Nike, Inc.v.Peter Maher and Patricia Hoyt Maher

Trademark Trial and Appeal Board

Aug 9, 2011

No. 91188789 (T.T.A.B. Aug. 9, 2011)

Mailed:
August 9, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nike, Inc.
v.
Peter Maher and Patricia Hoyt Maher
_____

Opposition No. 91188789
to application Serial No. 77539642
filed on 8/5/2008
_____

Michelle L. Calkins of Leydig, Voit & Mayer, Ltd. for Nike,
Inc.

Peter Maher and Patricia Hoyt Maher, pro se.
______

Before Walters, Bergsman and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Applicants, Peter Maher and Patricia Hoyt Maher, filed
a trademark application for the mark JUST JESU IT for the
following clothing items:
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
THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91188789
2

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.

Nike, Inc. (“opposer”) has filed an opposition against
applicants’ application, alleging prior use and ownership of
the following registrations of the mark JUST DO IT, in typed
drawing form:
1. Reg. No. 1875307 for “clothing, namely t-shirts,
sweatshirts and caps”; registered January 24, 1995;
renewed.

2. Reg. No. 1817919 for “paper goods and printed
matter; namely, bumper stickers, note pads, posters
and banners; non-metallic key chains and ornamental
novelty buttons; mugs”; registered January 25,
1994; renewed.

3. Reg. No. 1931937 for “binders, student planners,
portfolio covers”; registered October 31, 1995;
renewed.

Opposer further alleges that applicants’ mark JUST JESU
IT so closely resembles opposer’s mark that confusion is
likely under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d).1 In addition, opposer alleges that its mark is
famous; that the mark became famous prior to the filing date

1 Opposer alleges use of the mark JUST DO IT both with and without
a final period (“.”). With the exception of Reg. No. 1931937, its
pleaded registrations include the final period. For ease of
reference, the form of the mark we use herein is without the final
period.
Opposition No. 91188789
3

of the application; and that applicants’ mark is likely to
dilute the distinctiveness of opposer’s famous mark under
Section 43(c), 15 U.S.C. § 1125(c), by lessening the
capacity of the mark to identify and distinguish opposer’s
goods and services. Applicants generally denied each of the
salient allegations in the complaint. After trial, both
sides filed trial briefs and opposer filed a reply brief.
The Record
By rule, the record includes applicants’ application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b).
I. Opposer’s Evidence
Opposer introduced the following testimony of its
employees and the following evidence during its testimony
period:
1. The testimony deposition of Jaime Schwartz, Assistant
General Counsel, with attached exhibits Nos. 1-11.

2. The testimony deposition of Melanie Sedler, Trademark
Paralegal, with attached exhibits Nos. 12-27.

3. The testimony deposition of Jessica Shell, Trademark
Paralegal, with attached exhibits Nos. 28-32.

4. The testimony deposition of Mark Thomashow, Global
Director, Business Affairs.

Opposer also filed notices of reliance on certified
copies of its pleaded registrations prepared by the USPTO
showing the current status of and title to the
Opposition No. 91188789
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registrations; applicants’ answers to opposer’s first set of
interrogatories, requests for admissions, and requests for
production of documents and things;2 and newspaper and other
periodical articles divided by year, starting with 1989 and
continuing through 2010, purporting to show the fame of
opposer’s mark.
II. Applicants’ Evidence
During their testimony period, applicants filed a
notice of reliance on certified copies of five third-party
registrations showing the current status of and title to the
registrations. Applicants did not introduce any testimony.
Evidentiary Objections
Opposer objected to the introduction of one of the
third-party registrations introduced by applicants on
grounds that it has been cancelled.3
While a cancelled registration “does not provide
constructive notice of anything,” Action Temporary Services

2 Opposer also attached copies of documents applicants submitted
in response to opposer’s request for production of documents and
things. Such documents cannot be submitted by notice of reliance
alone except to the extent that they are admissible under the
provisions of § 2.122(e). 37 C.F.R. § 2.120(j)(3)(ii). None of
the documents submitted by opposer in connection with applicants’
answers to the document production request are admissible under
this rule, and accordingly they have not been considered.
However, applicants’ responses, in connection with several of the
requests, that no such documents exist, have been treated as being
of record. See L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 n.5
(TTAB 2008); TBMP § 704.11 (3d ed. 2011).
3 Reg. No. 2980221.
Opposition No. 91188789
5

Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307,
1309 (Fed. Cir. 1989), it is admissible under 37 C.F.R. §
2.122(e) as an official record. In addition, third-party
registrations may be used to indicate that a commonly
registered element has a suggestive meaning. Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740
(TTAB 1991), aff’d unpub’d, No. 92-1086 (Fed. Cir. June 5,
1992). To the extent the registrations, including the
cancelled registration, have been offered for the purpose of
showing the suggestive nature of any commonly registered
element, we have considered them for whatever probative
value they may have.4
Standing and Priority
Because opposer has properly made of record certified
copies of its pleaded registrations, opposer has established
its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). Moreover, priority of use for Section 2(d)
purposes is not an issue in this proceeding. King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974).

4 To the extent the cancelled registration has any evidentiary
value, it is limited to the short time that the mark was
registered; i.e., from July 26, 2005 to April 5, 2006.
Opposition No. 91188789
6

In addition, the evidence establishes opposer’s use of
its registered mark from at least as early as 1989,5 which
predates the earliest date upon which applicants may rely
(August 5, 2008, the filing date of their application), as
applicants have not yet commenced actual use of their mark.6
Likelihood of Confusion
Opposer contends that applicants’ mark is likely to
cause confusion among consumers under Trademark Act § 2(d),
15 U.S.C. § 1052(d). Our determination as to whether there
is a likelihood of confusion is based on an analysis of all
of the probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). In this case, the facts in evidence bear on the
following factors: fame of opposer’s mark, the similarity
between the marks, the identity of the goods and relatedness
of trade channels, and the classes of purchasers.

