Nike, Inc.v.Cheryl Bauman-Buffone

Trademark Trial and Appeal Board

Mar 20, 2019

OPP (T.T.A.B. Mar. 20, 2019)

Mailed: March 20, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Nike, Inc.
v.
Cheryl Bauman-Buffone
___
Opposition No. 91234556
___
Helen Hill Minsker, Audra C. Eidem Heinze and Kevin Dam
of Banner & Witcoff, Ltd. for Nike, Inc.

M. Scott Alprin, William J. Morris III and Asha E. Velay
of Alprin Law Offices, P.C. for Cheryl Bauman-Buffone.
______
Before Ritchie, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Cheryl Bauman-Buffone seeks registration of the mark JUST SAY IT
in the form shown below

for: “books” (in International Class 16), and “downloadable e-books” (in International
Class 9), both in “in the field of promoting healthy lifestyles encompassing physical,
This Opinion is not a
Precedent of the TTAB
Opposition No. 91234556
2
social, emotional and spiritual aspects of positive human oral communications.”1 In
its notice of opposition, Opposer Nike, Inc. alleges prior use of “the JUST DO IT Mark
as a slogan in highly successful advertising and promotional campaigns over the
course of many years,” and prior use and registration of JUST DO IT for clothing,2
footwear, bags3 and ancillary products, including eyeglass frames,4 cell phone cases5
and bottles sold empty.6 As grounds for opposition, Opposer alleges that use of
Applicant’s mark would be likely to cause confusion with, and dilute (by blurring),
Opposer’s mark. In her answer, Applicant denies the salient allegations in the notice
of opposition.
I. The ACR Stipulations, Record and Evidentiary Objections
The parties agreed to resolve this case via Accelerated Case Resolution (“ACR”),
including by waiving disclosures, discovery and expert testimony. They agreed to

1 Application Serial No. 86646019, filed May 29, 2015 under Section 44(d) of the Trademark
Act, 15 U.S.C. § 1126(d), and later amended to Section 44(e), 15 U.S.C. § 1126(e), based on
Canadian Registration No. TMA949786. The application includes this description of the
mark: “The mark consists of the wording ‘JustSayIt’ with the letters ‘Say’ in bold and with
the aperture inside the letter ‘A’ resembling the shape of a word bubble." Shortly before
Opposer’s ACR Brief and evidence was due, Applicant filed an unconsented motion to amend
the involved application’s identification of goods, 20 TTABVUE, consideration of which was
deferred until final decision. 31 TTABVUE. We address the motion to amend below in
comparing the parties’ goods.
2 Registration No. 1875307, issued January 24, 1995; renewed. This registration is for
“clothing, namely t-shirts, sweatshirts and caps.”
3 Registration No. 4764071, issued June 30, 2015. This registration is for “footwear;
headbands; headwear; pants; shorts; sports bras; tank tops; tights; warm up suits” and “all
purpose sport bags; backpacks.”
4 Registration No. 4350316, issued June 11, 2013; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged.
5 Registration No. 4704671, issued March 17, 2015.
6 Registration No. 4902036, issued February 16, 2016.
Opposition No. 91234556
3
submit their ACR trial briefs accompanied by supporting evidence, without requiring
notices of reliance for materials subject to Trademark Rule 2.122(g). 18 TTABVUE 37
(ACR Stipulation Section I ¶¶ 1-3). The parties also stipulated to certain facts,
including:
Opposer “is a leading sport and fitness company, and a
leading provider of a broad range of clothing, footwear,
sporting goods, athletic equipment, and related products
and services.”

Applicant “is a leading voice in the field of promoting
healthy lifestyles, which encompasses positive human oral
and written communications.”

Opposer has standing.

Opposer used its mark for the goods in its pleaded
registrations since before the involved application’s filing
date.

Opposer’s pleaded mark is “‘famous’ as that term is defined
by 15 U.S.C. § 1125(c)(2)(A),” and became famous before
the involved application’s filing date.

Applicant did not use her involved mark before filing the
involved application.

Id. at 4-7 (ACR Stipulation Section II ¶¶ 1-14).
The record also consists of the pleadings and, by operation of Trademark Rule
2.122(b), the file of Applicant’s involved application. In addition, Opposer introduced:
First Notice of Reliance (“NOR”) on printed publications
and Internet printouts. 22-23 TTABVUE.

7 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
Opposition No. 91234556
4

First Testimony Declaration of Jennifer Reynolds, its
Associate General Counsel, and the exhibits thereto
(“Reynolds Dec. I”). 24 TTABVUE.

Testimony Declaration of Melanie Sedler, its Senior
Trademark Paralegal, and the exhibits thereto (“Sedler
Dec.”). 25 and 27 TTABVUE.

Testimony Declaration of Timothy J. Haugh, a Senior
Litigation Paralegal with Opposer’s law firm, and the
exhibits thereto (“Haugh Dec.”). 26 TTABVUE.

Second Testimonial Declaration of Ms. Reynolds, and the
exhibits thereto (“Reynolds Dec. II”). 45 TTABVUE 31-55.

