Fame: Noting applicant’s admission regarding fame for dilution purposes, the Board nonetheless considered the degree of fame under Section 2(d), since “likelihood of confusion fame varies along a spectrum from very strong to very weak.” Noting that Nike has spent $5 billion in advertising the JUST DO IT slogan, that it has been called “one of the most famous and easily recognized slogans in advertising history,” that its advertising has featured various well-known athletes, etc., the Board found JUST DO IT to be a “household name” and “exceedingly famous.”
The Marks: The Board found the marks to be “more similar than dissimilar, in how they look and sound and in the meaning they convey.”
The main dissimilarity between the marks is that the middle word in Opposer’s mark is DO while the middle word in Applicant’s mark is SAY. But both DO and SAY are verbs, with DO being more general, in that it conveys performing an action of some unspecified type.13 The verb SAY is more specific, and means to speak.14 Thus, the command JUST DO IT could implore the listener to SAY something, depending on the circumstances. Furthermore, we do not need evidence to know that “saying” is often a precursor to “doing.” For example, people often talk about or “say” what their intentions are before performing or “doing” the act. The common expression “actions speak louder than words” also suggests that there is some relationship between the two terms. In short, while DO and SAY look and sound different, their meanings are not necessarily significantly different in the context of being commanded to take some action. See generally, Nike, Inc. v. Maher, 100 USPQ2d at 1022-23 (finding JUST JESU IT confusingly similar to JUST DO IT).
The Goods: Applicant goods are focused on “healthy lifestyles encompassing physical … aspects of positive human oral communications.” The Board presumed that the “physical” aspects of oral communications could encompass a variety of physical activities, including activities for which Nike’s goods could be used.
Keeping in mind that fame plays a dominant role in the Section 2(d) analysis, the Board observed that Nike uses its slogan for more than just sports clothing and equipment. It also provides information regarding healthy lifestyles and the physical aspects thereof – not through books or e-books, but through its mobile training applications. And Nike also uses the slogan in connection with “social, emotional and spiritual aspects of human communications.” [E.g., the Colin Kapernick ad campaign].
The Board observed that consumers might believe that applicant’s books and e-books “are an extension of Opposer’s JUST DO IT advertising campaigns.”
Other du Pont Factors: There was insufficient evidence to show any overlap in channels of trade, but the classes of consumers overlap in part. The fact that Nike uses its mark on a variety of goods also weighed in its favor.
Conclusion Regarding Section 2(d): The Board sustained the Section 2(d) claim.
Dilution by Blurring: Applying the non exclusive factors of Section 1125(c)(2)(B)(i-vi), the Board wasted little time in finding the marks to be similar and Nike’s mark to be inherently distinctive. Nike is the “substantially exclusive” user of its mark. And the slogan enjoys the “highest level of fame.”
There was no evidence that applicant intended to create an association with the JUST DO IT mark, nor any evidence of any actual association by consumers.
The Board concluded the dilution is likely, and so it sustained the Section 43(c) claim.
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TTABlog comment: The opinion seems like one long stretching exercise. What do you think?
Text Copyright John L. Welch 2019.