5 Thomashow Dec., pp. 14-15.
6 Applicants’ Brief, p. 1; Opposer’s Second Notice of Reliance,
Ex. 4.
Opposition No. 91188789
7

I. Fame of Opposer’s Mark
Applicants have admitted that opposer’s mark is famous
for likelihood of confusion purposes.7 Lacoste Alligator
S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB
2009)(admission that plaintiff’s mark is famous sufficient
for likelihood of confusion purposes). Moreover, we have
found opposer’s mark famous for dilution purposes. See
discussion infra. In view of the foregoing, we find that
opposer’s mark is famous for likelihood of confusion
purposes. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1694 (Fed.
Cir. 2005); Cf. Coach Services Inc. v. Triumph Learning LLC,
96 USPQ2d 1600, 1610 (TTAB 2010) (“Fame for dilution
requires a more stringent showing.”).
This factor strongly favors opposer.
II. The Similarity or Dissimilarity and Nature of the Goods;
The Similarity or Dissimilarity of Likely-To-Continue Trade
Channels and Classes of Consumers.

Applicants have applied to register their mark for
various articles of clothing, including “hats and caps,”
“hooded sweat shirts,” “short-sleeved or long-sleeved t-
shirts,” and “sweat shirts.” Opposer’s Reg. No. 1875307
covers “t-shirts,” “sweatshirts,” and “caps.” The goods are

7 Opposer’s Second Notice of Reliance, Exhibit 2: Request for
Admissions, No. 4 seeks an admission that “Opposer’s mark “JUST DO
IT” is famous.” Response: “Admit.”
Opposition No. 91188789
8

identical in part. Moreover, both applicants’ and opposer’s
clothing are broadly identified without any restrictions or
limitations as to the type of clothing (with the exception
that applicants’ description of t-shirts excludes sleeveless
t-shirts), channels of trade or classes of consumers.
Therefore, we must assume that both applicants’ and
opposer’s clothing encompass all types of shirts, caps, t-
shirts (except sleeveless) and sweat shirts, and that they
are sold in the same channels of trade and to the same
classes of consumers. See Genesco Inc. v. Martz, 66 USPQ2d
1260 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994) (“Because the goods are legally identical,
they must be presumed to travel in the same channels of
trade, and be sold to the same class of purchasers.”).
This factor favors opposer.
III. Similarity of the Marks
We now consider the similarity of the marks, comparing
the marks in their entireties as to appearance, sound,
connotation and commercial impression in order to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
Because opposer’s mark is famous, it enjoys a wide latitude
of protection, and the degree of similarity between the
Opposition No. 91188789
9

marks necessary to support a conclusion of likely confusion
declines. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
1303, 1305 (Fed. Cir. 2002). The degree of similarity
required is also lessened in this case because the goods are
identical in part. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.
Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
With these principles in mind, we consider the marks,
not as they would compare if subjected to a side-by-side
comparison, but rather in terms of whether the marks are
sufficiently similar in their overall commercial impression
so that confusion as to the source of the goods offered
under the respective marks is likely to result. See San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1,3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpub’d, No. 92-1086 (Fed. Cir. June 5,
1992).
We find that the marks are similar in their overall
appearance. Both applicants’ and opposer’s marks start and
end with the same words “just” and “it.” Both are only
three words long. This gives the marks a similar look. As
Opposition No. 91188789
10

to pronunciation, the second term in applicants’ mark ends
in the vowel “u,” as does the middle word in opposer’s mark:
“do,” and both marks start and end with the same word, thus
the same sounds: JUST and IT. Applicants’ mark may be
pronounced “Just Jesuit,” varying only slightly the cadence
of opposer’s mark. In meaning, opposer has shown that its
mark has been viewed as a “battle cry.”8 The meaning of
applicants’ mark is ambiguous, not just as a three-term
phrase with a middle term that evokes “Jesus” (but appears
not to be itself an English word), but even when that middle
term “Jesu” is combined with “it” to form the word “Jesuit.”
Despite this ambiguity in the meaning of applicants’ mark,
the overall commercial impression of the parties’ marks is
similar because given the fame of opposer’s mark, the public
is likely to view applicants’ mark as similarly being a call
to action, even though it is unclear what action is being
urged. “[A] purchaser is less likely to perceive
differences from a famous mark.” B.V.D. Licensing v. Body
Action Design, 846 F.2d 727, 730, 6 USPQ2d 1719, 1722 (Fed.
Cir. 1988)(Nies, J., dissenting)(emphasis in original), and
quoted with approval in Kenner Parker Toys Inc. v. Rose Arts

8 See, e.g., Nicholas, Jonathan, Dump Dan? Nike Nearly Just
Did It, supra, “[Nike’s] slogan, ‘Just Do It,’ has become
the world’s best-known battle cry.”

Opposition No. 91188789
11

Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992).
Thus, despite the potential differences in meaning,
given the fame of opposer’s mark and the similarity of
appearance, pronunciation and overall commercial
impressions, we find the marks to be similar for likelihood
of confusion purposes.
Applicants argue that the marks are dissimilar in
appearance because their mark is to be used in conjunction
with a “crown of thorns.” This argument is unavailing. The
issue of likelihood of confusion must be decided based upon
a comparison of applicants’ mark as set forth in the
application and the cited registrations, and not upon a
comparison of applicants’ mark as it may appear on the
goods. See Ultracashmere House Ltd. v. Springs Mills Inc.,
4 USPQ2d 1252, 1254 (Fed. Cir. 1987).
To the extent applicants argue that their mark is a
protected parody, we note that parody is not a defense if
the marks would otherwise be considered confusingly similar.
See, e.g., Starbucks U.S. Brands, LLC and Starbucks
Corporation D.B.A. Starbucks Coffee Company v. Marshall S.
Ruben, 78 USPQ2d 1741, 1754 (TTAB 2006); Columbia Pictures
Industries, Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981)
(“The right of the public to use words in the English
Opposition No. 91188789
12

