Nike, Inc.v.Pleasures of the Table, Inc.

Trademark Trial and Appeal Board

Jul 10, 2003

No. 91115293 (T.T.A.B. Jul. 10, 2003)

Mailed: July 10, 2003
Paper No. 46
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Nike, Inc.
v.
Pleasures of the Table, Inc.
_______
Opposition No. 115,293
to Application No. 75/240,563
filed on February 12, 1997
_______
Kathy J. McKnight of Shaw Pittman for Nike, Inc.
James C. Wray and Julie H. Gamotis of Law Offices of James
C. Wray for Pleasures of the Table, Inc.
_______
Before Hairston, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Nike, Inc. filed its opposition to the application of
Pleasures of the Table, Inc. to register the mark shown
below for “food and beverage services, namely, food
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 115,293
2
preparation, distribution and serving, restaurant, cocktail
lounge and catering services,” in International Class 42.1

As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s services so
resembles opposer’s previously used and registered mark
NIKE, alone and with various additional terms as a word
mark, and in various design formats, for a variety of goods
and services2 (hereinafter “NIKE marks”), as to be likely to

1 Application Serial No. 75/240,563, filed February 12, 1997, based upon
an allegation of a bona fide intention to use the mark in commerce in
connection with the identified services. The application includes a
disclaimer of BAR AND RESTAURANT EXTRAORDINAIRE apart from the mark as a
whole; and a statement that the lining in the drawing is a feature of
the mark. We note that the drawing of the mark in the USPTO automated
records is illegible. If this mark is ultimately determined to be
registrable, a legible drawing should be entered prior to issuance of a
registration.
2 Opposer relies on numerous registrations that were pleaded in the
notice of opposition and properly made of record through the testimony
of John Coburn, opposer’s assistant general counsel and corporate
assistant secretary. These include registrations for NIKE (Registration
Nos. 978,952; 1,153,938; 1,214,930; 1,243,248; 1,277,066; 1,945,654;
2,025,926; 2,196,735) and NIKE with swoosh design (Registration Nos.
1,237,469; 1,238,853; 1,325,938; 1,772,987; 2,024,436; 2,209,815;
2,239,076) for a variety of products, including footwear, bags,
clothing, sport balls, swim equipment, timepieces, posters and retail
footwear and apparel services; NIKE TOWN (Registration No. 1,775,629)
Opposition No. 115,293
3
cause confusion, under Section 2(d) of the Trademark Act.
Opposer alleges that its NIKE marks are “exceedingly well
known” and that its trade name and mark NIKE is famous.
Applicant, in its answer, denied the salient
allegations of opposer’s claim.
Procedural Matters
On April 9, 2002, applicant filed a motion objecting to
opposer’s notice of reliance, which was filed April 5, 2002,
on various excerpts from publications. On May 14, 2002, the
Board issued an order deferring consideration of this
objection until final decision.3 Therefore, we now consider
applicant’s objection.

