If you hear the words “Just Do It”, how many people would instantly know the brand associated with the slogan? I’m guessing most, if not all, would associate that slogan with Nike. JUST DO IT® may be one of the most famous slogans for a company to date. Even with being a famous trademark, does Nike have the right to stop others using any variation of “Just ____ It”? For the owner of “Just Believe It”, it would appear so.
Nike Inc. (“Nike”) has successfully shut down yet another iteration of its famous JUST DO IT® trademark. The Trademark Trial and Appeal Board (“TTAB”) recently ruled in Nike’s favor to deny trademark registration for “JUST BELIEVE IT”.
John Muntean (“Muntean”) filed an intent to use application for “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 the sale of new and recycled products, namely, apparel, pens, decals, stickers, home goods, and other fundraising products” in class 35.
Upon publication of the mark, Nike filed an opposition proceeding to oppose the registration of the mark based on a likelihood of confusion with its JUST DO IT® trademark. Nike also alleges dilution of its JUST DO IT® mark.
Fame of JUST DO IT®
Nike presented substantial evidence, including numerous independent press articles, of the JUST DO IT® mark being famous. The TTAB noted the Center for Applied Research conducted a case study. They found the slogan to be “one of the most famous and easily recognized slogans in advertising history”. Further, the TTAB noted that ads for Nike’s JUST DO IT® mark have featured several famous athletes including Michael Jordan, Tiger Woods, and Serena Williams. Nike has spent over $200 million in advertising since 2008. The TTAB also noted that it previously found the JUST DO IT® mark to be famous in other cases. Accordingly, the TTAB found the JUST DO IT® mark famous and entitled to the highest level of protection against confusion.
Nike presented evidence of over 100 “Just ___ It” marks that have been successfully denied registration due to being challenged by Nike given the strength of its mark. In rebuttal, Mundean offered 13 registered marks that are closer to JUST DO IT® than his mark . Nike rebutted that 6 of the 13 marks offered by Mundean have been cancelled. As such, the cancelled marks do not tend to show that the cited mark is weak due to third party use. Further, the TTAB found that the remaining marks are for unrelated goods and services, such as construction services and maintenance services.
Relation of Goods and Services
The TTAB also found that Mundean planned to sell “JUST BELIEVE IT” branded goods to businesses, organizations, and individuals that will then sell the goods as part of charitable fundraising efforts. Nike has numerous registrations for the JUST DO IT® mark covering a wide range of goods and services, including retail apparel store services. Nike also engages in community initiatives using the JUST DO IT® mark. The TTAB found that the goods and services are related in that they both encompass the sale of apparel and other products. The goods and services are marketed in such a manner that could give rise to the mistaken belief that they emanate from the same source.
Similarity of JUST DO IT and JUST BELIEVE IT
Further, the marks are similar in appearance, sound, connotation, and commercial impression. Both marks start with the word “just” and end with “it” and are only 3 words long. They both convey following a command. In light of the foregoing, the TTAB ruled a likelihood of confusion between the marks. The TTAB also found that dilution is likely if Mundean’s mark registers. Accordingly, the “JUST BELIEVE IT” mark was refused registration.
Famous marks are afforded a broad scope of protection. Fame is measured by such parameters as the volume of sales and advertising expenditures; the length of time of use of the mark; the market share of the mark; brand awareness; licensing activities; and variety of goods bearing the mark. In this case, there is no doubt that JUST DO IT® is a famous trademark. Nike is very good at policing its marks. Applicants trying to register a mark having the format of “Just ___ It” should proceed with caution. This is particularly true if there is a chance that the goods and services could give rise to the mistaken belief that they emanate from the same source.