Nike, Inc.v.United States Naval Academy Foundation

Trademark Trial and Appeal Board

Mar 9, 2015

No. 91208950 (T.T.A.B. Mar. 9, 2015)

wbc Mailed: March 9, 2015

Opposition No. 91208950

Nike, Inc.

v.

United States Naval Academy
Foundation

Before Kuhlke, Taylor, and Hightower,
Administrative Trademark Judges.

By the Board:

The United States Naval Academy Foundation (“Applicant”) seeks to register the
mark DON’T JUST DO IT DO IT RIGHT in standard characters for “educational
services, namely, conducting training in the form of lectures in the field of
leadership and ethics; interactive on-line training services in the field of leadership
and ethics; film and video production,” in International Class 41.1
Nike, Inc. (“Opposer”) originally filed its notice of opposition to the registration
of Applicant’s mark on the grounds of likelihood of confusion and dilution.2
Applicant submitted its answer, denying the allegations of the notice of opposition.
1 Application Serial No. 85561428 was filed March 6, 2012 under Trademark Act Section
1(b), 15 U.S.C. § 1051(b), based on an assertion of a bona fide intent to use the mark in
commerce.
2 In support of these grounds Opposer has claimed ownership of Registration No. 1875307
for the mark JUST DO IT. for “clothing, namely t-shirts, sweatshirts and caps” in
International Class 25 claiming a date of first use anywhere and in commerce of January
26, 1989; Registration No. 1817919 for the mark JUST DO IT. for “paper goods and printed

This opinion is not a
precedent of the TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500

Opposition No. 91208950

This case now comes up on the following motions:
1. Opposer’s motion to amend its notice of opposition (filed November 4,
2014) to add a claim that Applicant did not have a bona fide intent to use
the mark in commerce and the wrong Applicant was named in the
application, and as such, the application is void ab initio;
2. Opposer’s motion for summary judgment based on its new claim (filed
November 4, 2014).
The motion for summary judgment has been fully briefed. The Board will
consider each motion in turn.
Motion to amend
Amendments to pleadings in inter partes proceedings before the Board are
governed by Fed. R. Civ. P. 15, which is made applicable to Board proceedings by
Trademark Rule 2.116(a). See also TBMP § 507.01. Fed. R. Civ. P. 15(a) governs
amendments before trial. Pursuant to Fed. R. Civ. P. 15(a)(2):
a party may amend its pleading only with the opposing party's written
consent or the court's leave. The court should freely give leave when
justice so requires.

The Board liberally grants leave to amend pleadings at any stage of a proceeding
when justice so requires, unless entry of the proposed amendment would violate
matter; namely, bumper stickers, note pads, posters and banners” in International Class 16
claiming a date of first use anywhere and in commerce of January 1989, “non-metallic key
chains and ornamental novelty buttons” in International Class 20 claiming a date of first
use anywhere and in commerce of February 8, 1989, and “mugs” in International Class 21
claiming a date of first use anywhere and in commerce of July 7, 1989; and Registration No.
1931937 for the mark JUST DO IT for “binders, student planners, notebooks, portfolio
covers” in International Class 16 claiming a date of first use anywhere and in commerce of
April 10, 1995.
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Opposition No. 91208950

settled law or be prejudicial to the rights of the adverse party or parties. See TBMP
§ 507.02.
The timing of the motion for leave to amend plays a large role in the Board’s
determination of whether the adverse party would be prejudiced by allowance of the
proposed amendment. See, e.g., United States Olympic Committee v. O-M Bread Inc.,
26 USPQ2d 1221, 1222 (TTAB 1993) (applicant not prejudiced because proceeding
still in pre-trial phase); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki
Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992) (motion to amend filed prior to opening
of petitioner’s testimony period permitted); Caron Corp. v. Helena Rubenstein, Inc.,
193 USPQ 113 (TTAB 1976) (neither party had yet taken testimony); Mack Trucks,
Inc. v. Monroe Auto Equip. Co., 182 USPQ 511, 512 (TTAB 1974) (applicant would
not be unduly prejudiced since no testimony had yet been taken); TBMP § 507.02(a).
For example, the Board generally will grant such motions when the proceedings are
still in the pre-trial stage. See, e.g., Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618,
621 (TTAB 1974).
The Board finds no evidence of undue delay by Opposer in filing its motion to
amend its pleading. Opposer alleges its motion is predicated on information learned
during discovery, and there are no allegations that Opposer unduly delayed filing its
motion after learning such information. Additionally, trial has not yet begun and
additional discovery does not appear to be necessary since neither party has requested
additional discovery.
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Opposition No. 91208950