for various items of clothing; NIKE SHOP (Registration No. 2,237,132)
for retail store services for clothing, footwear, bags and related
accessories; and NIKE GOLF (Registration No. 1,944,436) for bags,
footwear and clothing. The NIKE and swoosh design mark appears as
follows:
Mr. Coburn testified to the status and ownership by opposer of
several additional registrations that were not pleaded in the notice of
opposition, but were exhibits to his testimony, including NIKE
(Registration Nos. 1,924,353 and 2,239,077) for school materials and
bags and swim equipment; NIKE and swoosh design (Registration Nos.
1,866,140; 2,473,828; 2,534,358; 2,104,329; 2,024,717) for school
materials, sporting equipment, timepieces, footwear and clothing; NIKE
ALPHA PROJECT and design (Registration No. 2,517,735) for footwear and
various items of clothing; and NIKE GRIND and design (Registration No.
2,480,935) for artificial recreational surfaces; NIKE AIR and swoosh
design (Registration NO. 1,571,066) for T-shirts; NIKE AIR (Registration
No. 1,307,123) for footwear and cushioning elements; and NIKE TOWN and
design (Registration No. 1,796,122) for retail store services for
clothing, footwear, bags and accessories. Because these additional
registrations were not properly pleaded in the notice of opposition,
they have been considered only in connection with determining the scope
of goods and services upon which opposer has used its NIKE marks.
3 Applicant also previously filed a motion to strike the testimony of
John Coburn, which motion was denied by the Board in an order dated
September 19, 2002.
Opposition No. 115,293
4
The excerpts submitted by opposer are from various
magazines, periodicals and newspapers. Opposer states in
its notice of reliance that “the articles are relevant to
show the fame of the mark NIKE, the expansion of the areas
of business under the mark, the value of the mark, and the
practice of licensing of valuable marks for unrelated
products and services.” Applicant objects on the ground
that the articles are not publications amenable to
submission by notice of reliance, and that the articles “are
hearsay, are not probative, and are not relevant for any of
the purposes alleged.”
Clearly, these are publications which may be submitted
by notice of reliance under Trademark Rule 2.122(e), and
applicant has provided no basis for concluding otherwise.
The evidence in question would be hearsay for the truth of
the statements contained in the excerpts and it is not
accepted for that purpose. However, it is relevant to show
the extent of public exposure to opposer’s marks, that is,
it is reasonable to assume that some of the public has
viewed these excerpts and, thus, has been exposed to the
information contained therein. Thus, at a minimum, this
evidence is relevant to establishing the fame of opposer’s
marks. Applicant’s objection is overruled.
Turning to opposer’s objection, in its brief, to the
evidence submitted in applicant’s June 14, 2002 notice of
Opposition No. 115,293
5
reliance, opposer contends that the material is either
copies of information downloaded from the Internet and, as
such, is not self-authenticating, or that the evidence is
from publications that are not identified properly or are
not generally available to the public and, thus, this
material is not properly submitted by notice of reliance.
Opposer’s objections are well taken and, thus, this
evidence submitted by applicant by notice of reliance has
not been considered. See, In re Total Quality Group Inc.,
51USPQ2d 1474 (TTAB 1999); and Raccioppi v. Apogee Inc., 47
USPQ2d 1368 (TTAB 1998). However, the Board has considered
this evidence to the extent that it is the same evidence
submitted as exhibits to Ms. Tibbetts’ testimony. There was
proper foundation and authentication of these documents
through Ms. Tibbetts’ testimony. Nonetheless, Ms. Tibbetts
acknowledged that she had no independent knowledge of the
facts contained in the documents submitted with her
testimony. Therefore, the information contained in those
documents is hearsay for the truth of the statements
contained therein and the Board has not considered it for
that purpose.
The Record
The record consists of the pleadings; the file of the
involved application; excerpts from various publications
submitted by opposer under notice of reliance; opposer’s
Opposition No. 115,293
6
responses to applicant’s request for admissions, submitted
by applicant under notice of reliance; the testimony
deposition by opposer of John Coburn, opposer’s assistant
general counsel and corporate assistant secretary, with
accompanying exhibits; and the testimony deposition by
applicant of Jean Tibbetts,4 with accompanying exhibits.
Both parties filed briefs on the case but an oral hearing
was not requested.
The Parties
Opposer has established, through the testimony of Mr.
Coburn, that opposer began its business in the early 1970’s
by offering a line of NIKE running and track footwear; that
opposer expanded its NIKE footwear line to include other
types of footwear and developed new footwear categories;
that in the mid-1970’s opposer expanded further to also
offer NIKE clothing and sports equipment; and that opposer
has expanded its NIKE line to include bags, eyeglasses,
timepieces and electronics. Mr. Coburn described opposer’s
retail stores, identified by the mark NIKE TOWN, which are
located throughout the country. In addition to retail
product sales, Mr. Coburn stated that opposer’s stores
sponsor sports clinics and other events and provide rental
space for private parties.

