Here is a bit of free advice from someone who spends a lot of time practicing in the field of intellectual property: It is often best to stay away from creating any branding that includes, “JUST (INSERT WORD) IT.” More likely than not, the first thing that comes to mind is Nike’s popular and registered slogan, “JUST DO IT.” The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) would agree.
On September 10, the TTAB issued a ruling that sustained an opposition filed by Nike against an individual applicant, Jon K. Muntean, who sought to register the trademark, “JUST BELIEVE IT.” Muntean was not looking to directly compete with Nike. Instead, he was interested in registering his mark for use mainly in connection with 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 (apparel, pens, decals, stickers, home goods, and other fundraising items).
Key considerations in any likelihood of confusion analysis are the similarities between the marks and the similarities between the goods and services, and the opposer bears the burden of establishing that there is a likelihood of confusion.
The applicant argued that swapping out the word “DO” for “BELIEVE” created two entirely different commercial impressions, while Nike said that the marks are similar because they start and end with the same words and are each only three words long. Furthermore, Nike argued that the meanings of the marks are similar in that they both reflect a “call to arms,” encouraging consumers to either follow through with their goals (Nike) or believe in something (the applicant).
“Obviously DO and BELIEVE are different words and have different meanings, but action and belief are intertwined concepts, particularly in sports and religion,” stated the TTAB opinion. “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.’”
The TTAB also noted the fame of the “JUST DO IT” mark and that a purchaser is less likely to perceive differences from a famous mark (citing a prior case where the finding was that “JUST JESU IT” is confusingly similar to Nike’s popular mark). In fact, the opinion made a reference that AdAge magazine deemed Nike’s mark the first runner-up to “Diamonds Are Forever” as the 20th century’s “Top 10 Slogans.”
Even in comparing the goods and services, the TTAB highlighted that fame remains a dominant factor independent of the consideration of the relatedness of the goods. That aside, the TTAB found that the applicant’s services and Nike’s goods and services are related inasmuch as they both encompass the sale of apparel. It also discussed Nike’s involvement with numerous community initiatives and other charitable causes.
Nike was given the green light to just keep doing what it does, which includes vigilantly going after any applicants who file to register trademarks similar to its own.
Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at [email protected] and follow him on Twitter at @DarrenHeitner.