On December 18, 2014, Applicant concurrently filed a response to the motion to
amend and a proposed answer to the amended notice of opposition. In its response to
the motion to amend, Applicant “denies that there was not a bona fide intent to use
the mark in commerce” but then asserts that “the ultimate user of the mark would be
the United States Naval Academy…. Accordingly, Opposer’s request to add Count III
[the claim of no bona fide intent to use] appears appropriate.” In view thereof, we find
no prejudice to Applicant by allowance of the amendment.
Accordingly, Opposer’s motion to amend is hereby granted. The amended notice of
opposition included in Opposer’s motion shall be treated as Opposer’s operative
pleading in this case.
As noted above, Applicant submitted an answer to the amended notice of opposition
on December 18, 2014, which the Board treats as Applicant’s operative pleading.
Motion for Summary Judgment
Summary judgment is an appropriate method of disposing of cases in which
there are no genuine disputes as to material facts, leaving the case to be resolved as
a matter of law. See Fed. R. Civ. P. 56(c). In deciding motions for summary
judgment, the Board must follow the well-established principles that, in considering
the propriety of summary judgment, all evidence must be viewed in a light
favorable to the non-movant, and all justifiable inferences are to be drawn in the
non-movant's favor. The Board may not resolve disputes of material fact; it may
only ascertain whether such disputes are present. See Lloyd’s Food Products Inc. v.
Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v.
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Opposition No. 91208950

Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992);
Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
When the moving party has supported its motion with sufficient evidence which,
if unopposed, indicates there is no genuine dispute of material fact, the burden shifts
to the non-moving party to demonstrate the existence of a genuine dispute of
material fact to be resolved at trial. See Enbridge, Inc. v. Excelerate Energy LP, 92
USPQ2d 1537, 1540 (TTAB 2009). The non-moving party may not rest on the mere
allegations of its pleadings and assertions, but must designate specific portions of the
record or produce additional evidence showing the existence of a genuine dispute as
to a material fact for trial. Consequently, factual assertions without evidentiary
support are insufficient to defend against a motion for summary judgment. See
Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB
2001); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 (TTAB
1987).
We turn first to the issue of standing, a threshold issue that must be proven by a
plaintiff in every inter partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp.,
823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987). The Board finds that there is no
genuine dispute of material fact concerning Opposer’s standing. Opposer submitted a
status and title copy for each of its pleaded registrations with its amended notice of
opposition, which sufficiently establishes its standing to bring this proceeding. See
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Opposition No. 91208950

Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1709 (TTAB 2011);
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010).
Moreover, Applicant has not disputed Opposer’s standing.
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), states that “a person who
has a bona fide intention, under circumstances showing the good faith of such person,
to use a trademark in commerce” may apply for registration of the mark. A
determination of whether an applicant has a bona fide intention to use the mark in
commerce is an objective determination based on all the circumstances. Boston Red
Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); see also
Aktieselskabet AF 12. November 2001 v. Fame Jeans Inc., 86 USPQ2d 1527, 1537-38
(D.C. Cir. 2008) (“[A]n opposer may defeat a trademark application for lack of bona
fide intent by proving the applicant did not actually intend to use the mark in
commerce or by proving the circumstances at the time of filing did not demonstrate
that intent.”). If the intent to use application is not filed in the name of the party that
has the bona fide intent to use a particular mark, the application will be deemed void
ab initio. See American Forests v. Sanders, 54 USPQ2d 1860, 1862 (TTAB 1999).
As a general rule, the factual question of intent is unsuited to disposition on
summary judgment. Copelands’ Enterprises, Inc. v. CNV, Inc., 945 F.2d 1563, 20
USPQ2d 1295, 1299 (Fed. Cir. 1991). Nonetheless, one way an opposer can establish
its prima facie case of no bona fide intent is by proving that applicant has no
documentary evidence to support its allegation of a bona fide intent to use the mark
in commerce as of the application filing date. Saul Zaentz Co. v. Bumb, 95 USPQ2d
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Opposition No. 91208950