4 Ms. Tibbetts’ connection to applicant is not identified in the
deposition or elsewhere in the record.
Opposition No. 115,293
7
Mr. Coburn stated that opposer’s world corporate
headquarters are located in Beaverton, Oregon, and that
opposer refers to its headquarters as the “NIKE World
Campus.” At its campus, opposer offers public tours and
sports clinics, among other events. For visitors and
employees, opposer operates several restaurants on or
adjacent to the campus, as well as conference centers with
catering that can be rented by the public for local events.
Opposer’s restaurants have various names, including, inter
alia, Airsole Restaurant, Boston Deli, Bowdoin’s, and Café
19. The restaurants and the food service at the conference
centers are operated by opposer through its Nike Food
Services, which appears to be either a division or
department of, or a company related to, opposer. However,
there is no evidence indicating specifically when opposer
began offering its restaurant services or when, or if, it
began using the mark NIKE in connection with its restaurant
and conference center food services.
Applicant submitted the testimony of Jean Tibbetts,
wherein she authenticated numerous exhibits in the nature of
excerpts from various Internet sites that she had
downloaded.5 The Internet excerpts include various uses of
the term “Nike,” some refer to the Nike Missile Project, and

5 In addition to excerpts from Internet web sites submitted in
connection with Ms. Tibbets’ testimony, applicant’s documents properly
submitted by its notice of reliance include numerous dictionary
definitions of “Nike.”
Opposition No. 115,293
8
a substantial number of listings containing the term “Nike”
appear on the Internet site www.SuperPages.com. On cross-
examination, Ms. Tibbetts acknowledged that she did not know
how many of the Nike references were to opposer or its
licensees, or how many were duplicates. She also
acknowledged that a significant number of the references
were to foreign sources. Accordingly, this Internet
material is of little evidentiary value.
Applicant also submitted, by notice of reliance,
opposer’s answers to applicant’s request for admissions.
The only admissions contained therein are opposer’s
admission that Nike is the name of the ancient Greek goddess
of victory, and that the figure depicted in applicant’s mark
is similar to a sculpture, Nike of Samothrace, located in
the Louvre Museum in Paris.
Analysis
Inasmuch as opposer has established, through Mr.
Coburn’s testimony, its ownership and the status of the
pleaded registrations,6 these registrations are considered
to be of record.7 Thus, there is no issue with respect to
opposer’s priority. King Candy Co., Inc. v. Eunice King’s

6 Opposer pleaded numerous registrations, including Registration No.
1,849,639. However, Registration No. 1,849,639 was never properly made
of record and, thus, has not been considered.
7 Contrary to opposer’s request in its brief, we have not considered
applicant’s statements in its reply brief in support of its motion for
summary judgment to be part of the record at trial, nor do we consider
the statements contained therein to be an admission by applicant
regarding the status and title of opposer’s pleaded registrations.
Opposition No. 115,293
9
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We
add, however, that, while opposer has established, through
Mr. Coburn’s testimony, that opposer is currently using its
NIKE mark in connection with a food service offered in
connection with its convention centers, opposer has not
established its dates of first use of its NIKE mark in
connection with such services.8 Thus, we cannot draw any
conclusions about opposer’s priority in connection with food
services.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
Turning, first, to consider the marks, we note that
while we must base our determination on a comparison of the
marks in their entireties, we are guided, equally, by the
well established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate

8 The evidence also establishes that opposer operates restaurants on and
near its “campus,” but there is insufficient evidence establishing that
the NIKE mark is used to identify these restaurant services.
Opposition No. 115,293
10
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Applicant incorporates into its composite mark
opposer’s NIKE word mark in its entirety. Additionally, the
word NIKE, which appears twice in applicant’s mark, appears
once as the largest wording in the mark and is superimposed
across the design of a statue,9 which both opposer and
applicant agree is similar to a sculpture displayed in the
Louvre and identified as Nike of Samothrace. Opposer and
applicant also agree that “Nike” is the name of the Greek
goddess of victory. Thus, the design of the statue, rather
than distinguishing applicant’s mark from opposer’s NIKE
mark, reinforces the term NIKE and reinforces its
connotation as the Greek goddess of victory. The additional
wording in applicant’s mark, BAR AND RESTAURANT
EXTRAORDINAIRE, is merely descriptive and laudatory, and it
appears at the bottom of the mark in much smaller print than
either of the two appearances of the term NIKE in the mark.
Further, NIKE is the primary pronounceable word in
applicant’s mark. Thus, we conclude that NIKE is the
dominant portion of applicant’s mark.