language in a humorous and parodic manner does not extend to
use of such words as trademarks if such use conflicts with
the prior use and/or registration of the substantially same
mark by another.”).
In this regard, we do not see, nor do applicants
explain, how JUST JESU IT parodies JUST DO IT. Thus, where,
as here, a defendant appropriates a trademarked symbol such
as a word or picture, not to parody the product or company
symbolized by the trademark, but only as a prominent means
to promote, satirize or poke fun at religion or religious
themes,9 this is not “parody” of a trademark. See Elvis
Presley Enterprises Inc. v. Capece, 141 F.3d 188, 46 USPQ2d
1737, 1745-46 (5th Cir. 1998); Dr. Seuss Enterprises L.P. v.
Penguin Books USA, Inc., 109 F.3d 1394, 42 USPQ2d 1184 (9th
Cir. 1977).
This factor weighs in opposer’s favor.
IV. Balancing the factors
Opposer’s famous mark, JUST DO IT, is entitled to a
wide scope of protection. See, e.g., Bose Corp. v. QSC
Audio Prod.’s Inc., 63 USPQ2d 1303, 1309 (Fed. Cir. 2002);
Recot Inc. v. M.C. Becton, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000)(“Famous marks are accorded more protection precisely

9 Applicants state their intent is to sell “humorous Jesus-themed
t-shirts and sweatshirts and other apparel….” Applicants’ Brief,
p. 1.
Opposition No. 91188789
13

because they are more likely to be remembered and associated
in the public mind than a weaker mark.”) The goods involved
are identical in part and are presumed to travel through the
same trade channels and be purchased by the same classes of
consumers. The marks are similar in their entireties,
giving due weight to their appearances, sound, meaning and
commercial impressions. In view of the foregoing, we find
that applicants’ mark JUST JESU IT is likely to cause
confusion with opposer’s mark JUST DO IT.
Although we have found sufficient basis for refusing
registration to applicants on this ground, for the sake
of completeness, we proceed to consider opposer’s dilution
claim, including consideration of opposer’s claim that its
mark JUST DO IT is not merely famous for our likelihood of
confusion analysis but also sufficiently famous to warrant
protection from dilution.
Dilution by Blurring

Opposer contends that applicants’ mark will dilute
opposer’s famous JUST DO IT mark under the Trademark
Dilution Revision Act of 2006 (“TDRA”), Trademark Act §
43(c), 15 U.S.C. § 1125(c), by blurring its distinctiveness.
Dilution by blurring is an “association arising from the
similarity between a mark or trade name and a famous mark
that impairs the distinctiveness of the famous mark,” 15
Opposition No. 91188789
14

U.S.C. §1125(c)(2)(B), and may be found “regardless of the
presence or absence of actual or likely confusion, of
competition, or of actual economic injury,” 15 U.S.C.
§1125(c)(1).
“When an application to register a mark is challenged
on grounds of dilution [by blurring], we look to three
elements: (1) whether the opposer’s mark is famous; (2)
whether the opposer’s mark became famous prior to the date
of the application to register the applicant’s mark; and (3)
whether the applicant’s mark is likely to blur the
distinctiveness of the opposer’s famous mark.” National
Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d
1479, 1494-5 (TTAB 2010).
I. Fame of Opposer’s JUST DO IT Mark

We first turn to the factor of fame. A mark is defined
under §1125(c)(2)(A) as “famous” for dilution purposes -
… if it is widely recognized by the general
consuming public of the United States as a
designation of source of the goods or services of
the mark’s owner. In determining whether a mark
possesses the requisite degree of recognition, the
court may consider all relevant factors, including
the following:

(i) The duration, extent, and geographic
reach of advertising and publicity of
the mark, whether advertised or
publicized by the owner or third
parties.

Opposition No. 91188789
15

(ii) The amount, volume, and geographic
extent of sales of goods or services
offered under the mark.

(iii) The extent of actual recognition
of the mark.

(iv) Whether the mark was registered
under the Act of March 3, 1881, or the
Act of February 20, 1905, or on the
principal register.

As noted supra, applicants have admitted that opposer’s
mark is famous for likelihood of confusion purposes.10 Even
under the “higher and more rigorous standard for dilution
fame required under the FTDA [Federal Trademark Dilution
Act],” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005), applicants have admitted the fame of
opposer’s mark. Applicants answered opposer’s interrogatory
No. 13 regarding applicants’ awareness of the mark JUST DO
IT with the response: “Who isn’t aware of Opposer’s Mark?
At least in the free world.” Applicants also answered
opposer’s request for production of documents regarding when
applicants first learned of opposer’s mark with the
response: “No such documents. Applicants don’t live under
a rock.”11

10 Opposer’s Second Notice of Reliance, Exhibit 2: Request for
Admissions, No. 4 seeks an admission that “Opposer’s mark “JUST DO
IT” is famous.” Response: “Admit.”
11 Opposer’s Request for Production of Documents, No. 20.
Opposition No. 91188789
16

We not only find applicants’ admission compelling, but
we also find that under the criteria set forth in the Act,
opposer has shown that its mark is famous for dilution
purposes. We examine these elements in turn.
A. Extent of Actual Recognition
Perhaps the most significant of the four elements set
forth in the Act to determine fame is the extent of actual
public recognition of the mark as a source-indicator for the
goods or services in connection with which it is used.
Here, third-party references to and discussions about the
mark JUST DO IT have been pervasive, reflecting the extreme
popularity of the mark and the message of compelled action
that it represents.12 The slogan has made its way into the
popular culture at all levels, as evidenced by the following
articles:
Where a procrastinator might once have been
advised, “A stitch in time saves nine,” now, a
young dawdler could be moved by the Nike
commercial tag line: “Just do it.”

Williams, Lena, For Advice, the Media as Mom, The New York
Times, August 2, 1989.

The most visible thing about Nike is its
marketing, not its matrix. The company’s “Just Do
It” advertising slogan is one of those rare gems
that have transcended advertising to enter popular
culture and language.