Second Testimonial Declaration of Mr. Haugh, and the
exhibits thereto (“Haugh Dec. II”). 45 TTABVUE 57-83.

Second NOR on portions of the file history of a third-party
application. 45 TTABVUE 85-97.

Applicant introduced:
Her own Testimony Declaration, and the exhibits thereto
(“App. Dec.”). 35-41 TTABVUE.

An Internet printout. 42 TTABVUE.

Cancelled and abandoned third-party applications and
registrations. 43 TTABVUE.

Opposer makes a number of “objections” to Applicant’s evidence. 45 TTABVUE
18-28. Most are not true evidentiary objections going to whether the evidence is
admissible, but are instead attacks on the credibility or probative value of the
evidence. For example, Opposer points out that materials submitted under
Trademark Rule 2.122(e) without accompanying testimony may not be considered for
Opposition No. 91234556
5
the truth of the matter asserted.8 Similarly, Opposer points out that generally
evidence from foreign sources to which United States consumers have not been
exposed should not be considered.9 Opposer also argues that Applicant’s testimony is
“self-serving,”10 and that it includes her opinions.11
To the extent the Internet printouts upon which Applicant relies were not
submitted in accordance with Board rules, they have not been considered. Otherwise,
suffice it to say, “we simply accord the evidence whatever probative value it deserves,
if any at all … Ultimately, the Board is capable of weighing the relevance and
strength or weakness of the objected-to testimony and evidence in this specific case,
including any inherent limitations, and this precludes the need to strike the
testimony and evidence.” Hunt Control Sys. Inc. v. Koninkijke Philips Electronics
N.V., 98 USPQ2d 1558, 1564 (TTAB 2011). See also Grote Indus., Inc. v. Truck-Lite
Co., LLC, 126 USPQ2d 1197, 1200 (TTAB 2018) (“We also remind the parties that
our proceedings are tried before judges not likely to be easily confused or prejudiced.
Objections to trial testimony on bases more relevant to jury trials are particularly
unnecessary in this forum.”) (citing U.S. Playing Card Co. v. Harbro LLC, 81 USPQ2d
1537, 1540 (TTAB 2006)); RxD Media, LLC v. IP Application Development LLC, 125
USPQ2d 1801, 1804 (TTAB 2018); Kohler Co. v. Honda Giken Kogyo K.K., 125