9 We also point out that the composite marks in opposer’s registrations
of record show the word NIKE in capital letters in a font that is almost
identical to the font used for the term NIKE superimposed across the
statue in applicant’s mark.
Opposition No. 115,293
11
Applicant argues that the association in its mark with
the statue and, hence, the Greek goddess, is a
distinguishing factor between its mark and opposer’s marks.
However, aside from its trademark significance for opposer,
there is no evidence or argument indicating that “Nike”
would not similarly connote the Greek goddess in connection
with opposer’s mark. Thus, this is not a distinguishing
feature of applicant’s mark.
Therefore, we conclude that applicant’s mark is highly
similar to opposer’s NIKE marks in sound, connotation and
overall commercial impression.
We conclude, next, that opposer’s NIKE marks and its
NIKE trade name are famous, as opposer contends. Opposer
has clearly established that its NIKE marks and trade name
are famous in connection with the goods and retail store
services identified in its registrations of record.10
Compelling evidence includes sales figures (e.g., almost $5
billion of sales in 2001 in the United States), advertising
figures (e.g., $239.9 million in 2001 in the United States),
the varied nature of its advertising (e.g., in print
publications, web sites, television, direct mailing, etc.),
and its endorsements by many professional athletes,
including Tiger Woods, Michael Jordan, Derek Jeter, Ken

10 We cannot conclude from this record that opposer’s NIKE mark and
trade name is famous in connection with restaurant or catering services.
Opposition No. 115,293
12
Griffey Jr., Mia Hamm and Ronaldo. Mr. Coburn testified
that opposer’s NIKE brand was listed by Business Week
Magazine, in August 2001, as 34th among the top most
recognized or valuable brands. The documentary evidence
submitted through opposer’s notice of reliance further
supports this conclusion of fame by demonstrating the
breadth of readers’ exposure to opposer’s mark.
A famous mark is entitled to a broader scope of
protection than a lesser-known mark. As our primary
reviewing court has stated, “the fame of a trademark may
affect the likelihood purchasers will be confused inasmuch
as less care may be taken in purchasing a product under a
famous name.” Specialty Brands v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 6765, 223 USPQ 1281, 1284 (Fed. Cir.
1984). In addition, the fame of a mark magnifies the
significance of the similarities between the marks which are
compared. Kenner Parker Toys Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992), cert.
denied, 113 S.Ct. 181 (1992). As the Court of Appeals for
the Federal Circuit stated in the case, involving a famous
mark, of Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1895, 1898 (Fed. Cir. 2000):
[E]ven if the goods in question are different
from, and thus not related to, one another in
kind, the same goods can be related in the mind of
the consuming public as to the origin of the
goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.
Opposition No. 115,293
13
See also, Bose Corporation v. QSC Audio Products, Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309-1310 (Fed. Cir. 2002); and
Hewlett-Packard Company v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). It is clear,
with respect to the goods and services of the parties in
this case, that applicant’s identified services are
different in kind from, but related in the minds of
consumers to, opposer’s identified goods or its retail store
services.
In this case, in view of the evidence that opposer in
fact operates a food service at its conference centers under
the NIKE mark (cf. footnote 8, p. 9), we find that this
service is a logical expansion of opposer’s business,
certainly of its events and convention center services, into
obvious collateral services. See Ritz Hotel v. Ritz Closet
Seat Corp., 17 USPQ2d 1466, 1470 (TTAB 1990).
In view of the fame of opposer’s NIKE marks and the
substantial similarity of the parties’ marks, we find that
the parties’ goods and services are sufficiently related in
the minds of the purchasing public that confusion as to
sponsorship or affiliation is likely.
Additionally, it is well established that one who
adopts a mark similar to the mark of another for the same or
closely related goods or services does so at his own peril,
and any doubt as to likelihood of confusion must be resolved
Opposition No. 115,293
14
against the newcomer and in favor of the prior user or
registrant. See J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed
Cir. 1988); and W.R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308 (TTAB 1976).
Decision: The opposition is sustained and registration
to applicant is refused.