are not commercially related to the services
set forth in applicant’s application such that the use of
the involved marks in connection with the respective goods
and services would be likely to cause confusion.
Opposer acknowledges that it “does not produce or sell
scientific, chemical, pharmaceutical or biotechnology
testing instruments or glassware for laboratory uses, nor
does it import or distribute such products.” (Brief, p.
27). However, opposer points out that applicant’s
application also covers the import, export and distribution
of electrical instruments, paper products, household
products and cooking appliances. In particular, opposer
maintains that:
The term “household products” could include
innumerable items and the term “household” itself
is contrary to the assertions that Applicant’s
products are supplied to only scientific
laboratories. Similarly, the terms ‘paper
products,’ ‘cooking appliances’ and electrical
instruments’ could include a wide variety of
items, including those which the public would
associate with Opposer. Not only does Opposer use
its mark on paper products such as posters,
binders, student planners, notebooks and portfolio
covers, Opposer also uses its mark on collateral
products which it has given away as promotional
items for many years. These include pens,
pencils, cups, mugs, name tags and flying discs.
Consumers familiar with Opposer and its well-known
NIKE mark would associate many types of paper and
household products, certain electrical instruments
and perhaps even cooking appliances of some type
with Opposer and believe, contrary to fact, that
Opposition No. 91124869
11
Opposer is using or has licensed its mark for
these products.

(Brief, p. 28)

The problem with opposer’s argument is that applicant’s
application does not cover electrical instruments, paper
products, cooking appliances, and household products
themselves, but rather import, export and distribution
services featuring these products. In this regard, it is
well settled that the issue of likelihood of confusion in a
proceeding such as this must be determined on the basis of
the goods and/or services specified in the subject
application vis-à-vis those set forth in opposer’s
registration(s). See Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); and Canadian Imperial Bank, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In the present case, applicant’s recitation of services
reads “import and export agencies and wholesale
distributorships featuring scientific, chemical,
pharmaceutical, biotechnology testing instruments and
glassware for laboratory use, electrical instruments, paper
products, and household products and cooking appliances.”
Opposer’s registrations cover athletic footwear, clothing,
sporting goods, retail store services in the field of
footwear and athletic clothing, posters, school supplies,
watches and chronographs. This record contains no evidence
Opposition No. 91124869
12
or testimony upon which we could base the conclusion that
consumers would assume that the goods and services covered
by opposer’s registrations, on the one hand, and applicant’s
services, on the other hand, are offered by the same entity.
The mere fact that the services in applicant’s application
are broad enough to encompass the import, export and
distribution of goods that opposer offers, i.e., posters
(paper products) and mugs (household items), is not a
sufficient basis to find that opposer’s goods and
applicant’s services are commercially related. There is no
evidence that any companies offer the kinds of goods and
services set forth in opposer’s registrations and the kinds
of services set forth in applicant’s application.
Further, we recognize that opposer’s registrations and
applicant’s application contain no limitations with respect
to purchasers and channels of trade. Even in the absence of
any limitations, however, we are not persuaded that
opposer’s goods and services and the services set forth in
applicant’s application are related. It is not enough that
some of the purchasers of applicant’s services may also be
purchasers of opposer’s athletic footwear, clothing,
sporting goods, posters, school supplies, and retail store
services. Similarly, while we recognize that both opposer
and applicant may do business on the Internet, this does not
Opposition No. 91124869
13
establish that opposer’s goods and services and the services
in applicant’s application are related.
We also recognize that the licensing of commercial
trademarks for use on “collateral” products which are
unrelated in nature to those goods or services on which the
marks are normally used is a common practice. Indeed, the
record shows that opposer has extensively licensed the use
of its NIKE mark on collateral products such as pens,
pencils, cups, mugs, name tags, and “Frisbees.” However,
opposer has offered no evidence on which to base the
conclusion that the services covered by applicant’s
application represent a natural area for the collateral use
of opposer’s mark NIKE. Compare: In re Phillips-Van Heusen
Corp., 228 USPQ 949 (TTAB 1986) [The record showed that at
least thirteen third parties who owned registrations for
marks for restaurant services had also registered those same
marks for clothing, and the Board held that clothing,
especially shirts, is a natural area for the “collateral
product” use of commercial trademarks]. In this case, there
is no evidence that companies which offer athletic footwear,
clothing, and sporting goods license their marks for the
kind of services recited in applicant’s application. In
view of the foregoing, we find that opposer’s goods and
services and the services recited in applicant’s application
are not commercially related.
Opposition No. 91124869
14
We turn next to the marks. Opposer’s mark is NIKE;
applicant’s mark is NIKEPAL. We find that the additional
element PAL in applicant’s mark is not sufficient to
distinguish the marks. Although marks must be compared in
their entireties, there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of a mark. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (USPQ 1985). In this case, NIKE
is the dominant element of applicant’s mark which is
identical to opposer’s mark in its entirety. It is often
the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.
Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895 (1988). Thus, when we consider the marks in their
entireties, we find that they are similar in sound,
appearance, connotation and overall commercial impression.
Although we have given opposer’s mark NIKE the
substantial weight that must be accorded famous marks, and
found the involved marks to be similar, in view of the
significant differences in the parties’ respective goods and
services, we find that confusion is not likely.
Dilution
We turn next to the ground of dilution. In order to
establish dilution, the use alleged to dilute a mark must be
commercial and in commerce. Also, a party must prove that
Opposition No. 91124869
15
its mark became famous prior to the filing date of the
applicant’s application; that its mark is extremely famous;
and that the mark will be diluted. See Toro Co. v. ToroHead
Inc., 61 USPQ2d 1164 (TTAB 2001).
At the outset, we note that it is clear from the record
that applicant’s use of its mark is commercial and in
commerce. In addition, we have no hesitation in finding
that opposer’s mark NIKE is famous for dilution purposes.
The evidence of record clearly supports the finding that the
public associates the mark NIKE with opposer. Also, there
is no question that opposer’s mark became famous prior to
the filing date of applicant’s application. As of July 2000
Financial Times ranked NIKE no. 30 in the world in brand
value. In addition, opposer introduced over thirty articles
dated prior to the filing date of applicant’s application
which discuss opposer and the success of the NIKE brand.
In this case, however, we are not persuaded that
opposer’s mark NIKE will be diluted. In determining whether
the mark will be diluted, the Board looks to the similarity
of the marks, the renown of the party claiming fame and
whether purchasers are likely to associate two different
products and/or services with the mark even if they are not
confused as to the different origins of the products and/or
services. Toro Co., 61 USPQ2d at 1183.
Opposition No. 91124869
16
As we have already found, opposer’s mark NIKE is
extremely famous such that the public in general associates
the term “Nike” with opposer. With respect to the
similarity of the marks, “for dilution purposes, a party
must prove more than confusing similarity, it must show that
the marks are identical or ‘very or substantially similar.’”
Toro Co., 61 USPQ2d at 1183, quoting Nabisco, Inc. v. PF
Brands Inc., 191 F.3d 208, 218, 51 USPQ2d 1882, 1889 (5th
Cir. 2001). While the marks NIKE and NIKEPAL are similar,
we find that they are not substantially similar for dilution
purposes. Although the term NIKE appears in both marks,
applicant’s mark adds the term PAL. This results in a mark
which has a sufficiently different overall commercial
impression. Thus, we find that the marks NIKE and NIKEPAL
are not very or substantially similar, and thus there is no
dilution.
Decision: The opposition is dismissed on the grounds
of likelihood of confusion and dilution.