8 This has been established Board law for the better part of a decade with respect to Internet
printouts, and for at least several decades with respect to printed publications. Safer Inc. v.
OMS Inv. Inc., 94 USPQ2d 1031, 1037 n.14 and 1040 (TTAB 2010).
9 This is the Board’s general policy and practice.
10 This is one reason why parties have the option to cross-examine witnesses.
11 We are able to distinguish fact testimony from opinion testimony.
Opposition No. 91234556
6
USPQ2d 1468, 1478 (TTAB 2017) (quoting Luxco, Inc. v. Consejo Regulador del
Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017)). We have kept Opposer’s
“objections” in mind in considering and determining the probative value of
Applicant’s evidence.
II. Standing
Opposer’s pleaded registrations, made of record with its notice of opposition,
establish its standing, as does Applicant’s stipulation that Opposer has standing. 1
TTABVUE 12-39 (pleaded registrations); 18 TTABVUE 4 (ACR Stipulation Section
II ¶ 3) (stipulation). See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
III. Priority
Because Applicant has not counterclaimed to cancel any of Opposer’s pleaded
registrations, priority is not at issue with respect to the mark and goods identified
therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974). In any event, Opposer has established, and Applicant has
stipulated to, Opposer’s prior common law use of its pleaded mark for the goods
identified in its pleaded registrations. 24 TTABVUE 4-7 (Reynolds Dec. I ¶¶ 5-15); 18
TTABVUE 6 (ACR Stipulation Section II ¶ 7).
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
Opposition No. 91234556
7
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). Opposer bears the burden of establishing that there is a
likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d
at 1848. We consider the likelihood of confusion factors about which there is evidence,
and treat the remaining factors as neutral.
A. The Strength/Fame of Opposer’s Mark
The parties stipulate that “NIKE’S JUST DO IT trademark is ‘famous’ as that
term is defined by 15 U.S.C. § 1125(c)(2)(A).” 18 TTABVUE 6 (ACR Stipulation
Section II ¶ 10). That is the section of the Lanham Act which defines “fame” for
purposes of dilution claims. This stipulation as to dilution fame (and the evidence
discussed below) also establishes that Opposer’s JUST DO IT mark is strong and
famous for purposes of Opposer’s likelihood of confusion claim, and that the mark is
entitled to a broad scope of protection against confusion. Coach Services Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1724 (Fed. Cir. 2012)
(“Fame for likelihood of confusion and fame for dilution are distinct concepts, and
dilution fame requires a more stringent showing.”); Cf. Joseph Phelps Vineyards, LLC
v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Opposition No. 91234556
8
In fact, where fame exists, as it does here, it “plays a ‘dominant role in the process
of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude
of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000)). A strong mark “casts a long shadow which
competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
While consumer surveys may provide direct evidence of fame, they are not
necessary; indeed, they “rarely appear.” Bose, 63 USPQ2d at 1305. Rather, “fame of
a mark may be measured indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the mark, and by the length of
time those indicia of commercial awareness have been evident.” Id. Other relevant
factors include “length of use of the mark, market share, brand awareness, licensing
activities, and variety of goods bearing the mark.” Coach Servs., 101 USPQ2d at 1720.
Here, given Applicant’s admission that JUST DO IT is a famous mark, we need
not belabor the point, but some perspective is nevertheless in order as we consider
whether there is a likelihood of confusion, because “likelihood of confusion fame
‘varies along a spectrum from very strong to very weak.” Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059,
1063 (Fed. Cir. 2003)). See also, Joseph Phelps Vineyards, 122 USPQ2d at 1734-35. It
would be an understatement to deem Opposer’s pleaded mark merely “very strong.”
Opposition No. 91234556
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In fact, JUST DO IT is a household name (or phrase), and so strong that
Advertising Age magazine deemed it the first runner-up to “Diamonds Are Forever”
as the 20th century’s “Top Ad Slogan.” 23 TTABVUE 8; see also 26 TTABVUE 9, 267-
271 (Haugh Dec. ¶ 16 and Ex. D-15). The Center for Applied Research conducted a
case study on Opposer’s pleaded mark ─ which it described as “one of the most famous
and easily recognized slogans in advertising history” ─ and found that “[t]he Nike
brand has become so strong as to place it in the rarified air of recession-proof
consumer branded giants, in the company of Coca-Cola, Gillette and Proctor &
Gamble.” 24 TTABVUE 8, 199-201 (Reynolds Dec. I ¶ 18 and Ex. B-3). A third party’s
1999 “Historic Events” survey asked 1,000 respondents which company uses the
“advertising slogan ‘Just Do It’,” and 79% correctly identified Opposer. Id. at 8, 204,
207 (Reynolds Dec. I ¶ 19 and Ex. B-4). Opposer’s JUST DO IT ads have featured,
among many others, Michael Jordan, Bo Jackson, Carl Lewis, Tiger Woods, LeBron
James and Serena Williams. 25 TTABVUE 13 (Sedler Dec. ¶ 30). Opposer uses JUST
DO IT on Facebook, where it has 29 million followers; Twitter, where it has seven
million followers; and Instagram, where it has 76 million followers. Id. at 15-16
(Sedler Dec. ¶¶ 34-36). Between 1989-2008, Opposer spent approximately $5 billion
advertising the JUST DO IT mark in the United States. Id. at 16 (Sedler Dec. ¶ 38).
Opposition No. 91234556
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In addition, the following excerpts from printed publications, spanning decades,
reveal public perceptions concerning the strength of Opposer’s pleaded mark12:
“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.” 22 TTABVUE 75
(James Cox, “Shoes With An Attitude; Nike Walks All Over
Its Competition; Confidence Keeps Firm Running,” USA
Today Aug. 2, 1990).

“But when it comes to great ads, Nike has gotten all the
airtime. Their star-filled ads are virtual news events and
their slogans – from ‘Just do it’ to ‘Bo knows’ – quickly
become buzzwords.” Id. at 87 (Martha T. Moore, “Reebok
Ads ‘Play Hard,’” USA Today Aug. 2, 1991).

“Many ad executives cite the 6-year old Nike slogan, ‘Just
Do It’ as among the most effective and easy-to-remember
modern slogans. ‘It’s a tremendous call to action,’ said Tony
DeGregorio, chief creative officer at Lintas: New York.” Id.
at 99 (Harry Berkowitz, “Credo for Slogans: Life is Short;
The Catch Words for Ad Campaigns Aren’t Always
Enduring, But Analysts Say Mottos are Important as
Brand Names Depend More on Strong Identities, Orlando
Sentinel May 30, 1993).

“Newlywed John F. Kennedy Jr. delighted an ad luncheon
crowd in Portland, Ore., with quips about his new wife,
Carolyn, including that she ‘let me keep my maiden name.’
Nike’s famous slogan, he said, convinced him to take the
wedding plunge.” Id. at 150 (“People Watch,” Fort Worth
Star-Telegram Oct. 20, 1996).

“Nike’s ad campaigns, such as ‘Just Do It,’ are icons of pop
culture.” 23 TTABVUE 56 (Michael McCarthy, “Wake Up
Consumers? Nike’s Brash CEO Dares to Just Do It,” USA
Today June 16, 2003).

12 We have not considered any of these articles for the truth of the matters asserted therein,
but instead for what they show about the publications’, authors’, and consumers’ perceptions
of the term, and what people are reported to have said about it.
Opposition No. 91234556
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“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.” Id. at
104 (Brent Hunsberger, “‘Just Do It’ Tagline Still Gets It
Done,” The Oregonian July 18, 2008).