1723, 1727 (TTAB 2010). Where there is no evidence of an applicant’s bona fide
intent to use the mark at issue on the claimed goods or services, entry of summary
judgment on a claim that the applicant had no bona fide intent to use the mark in
commerce when he filed his involved application may be warranted. See Honda
Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009).
The issue before the Board is whether Applicant, as the named applicant in the
application at issue, had a bona fide intent to use the mark when it filed the
application.
In support of its motion for summary judgment, Opposer has submitted copies of
certain discovery requests, Applicant’s discovery responses and certain deposition
transcripts. Specifically, Opposer refers to Applicant’s response to document request
no. 73 and the discovery depositions of Captain Richard Goldsby,4 Colonel Arthur
Athens,5 and Mr. Patrick Finnegan.6
In its answer to document request no. 7, which asks for documents related to
Applicant’s bona fide intention to use, Applicant answered that it “is not aware of
any documents within its possession, custody, or control that are responsive to this
request.” See Motion for Summary Judgment, Exh. E at p.3.
3 Document Request No. 7 seeks “all documents and things concerning or in any way
related to the bona fide intention to use [Applicant’s Mark].”
4 Applicant’s Associate Director.
5 Colonel Athens came up with the idea of using video spots to inspire midshipmen to make
ethical decisions, which was called the Integritas Project. See Motion for Summary
Judgment, Exh. B at 18:4-19:18.
6 Mr. Finnegan is an independent filmmaker who directed, wrote scripts for and handled a
variety of other matters related to making the video spots for the Integritas Project.
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Opposition No. 91208950

In the depositions of Captain Goldsby, Colonel Athens and Mr. Finnegan, the
record reveals that Applicant did not have a bona fide intent to use the mark but
rather, the mark was intended to be used by an unrelated entity, the United States
Naval Academy. The depositions show that at all times, it was the intention of
Applicant that the mark was to be used by the United States Naval Academy. The
following series of questions and answers in Captain Goldsby’s deposition make
clear Applicant’s intention:
Q: I'd like to take you -- let's look at this description of goods and
services. So the first part of it says “educational services, namely:
Conducting training in the form of lectures in the field of leadership
and ethics.” Is the Foundation presently using the mark Don't Just Do
It Do It Right" for those services that I've just mentioned to you?
A: No.
Q: Does the Foundation intend to use the mark for those services?
A: No.
Q. Let's go to the second part of that description. The second part is
interactive online training services in the field of leadership and ethics.
Does the Foundation presently use the mark “Don't Just Do It Do It
Right" for those services?
A. The Foundation does not.
Q. Does someone else use the mark for those services?
A. The mark is contained in the videos, as we described, as I described
earlier in some of the videos that have been gifted to the Navy and are
being used by the Naval Academy.
Q. Is it used in any other way?
A. Not to my knowledge.
Q. Aside from the videos, when this description was included in the
application, what was the – what types of things did you contemplate,
meaning the Naval Academy Foundation, what types of things did the
Foundation contemplate using the mark for with respect to these
services?
A. Really all the contemplate -- all the Foundation contemplated was
obtaining the mark and giving it to the Naval Academy for their use.
Q. And so not for the -- you were not planning on offering interactive
online training services?
A. No. That's not within the mission of the Foundation.

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Opposition No. 91208950

See Motion for Summary Judgment, Exh. A at 114:6-116:9.
Furthermore, Applicant admitted the allegations set forth in paragraphs 22-23
in the amended notice of opposition, which read:
22. Additionally, at the time Applicant filed the Application, Applicant
intended to obtain the trademark registration for Applicant’s Mark for
the use and benefit of an unrelated entity, the United States Naval
Academy.
23. The United States Naval Academy, the unrelated entity for whom
Applicant sought to obtain the trademark registration for Applicant’s
Mark, should have been named as the applicant in the Application,
instead of Applicant.

Lastly, in its response to the motion for summary judgment, Applicant concedes
that “the United States Naval Academy, not the United States Naval Academy
Foundation was to be the user of the mark.” Response at p. 2.
Upon careful consideration of the parties’ arguments and the evidence
submitted, the record clearly demonstrates that Applicant did not have the bona
fide intent to use the mark but rather filed the application for the benefit of an
unrelated entity, the United States Naval Academy.
In view thereof, Opposer has established that there is no genuine dispute of
material fact that Applicant lacked the requisite bona fide intention to use the mark
as of the filing date of the application and the application was void ab initio.
Accordingly, Opposer’s motion for summary judgment is granted on its claim that
Applicant lacked a bona fide intent to use the mark in commerce. The opposition is
sustained under Trademark Act Section 1(b) only and application Serial No.
85561428 is refused registration.
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Opposition No. 91208950

Having found the application was void ab initio because the application was
improperly filed in the name of Applicant who did not have a bona fide intent to use
the mark, the Board need not reach a decision on the remaining issues of likelihood
of confusion and dilution. See American Paging Inc. v. American Mobilphone Inc., 13
USPQ2d 2036, 2039 (TTAB 1989), aff’d, 923 F.2d 869, 17 USPQ2d 1726 (Fed.Cir.
1990) (unpublished table decision), and cases cited therein.
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