12 The probative value of the news articles is that they show how
the authors perceive, or refer to, opposer’s mark, and the
exposure of the public to the mark.
Opposition No. 91188789
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Cox, James, Shoes with an Attitude, USA Today, August 2,
1990.

There are other cultural trends moving in Perot’s
direction. At a time when Nike’s “Just do it” is
the advertising slogan of the age, Perot embodies
that desire in a multitude of ways.

Stark, Steven, Why Perot? No-Nonsense, Can-Do Savior,
Orlando Sentinel, June 9, 1992.

The vital difference between Warhol and
advertising is that advertising, because it has to
sell things, is, in the end, never ironic. The
deadpan image of an athletic shoe, combined with a
simple declarative Nike slogan like “Just Do It”
became a cultural phenomenon….

Lewis, Jo Ann, It’s Postmodern; and if you don’t get it, you
don’t get it, The Washington Post, March 27, 1994.

Nike dominates the U.S. athletic shoe industry,
testimony to a marketing machine so successful
that the company’s “Just Do It” slogan and
“swoosh” logo are part of U.S. pop culture.

Bloomberg Business News, Nike Just Does What Customers Want,
Plain Dealer (Cleveland, Ohio), January 6, 1996.

Wieden is the soft-spoken boss who brings a Zen
like calm to the breakneck business of leading the
world’s hottest advertising agency. He has helped
Nike become the world’s most recognizable brand.
Its slogan, “Just Do It,” has become the world’s
best-known battle cry.”

Nicholas, Jonathan, Dump Dan? Nike Nearly Just Did It, The
Sunday Oregonian, November 30, 1997.

Wieden & Kennedy crafted one memorable ad after
another for Nike, including one of the most
enduring slogans in advertising history: “Just Do
It.”

Sanders, Holly M., Nike Drops an Old Shoe – Longtime Ad Firm
Just Won’t Do It, The New York Post, March 14, 2007.
Opposition No. 91188789
18

No slogan encapsulated the spirit of 20th century
America better, perhaps, than Nike’s “Just Do It.”

Editorial, He Just Did it; Inventiveness put Nike’s Co-
founder on the Fast Track, Pittsburgh Post-Gazette, December
29, 1999.

Anyone who watches television learns to identify
products by their logos or advertising slogans.
We don’t need visuals to know that “Just do it!”
is associated with Nike,….

Rogers, Rick, Cruise in Comfort on Norwegian Ship, Daily
Oklahoman, October 1, 2000.

The recent rash of artists-in-ads represents a new
era in the ongoing evolution of the advertising
industry into a paragon of chic. … The trend began
in the 1980s, with a handful of stylish ads, such
as Apple’s “1984,” and accelerated in the 1990s,
with slogans such as Nike’s “Just Do It” becoming
centerpieces of pop culture.

Schoenberg, Nar, Trade Chic: Top stars join seller’s market;
they’re perfectly willing to plug products, The San Diego
Union-Tribune, May 26, 2002.

Nike’s ad campaigns, such as “Just Do It,” are
icons of pop culture.

McCarthy, Michael, Wake up consumers? Nike’s brash CEO dares
to just do it, USA Today, June 16, 2003.

It’s been 20 years since Portland ad man Dan
Wieden came up with the phrase “Do It,” attached
“Just” to the front and pitched the tagline to
lukewarm reception from Nike executives on the
losing side of a shoe war with Reebok. Today, the
eight-letter phrase is among the two or three
slogans rated most memorable in advertising
history, and Nike is the world’s largest sporting
goods maker.

Hunsberger, Brent, “Just Do It” tagline still gets it done,
The Oregonian, July 18, 2008.

Opposition No. 91188789
19

In addition to articles touting opposer’s success with
the mark JUST DO IT, opposer identified several independent
sources, described below, that identify the slogan as among
the most well known in the country, suggesting that, at the
very least, most consumers are familiar with the slogan.
In 1995, The Wirthlin Group, for the Association of
National Advertisers, “asked a representative sample of
1,002 people to recall, without any prompting, slogans and
celebrity endorsers. … The top slogans were Wendy’s (Where’s
the Beef?), followed by Alka-Seltzer (Plop, plop, fizz, fizz
…) and Nike (Just do It)….”13
In 1999, an “Historic Events and Pop Culture Survey,”
conducted by Colonial Williamsburg, an entity independent
from opposer, found that 79% of respondents correctly
identified opposer as the source of the “advertising slogan
‘Just Do It.’” See NASDAQ Stock Market Inc. v. Antartica
S.r.l., 69 USPQ2d 1718, 1737 (TTAB 1998)(75% recognition
among investors sufficient for finding of dilution).
Also in 1999, Advertising Age magazine came out with a
“special edition marking 100 years of the ad business,”
ranking JUST DO IT “No. 2 in its survey of the most

13 Casteaneda, Laura, Catchy Slogans Can Turn Splash into Cash,
The Dallas Morning News, August 21, 1995; Opposer’s Third Notice
of Reliance, Ex. 7.
Opposition No. 91188789
20

memorable slogans of the 20th Century – behind De Beers’
‘Diamonds are forever.’”14
And in 2008, Inc.com named the mark JUST DO IT one of
“The 10 Best Slogans of All Time.”15
The mark’s popularity resonates over a broad spectrum
of the public. Kids wear JUST DO IT t-shirts.16 A screen
shot from a Cleveland Cavaliers basketball fan site showing
basketball player LeBron James includes the following quote:
“The pre-game ritual of LeBron has become a symbol of the
ultimate JUST DO IT moment.”17 Books have been written about
the value of the mark to opposer.18