The Board has previously found that Opposer’s JUST DO IT mark is famous, on a
partially identical record of fame. Nike Inc. v. Maher, 100 USPQ2d 1018, 1024-27
(TTAB 2011).
This evidence establishes that JUST DO IT is not only famous for purposes of both
of Opposer’s claims, but exceedingly so. It is entitled to the highest level of protection
against confusion. This factor weighs quite heavily in favor of finding a likelihood of
confusion.
B. Similarity of the Marks
Opposer’s mark JUST DO IT and Applicant’s mark share many
important attributes. They each consist of three short words, beginning with JUST
and ending with IT. They both take the form of commands. They are both nonspecific
as to what the IT, the thing to be done or said, may be, and they both convey the idea
of not thinking or hesitating too much, but instead simply acting, either by doing or
saying.
The main dissimilarity between the marks is that the middle word in Opposer’s
mark is DO while the middle word in Applicant’s mark is SAY. But both DO and SAY
Opposition No. 91234556
12
are verbs, with DO being more general, in that it conveys performing an action of
some unspecified type.13 The verb SAY is more specific, and means to speak.14 Thus,
the command JUST DO IT could implore the listener to SAY something, depending
on the circumstances. Furthermore, we do not need evidence to know that “saying” is
often a precursor to “doing.” For example, people often talk about or “say” what their
intentions are before performing or “doing” the act. The common expression “actions
speak louder than words” also suggests that there is some relationship between the
two terms. In short, while DO and SAY look and sound different, their meanings are
not necessarily significantly different in the context of being commanded to take some
action. See generally, Nike, Inc. v. Maher, 100 USPQ2d at 1022-23 (finding JUST
JESU IT confusingly similar to JUST DO IT).
The stylization of Applicant’s mark is essentially irrelevant, because Opposer’s
mark is registered in standard characters and typed forms, and could be displayed in
any font or size, including in a manner similar to Applicant’s display of JUST SAY
IT. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012).
Nor is the small, minor design element in Applicant’s mark sufficient to
distinguish it from Opposer’s mark. In fact, the design merely forms a part of the
letter “a” in Applicant’s mark. It also contributes little to the mark’s overall
commercial impression ─ because Applicant identifies the design as a “word bubble,”

13 http://www.dictionary.com/browse/do. We may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
14 http://www.dictionary.com/browse/say?s=t.
Opposition No. 91234556
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it is at best suggestive of the term “say” and highlights its meaning. See also In re
Viterra, 101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely
will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a
design, then the word is normally accorded greater weight because it would be used
by purchasers to request the goods or services” and “because applicant’s mark shares
with registrant’s mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar”).
Applicant argues, and introduces evidence, that JUST SAY IT is a common
English phrase. Even if we accept this premise, we disagree with the conclusion which
Applicant draws from it, “that a reasonable person and a relevant consumer of
Applicant’s goods would NOT make an association with Nike (or its ‘Just Do It’ brand)
when encountering” Applicant’s mark. 44 TTABVUE 21 (Applicant’s ACR Brief at
17).
Indeed, for the most part Applicant’s evidence merely reveals that “just say it” is
often used descriptively, or as, for example, a song lyric, a film, book, song, sermon or
article title, a request for comments on Reddit, or ornamentation on products bearing
different marks. 36 TTABVUE 1-140. However, there are only a handful of even
arguable trademark uses of JUST SAY IT, including: use as the trade name for a
marketing company and a shirt and sign company; as part of the trade name JUST
SAY IT WITH COOKIES; as a trademark for a “charades party game;” and as a
service mark for a radio program. Id. at 26-30, 43, 44, 100-107, 127. Even if these are
Opposition No. 91234556
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all valid trademark uses of JUST SAY IT, none of the goods or services offered under
the mark are related to those at issue here. See In re i.am.symbolic, LLC, 866 F.3d
1315, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017) (“Symbolic has not pointed to any
record evidence to support a finding that multiple third parties use the mark I AM
for the listed goods in its class 3 and 9 applications.”); Century 21 Real Estate Corp.
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“The
relevant du Pont inquiry is ‘[t]he number and nature of similar marks in use on
similar goods’ … It is less relevant that ‘Century is used on unrelated goods or
services such as ‘Century Dental Centers’ or ‘Century Seafoods.’”) (quoting Weiss
Assocs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)).
Moreover, Applicant presented no evidence regarding how many consumers have
been exposed to these trade name or trademark uses of JUST SAY IT, and the
evidence is simply too limited, quantitatively and qualitatively, for us to conclude
that “the connotation and commercial impression of Applicant’s Mark do not point
toward an association with Nike.” 44 TTABVUE 24 (Applicant’s ACR Brief at 20). As
Opposer points out, the vast majority of Applicant’s evidence reveals nothing more
than “everyday language” uses of “just say it.”
When we compare the marks in their entireties, we find that they are more similar
than dissimilar, in how they look and sound and in the meaning they convey. This
similarity is particularly significant in this case given how famous and strong
Opposer’s mark is. This factor also weighs in favor of finding a likelihood of confusion.
Opposition No. 91234556
15
C. The Goods, Channels of Trade, Classes of Consumers and Variety of
Goods Sold Under Opposer’s Mark
Before addressing these factors, we first consider Applicant’s pending
unconsented motion to amend its application.
1. Applicant’s Motion to Amend Its Identification of Goods
Applicant seeks to amend its identification of goods in both classes by indicating
that the various aspects of oral communication discussed in her books are
“interconnected,” as follows:
From: “downloadable e-books in the field of promoting
healthy lifestyles encompassing physical, social, emotional
and spiritual aspects of positive human oral
communications” (in International Class 9)

