Nike 3, Jesuits 0

Posted by | August 17, 2011 | Disputes, General | 2 Comments

Yesterday, John Welch — known worldwide for his witty wisdom on The TTABLog® — wrote about the TTAB’s August 9 precedential opinion in an Opposition filed against the mark JUST JESU IT, as shown on the application drawing page:

Can you guess who the Opposer was and what mark it asserted against the JUST JESU IT application?

Exactly!

Why is it that the best trademark registration applications are always filed Intent to Use?  Don’t the applicants realize how unfair it is to deprive the rest of us the ability to see just what they have in mind, in this case for their JUST JESU IT branded —

 Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bermuda shorts; Board shorts; Boxer shorts; Button-front aloha shirts; Fleece shorts; Golf shirts; Gym shorts; Hat bands; Hats; Hooded sweat shirts; Knit shirts; Long-sleeved shirts; Night shirts; Open-necked shirts; Panties, shorts and briefs; Pique shirts; Polo shirts; Rugby shirts; Rugby shorts; Shirts; Short sets; Short trousers; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Shorts; Sleep shirts; Sport shirts; Sports shirts with short sleeves; Sweat shirts; Sweat shorts; T-shirts; Tee shirts; Toboggan hats, pants and caps; Underwear, namely, boy shorts; Walking shorts; Wearable garments and clothing, namely, shirts; Woolly hats.

I also want to know what the heck are “pique shirts,” and “walking shorts,” but we’ll save that for another time. Meanwhile, everyone knows that Nike wants us to …

But that’s only if we JUST DO IT under a mark that looks and sounds nothing like theirs.  Not unreasonable for a famous mark.  According to the TTAB’s Order, even the Applicants admitted that Opposer’s mark is famous.  At least they were honest.

Nike owns and asserted three incontestable federal registrations (1,875,307; 1,817,919 and 1,931,937) for JUST DO IT for a variety of goods including clothing (t-shirts, sweatshirts & hats), stickers, notepads, posters, key chains, buttons, mugs, and binders.  It claimed likelihood of confusion and dilution by blurring (of the distinctiveness of the mark) as grounds for the PTO’s refusal of the JUST JESU IT registration.

Regarding likelihood of confusion, the TTAB found the following DuPont factors to weigh in Nike’s favor:

Fame of the Opposer’s mark;

Similarity between the marks (overall commercial impression — sight, sound & meaning trilogy);

Identity of goods and relatedness of channels of trade;

Classes of Purchasers;

Um, duh!  Not sure how the Applicant’s failed to see that coming.  The Applicants also argued that JUST JESU IT is a parody.  Of what I wonder — as did the Board — noting that parody is not a defense if the marks otherwise are confusingly similar.

Regarding dilution, John Welch noted — as only he would know (and probably off the top of his head) — that this case is only the third Published dilution opinion the Board has issued in the past twelve years!  Either the Board really did not like this Applicant, or it suddenly realized how much it missed writing about dilution after all these years.

A likelihood of dilution requires affirmative answers to three questions: (a) whether the Opposer’s mark is famous; (b) whether the mark became famous prior to the Applicant’s application filing date; and (c) whether the Applicant’s mark is likely to blur (reduce) the distinctiveness of Opposer’s mark.  In this case the Board answered all three questions “yes” and thus refused registration of JUST JESU IT on dilution grounds, as well as on grounds of likelihood of confusion.

Once again the Applicants again put forth the defense of parody, which the Board again rejected because JUST JESU IT does not satirize or joke about the Opposer or its mark / mantra.  Maybe they would they have had better success had their mark been JUST SUE IT instead.

While you can use another party’s trademark in a  parody, it must poke fun at something related to the original mark.  Parody is not an excuse for you to have a confusingly similar competing brand.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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