14 Hunsberger, Brent, Nike’s Seen Success From ‘Just Do It’ for 20
Years; Famous Slogan helped the Athletic Wear Company Surpass its
Rivals, The Post-Standard, July 27, 2008; Opposer’s Third Notice
of Reliance, Ex. 20.
15 Shell Dep., p. 20; Ex. 28. “This is a screen shot taken from
Inc.com … that was pulled from the Internet in February of 2009
and it lists JUST DO IT as one of the top slogans, top ten slogans
of all time.”
16 Thomashow Dep., p. 24. “It’s been my theory for a long time
that when you do an ad, one way to show how effective the ad is
[is] whether kids want a piece of it. [T]he fact that a kid will
spend 20 bucks to buy a T-shirt that has Michael and Bugs on it is
significant. … People are buying that slogan because they want a
piece of Nike’s marketing is the best way to say it.”
17 Shell Dep., p. 21. “It’s just an example of – says iconic
nature of JUST DO IT as it’s been rendered in advertising
including recent advertising.”
18 Robert Goldman & Stephen Papson, Nike Culture, p. 19 (1998);
and Donald Katz, JUST DO IT: The Nike Spirit in the Corporate
World (1994); Exs. 29-30. (Ms. Shell testified that “in this
profile of Nike as a business, this author chose to use JUST DO IT
as the title” and that the cover included “a very familiar print
ad similar to some of the original print ads from the campaign.”
Shell Dep., p 23.)
Opposition No. 91188789
21

There is widespread and extensive third-party
recognition of the mark.
B. Advertising and Publicity of the Mark
Over its 20-plus year lifespan, opposer has spent
approximately $6 billion in advertising the mark JUST DO
IT.19 Opposer has advertised in network and cable television
commercials and print advertising, including having produced
several award-winning ads, throughout the United States.20
Its print advertising has run in Elle, Runners World, Sports
Illustrated, Redbook, Esquire, Rolling Stone, Entertainment
Weekly, People and Time.21 Opposer’s advertising uses well-
known sports figures, such as Michael Jordan, John McEnroe,
Bo Jackson, Tiger Woods and LeBron James.22 Several of
opposer’s television commercials have been “put out on the
Internet.”23 The “Just Do It – ‘Bo Knows’ Campaign” has been
viewed on YouTube in excess of 200,000 times.24 A 2009 ad
campaign titled “Chalk Throw – Lebron Commercials” was made
into a video that has garnered over 840,000 views on
YouTube.25 And a television commercial featuring track and
field athlete Carl Lewis that was aired during the 2008

19 Sedler Dep., p. 44; Ex. 25.
20 Id., p. 42.
21 Id., p. 42; Exs. 20-24.
22 Sedler Dep., pp. 39-42; Exs. 23 and 24.
23 Id., p. 40; Ex. 23.
24 Id., p. 40.
25 Id., p. 41; Ex. 23.
Opposition No. 91188789
22

Olympics was watched, as of February 2009, over 1.2 million
times on YouTube.26
Opposer’s advertising campaign has been extensive and
widespread.
C. Sales of Shoes
In 2006, opposer started placing the JUST DO IT
trademark on the bottom of its corporate shoe boxes.27
Opposer distributes approximately 180 million shoe boxes in
a year and its use of the mark on shoe boxes has continued
through the present:
Q. And then if we extended that math through 2010
we would wind up over the past five years at 900
million shoe boxes. Correct?

A. Correct.28

D. Sales of Apparel and other Items
Since 1989, opposer has sold over 27 million units of
products, including t-shirts, that either bear the JUST DO
IT mark or include the mark (or “JDI”) “in the style name”
of the product.29 Opposer sold over 10,000 such products,
primarily clothing items, but also including backpacks,

26 Id., p. 43.
27 Id., p. 46.
28 Id., p. 47.
29 Schwartz Dep., pp. 12-16; Exs. 4-5. The deposition does not
clearly explain the reference to products that include the mark
“in the style name.”
Opposition No. 91188789
23

bags, bumper stickers, totes, and gymsacks.30 Net sales for
those products at the retail level approximate $175
million.31
Sales of products bearing the JUST DO IT mark have
occurred in every state in the United States.32
E. Registration of Opposer’s Mark.
The record reflects that opposer owns three
registrations for the mark JUST DO IT. These are:
Registration No. 1817919, registered in 1994; Registration
No. 1875307, registered in 1995; and Registration No.
1931937, registered in 1995. The evidence of record shows
that the mark has been registered, in each of the above
registrations, on the Principal Register as an inherently
distinctive mark without resort to Section 2(f) or subject
to a disclaimer of any elements of the mark. Moreover, as
the registrations are each over five years old, they are
incontestable and not subject to challenge under Trademark
Act § 2(e). Trademark Act § 14(3), 15 U.S.C. § 1064(3).
This factor favors opposer.
Based on an analysis of the above factors, we find that
opposer’s JUST DO IT mark is famous for dilution purposes.

30 Id., pp. 12-13; Ex. 4.
31 Id., p. 15; Ex 5.
32 Schwartz Dep., p. 16.
Opposition No. 91188789
24

II. When Did the Mark Become Famous?

Having found opposer’s mark to be famous, we must now
determine whether that fame attached to the mark prior to
any date upon which applicants may rely. Because applicants
have not started using their mark, the earliest date upon
which they may rely is August 5, 2008, the filing date of
their intent-to-use based application. See Citigroup Inc.
v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1650, fn.
13 (TTAB 2010), aff’d Citigroup Inc. v. Capital City Bank
Group Inc., 98 USPQ2d 1253 (Fed. Cir. 2011) (Intent-to-use
applicant asserting any use prior to its filing date is
required to plead such use as an affirmative defense to
dilution claim).
Opposer has established that it has been continuously
using its mark since it was introduced in 1989 and that the
mark became famous well before August 5, 2008. See for
example, various articles published long prior to
applicants’ filing date, including: Cox, James, Shoes with
an Attitude, USA Today, August 2, 1990, (“The company’s
‘Just Do It’ advertising slogan is one of those rare gems
that have transcended advertising to enter popular culture
and language”); Lewis, Jo Ann, It’s Postmodern; and if you
don’t get it, you don’t get it,” The Washington Post, March
27, 1994, (“a simple declarative Nike slogan like ‘Just Do
Opposition No. 91188789
25