To: “downloadable e-books in the field of promoting
healthy lifestyles encompassing the interconnected
physical, social, emotional and spiritual aspects of positive
human oral communications” (in International Class 9);

and

From: “books in the field of promoting healthy lifestyles
encompassing physical, social, emotional and spiritual
aspects of positive human oral communications” (in
International Class 16)

To: “books in the field of promoting healthy lifestyles
encompassing the interconnected physical, social,
emotional and spiritual aspects of positive human oral
communications” (in International Class 16).

The motion is denied, because even if the amendment is limiting as required by
Trademark Rule 2.71(a), it would not avoid the likelihood of consumer confusion or
dilution. Cf. Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828
(TTAB 2013) (“In order for such an affirmative defense to be considered, it must be
Opposition No. 91234556
16
promptly asserted … with an explanation or allegation as to how the restriction
alleviates the likelihood of confusion.”) In fact, whether the “physical, social,
emotional and spiritual aspects of positive human oral communications” discussed in
Applicant’s books are “interconnected” or disconnected, Applicant’s books and e-books
would still be in the same field, and targeted to the same consumers. Accordingly, in
this decision we analyze Applicant’s identification of goods without the proposed
amendment, and point out where appropriate that even if we had considered the
goods with the proposed amendment, the ultimate result on both of Opposer’s claims
would be the same.
2. The Goods
As we consider the goods, we keep in mind that fame remains “a dominant factor
in the likelihood of confusion analysis … independent of the consideration of the
relatedness of the goods.” Recot, 54 USPQ2d at 1898. That is, “when a product reaches
the marketplace under a famous mark, special care is necessary to appreciate that
products not closely related may nonetheless be confused as to source by the
consumer because of the fame of the mark.” Bose Corp., 63 USPQ2d at 1310. As held
in Recot:
… We think that the Board’s rule—that the fame of the
FRITO-LAY marks extends no further than the products
with which the marks are currently used— undercuts the
legal standard of protection for famous marks. Famous
marks are accorded more protection precisely because they
are more likely to be remembered and associated in the
public mind than a weaker mark. See Kenner Parker, 963
F.2d at 352, 22 USPQ2d at 1455-56. For this reason, this
court emphasizes: “When an opposer’s trademark is a
strong, famous mark, it can never be “of little
consequence.” The fame of a trademark may affect the
Opposition No. 91234556
17
likelihood purchasers will be confused inasmuch as less
care may be taken in purchasing a product under a famous
name.” Specialty Brands, Inc. v. Coffee Bean Distribs., Inc.
, 748 F.2d 669, 675, 218 USPQ 1281, 1284 (Fed. Cir.
1984); cf. Kenner Parker, 963 F.3d at 354, 22 USPQ2d at
1457 (stating that the fame of a mark does not “cut both
ways” in the analysis of the likelihood of confusion).

This reasoning applies with equal force when
evaluating the likelihood of confusion between marks that
are used with goods that are not closely related, because
the fame of a mark may also affect the likelihood that
consumers will be confused when purchasing these
products. Indeed, it is precisely these circumstances which
demand great vigilance on the part of a competitor who is
approaching a famous mark, for, as the present case
illustrates, the lure of undercutting or discounting the
fame of a mark is especially seductive … Accordingly, we
hold that the fame of the mark must always be accorded
full weight when determining the likelihood of confusion.
When a famous mark is at issue, a competitor must pause
to consider carefully whether the fame of the mark,
accorded its full weight, casts a “long shadow which
competitors must avoid.” Kenner Parker, 963 F.3d at 353,
22 USPQ2d at 1457; see also Nina Ricci S.A.R.L. v. E.T.F.
Enters. , 889 F.2d 1070, 1074, 12 USPQ2d 1091, 1094 (Fed.
Cir. 1989) (“There is no excuse for even approaching the
well-known trademark of a competitor” (internal
quotations omitted).).

