Similar Channels of Trade – Nike vs Lorenzo

On May 21, 2o24, the Trademark Trial and Appeal Board (TTAB) issued a non precedential opinion discussing the topic of channels of trade in a likelihood of confusion analysis between “JUST DO IT” and “DON’T JUST DO IT, GET IT DONE.” In the legal case of Nike vs. Barbara Lorenzo (Opposition No. 91286066), the central dispute involved Nike’s famous trademark “JUST DO IT” and Lorenzo’s application to register the trademark “DON’T JUST DO IT, GET IT DONE.” Nike opposed this trademark registration, arguing that Lorenzo’s trademark would likely cause confusion with Nike’s mark and dilute its distinctiveness. The TTAB carefully analyzed the case, ultimately siding with Nike. This decision provides valuable insights into how trademark law, particularly regarding the likelihood of confusion and dilution by blurring, is applied to protect well-known trademarks.

The primary issues in this case were twofold: whether Lorenzo’s mark would likely cause confusion with Nike’s “JUST DO IT” trademark, and whether it would dilute the famous mark’s distinctiveness. Nike argued that the fame and recognition of its “JUST DO IT” trademark, which has been used extensively in connection with clothing and accessories, meant that any similar trademark would confuse consumers and diminish the unique association with Nike.

The TTAB’s decision was based on several key considerations. First, the Board acknowledged the overwhelming fame of Nike’s “JUST DO IT” trademark. Nike provided extensive evidence, including substantial sales figures, advertising expenditures, and widespread media coverage, to demonstrate the trademark’s recognition and strength. This fame was crucial in the Board’s determination, as famous trademarks receive heightened protection against confusion and dilution.

In evaluating the similarity of the marks, the Board compared their appearance, sound, connotation, and overall commercial impression. Despite Lorenzo’s trademark containing additional wording, the Board found that the inclusion of “JUST DO IT” in both marks created a strong likelihood of confusion. Consumers could mistakenly believe that Lorenzo’s products were associated with or endorsed by Nike, especially given the prominence of the phrase “JUST DO IT” within both trademarks.

The Board also considered the channels of trade and classes of purchasers. Nike’s trademark is used on a wide range of goods, including various types of clothing and accessories, and is marketed through numerous channels such as retail stores, online platforms, and third-party retailers. Lorenzo’s application also covered clothing items, which meant that the goods would likely be sold in similar trade channels and targeted at the same consumer base. This overlap in trade channels and consumer demographics further supported the likelihood of confusion.

Additionally, the Board addressed the issue of dilution by blurring. This legal concept refers to the weakening of a famous mark’s distinctiveness through the unauthorized use of a similar mark. The Board found that Lorenzo’s trademark, by incorporating “JUST DO IT,” would impair the strong and unique association that consumers have with Nike’s mark. Even though Lorenzo’s mark included additional phrases, the core element “JUST DO IT” remained prominent, leading to a conclusion that dilution was likely.

The TTAB’s ruling in favor of Nike highlights several important aspects of trademark law. One key takeaway is the significant protection granted to famous trademarks. The fame of a mark plays a critical role in both likelihood of confusion and dilution analyses. Famous marks are afforded a broad scope of protection due to their strong recognition among consumers, making it easier for trademark owners to defend against potentially infringing marks.

The decision also underscores the importance of considering channels of trade when assessing the likelihood of confusion. Even when the goods are not identical, similar trade channels and overlapping consumer bases can lead to confusion. Trademark owners must be vigilant in monitoring not only direct competitors but also any entities operating in related trade channels.

Furthermore, the case illustrates how dilution by blurring can occur. The presence of additional wording in a junior trademark does not necessarily prevent dilution if the core element of the famous trademark remains prominent and recognizable. This aspect is crucial for trademark owners to understand when evaluating potential threats to their marks.

Finally, the comprehensive evidence presented by Nike played a significant role in the Board’s decision. Providing detailed documentation of sales, advertising efforts, and media recognition is essential in establishing the fame and strength of a trademark. This evidence strengthens the case for likelihood of confusion and dilution, demonstrating the extensive market presence and consumer association with the mark.

In conclusion, the Nike vs. Barabara Lorenzo case serves as an instructive example for trademark owners and legal practitioners. It showcases the rigorous analysis undertaken by the TTAB in protecting famous marks from confusion and dilution, emphasizing the importance of fame, channels of trade, and comprehensive evidence in trademark disputes. This case reinforces the need for trademark owners to be proactive in defending their marks and underscores the broad protection granted to well-known trademarks in the marketplace.

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