It’ became a cultural phenomenon….”); Bloomberg Business
News, Nike Just Does What Customers Want, Plain Dealer
(Cleveland, Ohio), January 6, 1996, (“the company’s ‘Just Do
It’ slogan and ‘swoosh’ logo are part of U.S. pop
culture.”).
III. Likelihood of Dilution by Blurring
We now address the question of whether there is a
likelihood of dilution by blurring, that is, whether the
association arising from the similarity of the parties’
marks impairs the distinctiveness of opposer’s famous mark
under Trademark Act §43(c)(2)(B), 15 U.S.C. §
1125(c)(2)(B). We must determine not only whether there is
an “association” arising from the similarity of the marks,
but whether such association is likely to “impair” the
distinctiveness of the famous mark.
To do this, we look to the “relevant factors” test
provided by Section 43(c)(2)(B):
In determining whether a mark or trade name is
likely to cause dilution by blurring, the court
may consider all relevant factors, including the
following:

(i) The degree of similarity between the
mark or trade name and the famous mark.
(ii) The degree of inherent or acquired
distinctiveness of the famous mark.
(iii) The extent to which the owner of the
famous mark is engaging in
substantially exclusive use of the
mark.
Opposition No. 91188789
26

(iv) The degree of recognition of the famous
mark.
(v) Whether the user of the mark or trade
name intended to create an association
with the famous mark.
(vi) Any actual association between the mark
or trade name and the famous mark.

A. The Degree of Recognition of Opposer’s Mark
As has been discussed, the record shows that the mark
JUST DO IT is one of the most famous advertising slogans
created, and has been communicated “to wide demographic
segments, across gender, age and lifestyle categories.”33
The unaided surveys and other unsolicited media highlight
the broad spectrum of public recognition the mark enjoys,
and has enjoyed virtually from its inception. Opposer’s
continued long use and promotion of the brand have created
an extremely well-recognized mark.
B. The Extent to Which Opposer is Engaging in
Substantially Exclusive Use of the Mark.

Opposer has shown that it vigilantly enforces its
rights to the mark JUST DO IT. In addition, while opposer’s
business affairs department receives an “endless stream of
people”34 requesting to use the mark JUST DO IT, opposer
denies all requests for permission to use the mark without
regard to the underlying purpose to which the request

33 Opposer’s Brief, p. 9.
34 Thomashow Dep., p. 27.
Opposition No. 91188789
27

pertains,35 including requests for permission to use the mark
in connection with religious activities.36
Applicants, however, have introduced certified status
and title copies of four active (and one cancelled)
registrations for “JUST … IT” marks, which have been
registered for clothing, arguing that inasmuch as the U.S.
Patent and Trademark Office has permitted these
registrations to co-exist, there can be no valid basis for
denying applicants a registration. We disagree.
Third-party registrations have little probative value
by themselves because they tell us nothing about whether or
not the marks are actually being used or the manner of any
such use. Coach Services Inc. v. Triumph Learning LLC, 96
USPQ2d 1600, 1614 (TTAB 2010); see also Smith Bros. Mfg. Co.
v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations
reposing in the U.S. Patent and Trademark Office); In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Applicants have not submitted evidence or testimony to prove
that the third-party marks are in use. Without evidence as
to how, or whether, the third-party marks have been used, we

35 Id., p. 28.
36 Schwartz Dep., p. 19, Ex. 6.
Opposition No. 91188789
28

cannot assess whether any such use has been so widespread as
to have had an impact on consumer perceptions.
To the extent the registrations have been offered not
to establish use but to indicate that the phrase is a
commonly registered expression having a suggestive meaning,
we have considered the registrations for this purpose. In
this regard, the existence of the four active registrations
does not persuade us that the phrase “just … it” would be
considered a commonly registered element such that a mark
following this pattern but with a different middle term
would thereby be rendered, as a whole, distinguishable from
opposer’s famous mark. See Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d
unpub’d, No. 92-1086 (Fed. Cir. June 5, 1992).
This dilution factor favors opposer.
C. The Degree of Inherent or Acquired Distinctiveness
of Opposer’s Mark

As has been shown, opposer’s mark has attracted
widespread recognition and success as an indicator of source
of opposer’s goods. While the phrase “just do it” may have
the suggestive connotation of compelled action, it does not
appear to have any specific meaning in relation to opposer’s
goods. The mark is registered on the Principal Register
without resort to a claim of acquired distinctiveness under
Opposition No. 91188789
29

Section 2(f). In addition, there are no other uses of the
phrase by third parties revealed by the record. Opposer has
established that its mark is “so distinctive that the public
would associate the term with the owner of the famous mark
even when it encounters the term apart from the owner’s
goods or services.” Nasdaq, 69 USPQ2d at 1735, citing Toro
Co. v. ToroHead Inc., 61 USPQ2d 1164, 1177 (TTAB 2001).
This factor favors opposer.
D. The Degree of Similarity between the Marks
Under the Federal Trademark Dilution Act of 1996, the
predecessor to our current federal anti-dilution law, we
generally held that for a dilution claim to lie, a
defendant’s mark had to be “identical or very or
substantially similar” to plaintiff’s famous mark. See
e.g., Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1183 (TTAB
2001); Carefirst of Maryland Inc. v. FirstHealth of the
Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005), aff’d 81 USPQ2d
1919 (Fed. Cir. 2007); see also Citigroup Inc., 94 USPQ2d at
1667 (“for dilution to occur the marks must at least be
similar enough that a significant segment of the target
group of customers sees the two marks as essentially the
same”).
This approach reasoned that because dilution is an
extraordinary remedy, not only was dilution-level fame of
Opposition No. 91188789
30