Recot, 54 USPQ2d at 1897-98.
We are also mindful that the goods need not be identical or even competitive in
order to find likelihood of confusion. Rather, the question is whether the goods are
marketed in a manner that “could give rise to the mistaken belief that [the] goods
emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven
Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Packard Co.
v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even
Opposition No. 91234556
18
if the goods and services in question are not identical, the consuming public may
perceive them as related enough to cause confusion about the source or origin of the
goods and services.”); Recot, 54 USPQ2d at 1898 (“even 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”); Kohler Co.
v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007).
Here, there is a relationship between the goods. Applicant’s books are focused on
“healthy lifestyles encompassing physical … aspects of positive human oral
communications” (emphasis added). Because Applicant’s identification does not
specify what the “physical” aspects of oral communications are, we must presume
that they could encompass a variety of physical activities, perhaps, under certain
circumstances, including physical activities for which Opposer’s goods are intended
to be used. Opposer has established prior use of its mark not only for a variety of
goods related to healthy lifestyles, but more specifically the physical aspects of being
healthy, such as working out and playing sports.
Moreover, and perhaps more importantly, sports clothing and sports-related
equipment are not the only goods and services Opposer provides which relate to
“healthy lifestyles” and their “physical” aspects. Like Applicant, Opposer also
provides, albeit through different mediums of communication, information related to
healthy lifestyles (and the physical aspects thereof). Specifically, Opposer uses its
JUST DO IT mark in connection with information provided not through books or e-
Opposition No. 91234556
19
books, but through its NIKE+ Run Club and NIKE Training Club mobile applications,
screenshots of which are depicted below:

26 TTABVUE 6, 151, 164, 166 (Haugh Dec. ¶ 8 and Ex. D-7). While Applicant
provides its information through books and e-books rather than mobile apps, there
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20
is not necessarily any substantive difference between information provided through
books, and especially e-books, on the one hand, and mobile apps on the other.15
Furthermore, while Opposer’s focus is on sports and physical fitness, it also uses
JUST DO IT in connection with social, emotional and spiritual aspects of human
communications, and this is recognized in the media and by the public at large. As
Ms. Reynolds testifies: “In September 2018, NIKE released an advertising campaign
to celebrate the 30th anniversary of its JUST DO IT mark … This campaign included
advertisements featuring athletes along with thought-provoking messages directed
to various issues, such as ability, race, gender, and other social issues.” 45 TTABVUE
32 (Reynolds Dec. II ¶ 7). For example, the billboard on the left depicts LeBron James
and the JUST DO IT mark in connection with “changing the world” and the billboard
on the right depicts Colin Kaepernick and the JUST DO IT mark in connection with
“believing in something” and “sacrificing everything”:

15 Whether the physical and other aspects of positive human oral communications are
interconnected or not is irrelevant to whether the healthy lifestyle information Applicant
provides through e-books and other books is related to the healthy lifestyle information
Opposer provides through mobile apps.
Opposition No. 91234556
21

Id. at 37, (Reynolds Dec. II Ex. E-1). An article in Adweek specifically discusses
Opposer’s use of JUST DO IT in connection with oral communications and their social
aspects:
Nike’s marketing has historically started conversations
about tough subjects from ageism to Title IX and HIV. And
its 30th anniversary celebration of its ‘Just do it’ tagline
doesn’t stray from that tradition. The brand’s black-and-
white, close-up photo of football player Colin Kaepernick,
with the words ‘Believe in something. Even if it means
sacrificing everything,” and the two-minute spot that ran
during the first game of the NFL season ignited a social
media firestorm.

Id. at 57, 60-62 (Diana Pearl, “As Nike Controls the Conversation With Its
Kaepernick Ad, the NFL Must Decide What It Stands For,” Adweek Sept. 9, 2018)
(Haugh Dec. ¶ 3 and Ex. F-1) (emphasis added). Similarly, an article on CNBC
specifically discusses Opposer’s use of JUST DO IT in connection with “shaping
conversations”:
Opposition No. 91234556
22
Kaepernick is just one of several athletes-turned-
changemakers that Nike will spotlight in its latest ‘Just Do
It’ campaign. Other athletes include Serena Williams,
LeBron James, Odell Beckham Jr., Lacey Baker and
Shaquem Griffin, all known for pushing barriers and
shaping conversations on race, gender and ability.

Id. at 57-58, 65-75 (Zameena Mejia, “Meet the Changemakers in Nike’s Controversial
New ‘Just Do It’ Campaign,” cnbc.com, Sept. 6, 2018) (Haugh Dec. ¶ 4 and Ex. F-2)
(emphasis added). While Opposer’s use of JUST DO IT in connection with social
issues and oral communications might be intended to ultimately increase shoe and
clothing sales, consumers may very well nevertheless believe that Applicant’s books
and e-books are an extension of Opposer’s JUST DO IT advertising campaigns.
There is no evidence that Opposer uses JUST DO IT in connection with books, but
its mobile apps and advertising campaigns relate to some of the same subject matter
as Applicant’s books and e-books, including “healthy lifestyles encompassing
physical, social … aspects” of “positive human oral communications.” There is no
evidence or reason to believe that consumers seeking information on particular topics
would necessarily limit themselves to books/e-books or mobile apps; rather, they could
choose one product or the other, or both, depending on their needs. In any event, given
the widespread use and fame of Opposer’s iconic mark, Applicant’s use of a similar
mark for goods which bear at least some relationship to Opposer’s goods could give
rise to the mistaken belief that the parties’ goods emanate from the same source. This
factor also weighs in favor of finding a likelihood of confusion.
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23
3. Channels of Trade
While the parties both provide information about and support “healthy lifestyles”
and “oral communications,” there is not sufficient evidence of record for us to find
that the channels of trade overlap. This factor therefore weighs against a finding of
likelihood of confusion.
4. Classes of Consumers
On the other hand, we find that the classes of consumers overlap in part.
Consumers of Opposer’s and Applicant’s products are focused on “healthy lifestyles,”
including the physical aspects thereof. Like Applicant, Opposer provides information
about healthy lifestyles and the physical aspects thereof, albeit in a different
medium.16 It is likely that some consumers of Applicant’s books and e-books would be
interested in the types of messages conveyed by Opposer’s advertising campaign
associated with JUST DO IT’s 30th anniversary. This factor weighs in favor of a
finding of likelihood of confusion.
5. Variety of Goods Offered Under Opposer’s Mark
The Ninth du Pont factor is “the variety of goods on which a mark is or is not
used.” In re E.I. du Pont, 177 USPQ at 567. Here, Opposer uses its mark, for, at the
very least, many types of clothing (including shirts, hats, footwear, pants, bras and
warm up suits), sport bags and backpacks, bottles sold empty, cases for cell phones

