If someone mentions the phrase “Just Do It,” most people would instantly associate it with a well-known brand. It’s safe to say that the majority, if not all, would connect this slogan with Nike. The question then arises: does Nike have the right to prevent others from using any variation of “Just ____ It”? Well, according to the case of “Just Believe It,” it seems that Nike does indeed possess such rights.
Nike Inc. (“Nike”) has successfully taken legal action against yet another iteration of its famous JUST DO IT® trademark. The Trademark Trial and Appeal Board (“TTAB”) recently ruled in favor of Nike, denying the trademark registration for “JUST BELIEVE IT.”
A Brief History
John Muntean (“Muntean”) filed an application to use the trademark “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.
After the mark was published, Nike opposed its registration, citing a likelihood of confusion with its JUST DO IT® trademark. Furthermore, Nike alleged that Muntean’s mark diluted the distinctiveness of its JUST DO IT® mark.
The Fame of JUST DO IT®
To support their case, Nike presented compelling evidence, including numerous independent press articles, highlighting the fame of the JUST DO IT® mark. Notably, a case study conducted by the Center for Applied Research deemed the slogan as “one of the most famous and easily recognized slogans in advertising history.” Additionally, Nike’s advertising campaigns for the JUST DO IT® mark, featuring renowned athletes like Michael Jordan, Tiger Woods, and Serena Williams, were considered. It was revealed that Nike has invested over $200 million in advertising since 2008. The TTAB acknowledged previous cases where it had found the JUST DO IT® mark to be famous. As a result, the TTAB ruled that the JUST DO IT® mark is famous and deserving of the highest level of protection against confusion.
Nike also presented evidence of over 100 “Just ___ It” marks that were successfully denied registration due to challenges from Nike based on the strength of its mark. In response, Muntean provided 13 registered marks that resembled JUST DO IT® more closely than his mark. However, Nike argued that six of the 13 marks offered by Muntean had been cancelled. Consequently, these cancelled marks do not demonstrate that the cited mark is weak due to third-party use. Furthermore, the TTAB determined that the remaining marks were unrelated to goods and services, such as construction and maintenance services.
Relation of Goods and Services
The TTAB also considered Muntean’s intention to sell “JUST BELIEVE IT” branded goods to businesses, organizations, and individuals who would then sell the goods as part of charitable fundraising efforts. Nike holds numerous registrations for the JUST DO IT® mark, covering a wide range of goods and services, including retail apparel store services. Nike also actively engages in community initiatives using the JUST DO IT® mark. The TTAB concluded that the goods and services associated with both marks were related, as they involve the sale of apparel and other products. The marketing of these goods and services could lead to the mistaken belief that they originate from the same source.
Similarity between JUST DO IT and JUST BELIEVE IT
The TTAB determined that both marks were visually, phonetically, and conceptually similar. They both begin with the word “just” and end with “it,” consisting of only three words. Both convey a sense of following a command. Considering these factors, the TTAB ruled a likelihood of confusion between the marks. The TTAB also emphasized the potential for dilution if Muntean’s mark were to be registered. Consequently, the “JUST BELIEVE IT” mark was refused registration.
Key Takeaways
Famous trademarks receive a wide scope of protection. Fame is measured through various parameters, such as sales volume, advertising expenditures, duration of use, market share, brand awareness, licensing activities, and the variety of goods bearing the mark. In this case, there is no doubt that JUST DO IT® is a famous trademark. Nike diligently protects its marks, so anyone attempting to register a mark following the format of “Just ___ It” should proceed with caution. This is especially true if the goods and services involved could lead to a mistaken belief that they come from the same source.
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