the opposer’s mark required, but near identity of the marks.
Toro Co., 61 USPQ2d at 1174. This assessment was considered
consistent with the examples that were cited in the
legislative history of the Act, e.g., “Buick aspirin” and
“Kodak piano,” where the diluting mark was identical to the
owner’s famous mark. It also rested on the theory that
dilution equates to a form of appropriation of the mark
itself, not the use of a similar mark. See, e.g., Levi
Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d
1158, 1162, 97 USPQ2d 1947, 1952 (9th Cir. 2011); I.P. Lund
Trading ApS v. Kohler Co., 163 F.3d 27, 49 USPQ2d 1225, 1242
(1st Cir. 1998)(“[A]n entirely different issue is at stake—
not interference with the source signaling function but
rather protection from an appropriation of or free riding on
the investment [the mark owner] has made in its [mark].”).
With the passage of the Trademark Dilution Revision Act
of 2006, Congress took a different approach. While the
changes were made in direct response to the U.S. Supreme
Court’s 2003 decision in the Victoria’s Secret case,37
Congress chose not to merely amend the wording of that
portion of the Act addressing “actual dilution,” but also
made substantial changes to the scope of the law. “The 2006

37 Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 123 S.Ct.
1115, 155 L.Ed.2d 1, 65 USPQ2d 1801 (2003).
Opposition No. 91188789
31

law for the first time defined dilution by blurring and
created a multi-factor list of factors to determine
blurring.” 1 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 5:11 (4th ed. 2011). As explained by
the Ninth Circuit Court of Appeals:
Beginning with subsection (c)(1) of 15 U.S.C. §
1125, Congress provided that “the owner of a
famous mark ... shall be entitled to an injunction
against another person who ... commences use of a
mark or trade name in commerce that is likely to
cause dilution.” 15 U.S.C. § 1125(c) (emphasis
added). When referring to the junior mark,
Congress did not authorize an injunction against
another person who commences use of “the” mark;
use of the definite article “the” clearly would
have signaled that the junior mark had to be the
same as the senior. Instead, Congress employed
the indefinite article “a,” which indicates that
any number of unspecified, junior marks may be
likely to dilute the senior mark.

Turning to the language of subsection (c)(2)(B),
the TDRA defines “dilution by blurring” as the
“association arising from the similarity between a
mark and a trade name and a famous mark that
impairs the distinctiveness of the famous mark.”
Id. § 1125(c)(2)(B) (emphasis added). Congress did
not require an association arising from the
“substantial” similarity, “identity” or “near
identity” of the two marks. The word chosen by
Congress, “similarity,” sets forth a less
demanding standard than that employed by many
courts under the FTDA.

This analysis of the language of the statute, and
our comparison of this language with the now-
repealed statute, are further supported by
Congress's decision to employ, in subsection
(c)(2)(B), a non-exhaustive list of relevant
factors to determine when dilution has occurred.
Congress's implementation of such a methodology is
simply not compatible with a determination that
Opposition No. 91188789
32

identity, near identity or substantial similarity
are necessary to constitute a threshold showing
for relief under § 1125(c). Indeed, Congress
chose instead to make the “degree of similarity
between the mark or trade name and the famous
mark,” id. § 1125(c)(2)(B)(i) (emphasis added), to
be the first of the six (or more) relevant factors
to be considered.

Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633
F.3d 1158, 1171, 97 USPQ2d 1947, 1958 (9th Cir. 2011); see
also, Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588
F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009); and Tiffany (NJ)
Inc. v. eBay, Inc., 600 F.3d 93, 111 n. 18, 94 USPQ2d 1188,
1201 n. 18 (2d Cir. 2010) (“We have recently explained that
under the [TDRA] the similarity between the famous mark and
the allegedly blurring mark need not be ‘substantial’ in
order for the dilution by blurring claim to succeed.”)
The harm dilution does to the selling power of a mark
is not only caused by a third-party use or registration of
an identical mark. It may be caused by a “look-alike” mark,
one that is close enough to the famous mark that consumers
will recall the famous mark and be reminded of it, as this
Board has explained, “even if they do not believe that the
goods come from the famous mark’s owner”:
“Dilution occurs when consumers associate a
famous mark that has traditionally identified
the mark holder’s goods with a new and
different source.” Luigino's, Inc. v.
Stouffer Corp., 170 F.3d 827, 832, 50 USPQ2d
1047, 1051 (8th Cir. 1999). Therefore,
Opposition No. 91188789
33

blurring occurs when a substantial percentage
of consumers, upon seeing the junior party’s
use of a mark on its goods, are immediately
reminded of the famous mark and associate the
junior party’s use with the owner of the
famous mark, even if they do not believe that
the goods come from the famous mark’s owner.

Toro Co., 61 USPQ2d at 1183; see also Coach Services, 96
USPQ2d at 1612-13. The Board also noted in National Pork
Board, 96 USPQ2d at 1497, that:
When making a determination under the
Trademark Dilution Revision Act of 2005
(TDRA), after finding in the affirmative on
the question of pre-existing fame, an
important question in a dilution case is
whether the two involved marks are
sufficiently similar to trigger consumers to
conjure up a famous mark when confronted with
the second mark.

With this background, we now turn to a consideration of
the degree of similarity between applicants’ and opposer’s
marks in the dilution context. While we are not concerned
in this context with whether a likelihood of confusion
exists, we still consider the marks, not on the basis of a
side-by-side comparison, but rather in terms of whether the
marks are sufficiently similar in their overall commercial
impressions that the required association exists. Also, in
determining the similarity or dissimilarity of the marks,
“we will use the same test as for determining the similarity
or dissimilarity of the marks in the likelihood of confusion
analysis, that is, the similarity or dissimilarity of the
Opposition No. 91188789
34

marks in their entireties as to appearance, sound,
connotation and commercial impression.” Coach Services, 96
USPQ2d at 1613.
We have already found that the parties’ marks are
substantially similar such that when used on their
respective goods, consumer confusion is likely. Taking into
account the similarities of the marks, and the fame of
opposer’s mark, we find that applicants’ mark JUST JESU IT
is sufficiently similar to opposer’s mark JUST DO IT to
“trigger consumers to conjure up” opposer’s famous mark.
See National Pork, 96 USPQ2d at 1497. Upon encountering
applicants’ mark, consumers will be immediately reminded of
opposer’s JUST DO IT mark and associate applicants’ mark
with opposer’s mark. This factor favors opposer.
E. Any Actual Association Between The Parties’ Marks

There is no actual association between the parties’
marks, inasmuch as applicants have not yet used their mark
in commerce. This dilution factor is neutral.
F. Whether Applicants Intended to Create an
Association with Opposer’s Mark.