16 The difference between mobile apps and e-books may not always be clear (or substantive).

Opposition No. 91234556
24
and computing devices, and eyewear, including eyeglass frames and sunglasses. The
difference between bottles and eyewear on the one hand and Opposer’s core clothing
and footwear products on the other may appear no greater to relevant consumers
than the difference between books and clothing products. Moreover, Opposer’s mark
is exceedingly famous, and in fact ubiquitous. Under these circumstances, consumers
could very well believe that having used its mark on far-flung products such as
eyewear and cases for computing devices, Opposer also uses it on e-books or
traditional books. In an analogous case, we found toy vehicles related to collateral
products offered by a record company, because “[i]t requires no stretch of the
imagination for consumers to believe that these varied collateral goods could
reasonably include toy cars … particularly in view of the fame of opposer’s MOTOWN
marks in connection with its music and entertainment services.” UMG Recordings
Inc. v. Mattel Inc., 100 USPQ2d 1868, 1884 (TTAB 2011). See also Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1271 (TTAB 2003) (“this factor may favor a finding that
confusion is likely even if the goods are not obviously related”); Uncle Ben’s Inc. v.
Stubenberg Int’l Inc., 47 USPQ2d 1310, 1313 (TTAB 1998) (“Section 2(d) of the
Trademark Act also covers situations where the public, because of the similarity of
the marks, is likely to believe that a recognizably different product, because of the
similarity of the marks, emanates from, or is authorized, sponsored or licensed by the
prior user or registrant.”). This factor weighs in favor of finding a likelihood of
confusion.
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25
D. Conclusion Regarding Likelihood of Confusion
While there is no evidence of overlapping trade channels, all of the other du Pont
factors about which there is evidence weigh in favor of finding a likelihood of
confusion. Indeed, Opposer’s mark enjoys the highest level of fame and broadest scope
of protection, the marks are similar, the goods are related, the classes of consumers
overlap in part and Opposer is known to offer a variety of goods under its mark.
Confusion is likely.
V. Dilution
Opposer alleges dilution by blurring. 21 TTABVUE 31 (Opposer’s ACR Brief at
25). To prevail, it “must show that: (1) it owns a famous mark that is distinctive; (2)
the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s
famous mark; (3) the defendant’s use of its mark began after the plaintiff’s mark
became famous; and (4) the defendant’s use of its mark is likely to cause dilution by
blurring ….” Coach Servs., 101 USPQ2d at 1723-24. As discussed above, Opposer has
established and Applicant has conceded the first three elements, leaving only the
question of whether Applicant’s use is likely to cause dilution by blurring.
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.” Id. at 1724 (quoting 15 U.S.C. § 1125(c)(2)(B)). It “occurs when a substantial
percentage of consumers, on seeing the junior party’s mark on its goods, are
immediately reminded of the famous mark and associate the junior party’s mark with
the owner of the famous mark, even if they do not believe that the goods emanate
Opposition No. 91234556
26
from the famous mark’s owner.” N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114
USPQ2d 1497, 1509 (TTAB 2015). The concern is that “the gradual whittling away of
distinctiveness will cause the trademark holder to suffer ‘death by a thousand cuts.’”
Nat’l Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1497 (TTAB
2010) (citation omitted). See also, Enterprise Rent-A-Car Co. v. Advantage Rent-A-
Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1816 (“dilution law is intended to protect
a mark’s owner from dilution of the mark’s value and uniqueness”). Blurring may
occur “regardless of the presence or absence of actual or likely confusion, of
competition, or of actual economic injury.” Omega SA (Omega AG) (Omega Ltd.) v.
Alpha Phi Omega, 118 USPQ2d 1289, 1298 (TTAB 2016) (quoting 15 U.S.C.
§ 1125(c)).
To determine whether Applicant’s use of her mark is likely to cause dilution by
blurring, we consider:
the degree of similarity between her mark and
Opposer’s famous mark;

the degree of inherent or acquired distinctiveness of
Opposer’s mark;

the extent to which Opposer is engaging in
substantially exclusive use of its mark;

the degree of recognition of Opposer’s mark;

whether Applicant intended to create an association
with Opposer’s JUST DO IT mark; and

any actual association between Applicant’s mark and
Opposer’s mark.