Applicants acknowledge that opposer’s mark is famous,
and that they were aware of opposer’s mark before seeking
Opposition No. 91188789
35

registration for their own.38 Nonetheless, there is no
direct evidence that applicants intended to create an
association with opposer’s famous mark. This factor is
neutral “but consistent with a likelihood of dilution by
blurring.” National Pork, 96 USPQ2d at 1498.
G. Other Relevant Factors
The TDRA provides for a consideration of “all relevant
factors,” including those specifically listed. Three
additional factors play a role in this case.
1. Size of Applicants’ Business
Applicants depict themselves as a small company,
contrast this with their characterization of opposer as a
large, powerful company, and argue that applicants’ use of
their mark for “humorous, religious-themed apparel”39 would
not harm opposer. There are two possible defenses being
raised by applicants’ arguments. The first is that
applicants are too small to cause any real harm to opposer.
The second is that applicants’ mark cannot impair the
distinctiveness of opposer’s mark because applicants’ mark
is merely a parody. We first address the size of
applicants’ business argument.

38 See applicants’ response to opposer’s interrogatory No. 13,
infra at 6.
39 Applicants’ Brief, p. 15.
Opposition No. 91188789
36

There is no evidence in the record that supports
applicants’ statement that they are “a very small company.”40
Even assuming the statement to be true, opposer has shown
that its mark is the type of “famous and distinctive” mark
that has already attracted multiple third parties attempting
to play off opposer’s mark.41 Were opposer to make an
exception to its policy not to allow third parties to use
marks of the structure “just … it” for any reason, opposer’s
mark’s ability to uniquely identify opposer as a single
source and thus maintain its selling power would be
impaired. See National Pork, 96 USPQ2d at 1497 (“Over time,
the gradual whittling away of distinctiveness will cause the
trademark holder to suffer ‘death by a thousand cuts.’); see
also, 4 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, § 24:120 (4th ed. 2011)(discussing the
issue of causation between defendant’s mark and likely
injury to the famous mark).
This defense does not assist applicants, and as a
factor weighs in opposer’s favor.

40 Id., p. 1.
41 As noted supra at p. 26, opposer has shown that it denies all
requests for permission to use the mark JUST DO IT without regard
to the underlying purpose to which the request pertains, including
requests for permission to use the mark in connection with
religious activities. The record also shows that opposer has
refused third-party requests to use variations of the mark, such
as “Just Ski It,” “Just Swim It,” and “Just Ride It” (Schwartz
Dep., p. 20) and “Just Live It” (Id., p. 21).
Opposition No. 91188789
37

2. Parody Defense
Applicants also argue that their mark is intended to
be “humorous.” To be considered a parody for trademark
dilution purposes, the mark must communicate “some
articulable element of satire, ridicule, joking, or
amusement” directed to the original mark. Louis Vuitton
Malletier S.A. v. Haute Diggity Dog LLC, 507 F. 3d 252, 84
USPQ2d 1969, 1973 (4th Cir. 2007) (CHEWY VUITON held to be
non-infringing parody of LOUIS VUITTON). Here, applicants
are not intending to use their mark to parody or to make
any type of social commentary regarding opposer, opposer’s
famous mark or opposer’s goods. Instead, they are seeking
to use their mark for religious social commentary, and
attempt to take a “free ride” on the mark’s association
with the famous mark for economic gain. This is not
protectable parody.
This defense does not assist applicants, and as a
factor weighs in opposer’s favor.
3. Relatedness of the Goods
The dilution doctrine was designed to provide a remedy
where the goods or services involved were neither
competitive nor necessarily related. However, the TDRA did
not preclude the application of the doctrine where goods are
related or competing. “[C]ourts have observed that ‘the
Opposition No. 91188789
38

closer the products are to one another [in the marketplace],
the greater the likelihood of both confusion and dilution.’”
Toro, 61 USPQ2d at 1184, n. 20, quoting Las Vegas Sports
News, 212 F.3d at 164, 54 USPQ2d at 1581, quoting, Nabisco
Brands, 191 F.3d at 222, 51 USPQ2d at 1882.
Here, the parties’ goods are in-part identical. This
factor favors opposer.
Balancing the Factors
Having considered all of the evidence properly of
record and all of the parties’ arguments, we find that the
balance of factors weighs in opposer’s favor. The marks
are sufficiently similar that an association between them
is established. Opposer’s mark is inherently distinctive
and the degree of public recognition of the mark is
extremely high. Opposer engages in substantially exclusive
use of its mark, policing unauthorized uses of its mark and
refusing permission to use it to all who ask. While there
does not appear to be an actual association between the
marks (nor could there be at present because applicants’
mark is not yet in use), and the record does not reflect a
bad faith intent on applicants’ part in adopting the mark,
these two factors do not outweigh the other dilution
factors. There is no evidence of record to support
applicants’ “small company” argument; its parody defense is
Opposition No. 91188789
39

inapposite, and the fact that the goods are in-part
identical further weighs in favor of a finding of
impairment.
Accordingly, we find that applicants’ mark is likely to
dilute opposer’s mark under Trademark Act § 43(c)(2)(B), 15
U.S.C. § 1125(c)(2)(B). Opposer has shown on this record
that its mark is famous, that it became famous prior to the
filing date of applicants’ application for their mark, and
that an association exists between the parties’ marks that
would impair the distinctiveness of opposer’s famous mark.
Decision: The opposition is sustained and registration
to applicant is refused.