15 U.S.C. § 1125(c)(2)(B)(i-vi).
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27
A. Similarity of the Marks
For the reasons stated in connection with Opposer’s likelihood of confusion claim,
the marks are similar. As a result of the marks’ similarity, and especially their
structure, cadence and essential nature (commands/calls to action), Applicant’s mark
will cause consumers to “conjure up” Opposer’s famous mark, and “associate the two.”
N.Y. Yankees, 114 USPQ2d at 1507. As we held in the Maher case with respect to
JUST JESU IT, “[u]pon encountering applicants’ mark, consumers will be
immediately reminded of opposer’s JUST DO IT mark and associate applicants’ mark
with opposer’s mark.” Nike Inc. v. Maher, 100 USPQ2d at 1030. This factor weighs in
favor of finding a likelihood of dilution.
B. The Degree of Distinctiveness of Opposer’s Mark
There is no evidence or basis upon which to find that Opposer’s mark is anything
other than inherently distinctive, and in the Maher case we found that it is inherently
distinctive on a partially identical record. Nike Inc. v. Maher, 100 USPQ2d at 1028.
In any event, “[e]ven if the mark is not viewed as inherently distinctive, we found
above that the mark is famous, which necessarily subsumes a finding that the mark
has high acquired distinctiveness. This factor favors a likelihood of dilution.” N.Y.
Yankees P’ship, 114 USPQ2d at 1507. See also, Chanel, Inc. v. Majarczyk, 110
USPQ2d 2013, 2025 (TTAB 2014) (“In any event, the discussion above regarding
opposer’s extensive evidence of fame of the CHANEL mark used in connection with
clothing, fashion accessories, beauty products and boutiques more than sufficiently
establishes that opposer’s CHANEL mark has acquired a high degree of
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28
distinctiveness among consumers.”). This factor also weighs in favor of finding a
likelihood of dilution.
C. The Extent to Which Opposer is Engaging in Substantially Exclusive
Use of Its Mark
Opposer generally declines permission for third parties to use not only JUST DO
IT, but also other marks, such as Applicant’s, in the form “JUST ___ IT.” 24
TTABVUE 9 (Reynolds Dec. I ¶ 22). It enforces its rights in the JUST DO IT mark
vigorously, including through numerous cease and desist letters, scores of Board
opposition and cancellation proceedings and civil litigation. Id. at 9-16, 210-254
(Reynolds Dec. I ¶¶ 23-30 and Exs. B-5 and B-6). This type of evidence has been found
to establish “substantially exclusive use.” Chanel, 110 USPQ2d at 2025; UMG
Recordings, 100 USPQ2d at 1899; Nike, 100 USPQ2d at 1028 (involving the same
mark Opposer pleads in this case).
While Applicant argues that Opposer’s efforts are unsuccessful in many cases, the
evidence does not support the argument. As indicated, most of Applicant’s evidence
of third party use reveals descriptive, ordinary language or other non-trademark uses
of “just do it” or variations thereof. To the extent there are a relatively small number
of trademark uses of JUST ___ IT, “even if not entirely exclusive,” Opposer’s use is
“substantially exclusive,” McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268,
1289-90 (TTAB 2014), and it “is not diminished by the noted non-commercial uses of
the term.” UMG Recordings, 100 USPQ2d at 1899.
This factor weighs in favor of finding a likelihood of dilution.
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29
D. Degree of Recognition of Opposer’s Mark
As discussed in connection with Opposer’s likelihood of confusion claim, JUST DO
IT is one of the most recognized marks of this and the last centuries, given, inter alia,
Opposer’s extensive use, sales and promotional efforts, and the media’s attention to
and recognition of the mark. As we previously held based on a partially identical
record, “JUST DO IT is one of the most famous advertising slogans created,” and it
enjoys a “broad spectrum of public recognition.” Nike, 100 USPQ2d at 1028. The
evidence in this case establishes that this is even more true today, eight years later,
and that JUST DO IT enjoys the highest “level of fame.” This factor weighs in favor
of finding a likelihood of dilution.
E. Whether Applicant Intended to Create an Association with Opposer’s
Mark
There is no evidence that Applicant intended to create an association with
Opposer’s mark. This factor is neutral.
F. Actual Association Between the Marks
There is no evidence of any actual association between the parties’ marks. This
factor is neutral.
G. Conclusion Regarding Dilution
All of the factors weigh in favor of finding a likelihood of dilution or are neutral.
Therefore, dilution is likely.
VI. Conclusion
Use of Applicant’s mark would be likely to cause confusion with, and dilute (by
blurring), Opposer’s mark.
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30
Decision: The opposition is sustained on both Opposer’s Section 2(d) claim and its
claim of dilution by blurring, and registration of Applicant’s mark is refused.