Peter Maher of California applied to register the trademark JUST JESU IT for athletic apparel in August 2009 only to be opposed to Nike and then officially denied a trademark by the trademark Trial and Appeal Board this August. Nike claims three registrations for the trademark JUST DO IT, one of which covers clothing. Nike further alleged that its JUST DO IT trademark became famous prior to the filing date of Maher's application (August 2009), and that the JUST JESU IT was likely to dilute the distinctiveness of Nike's JUST DO IT trademark. Nike has had the JUST DO IT trademark since 1989.
The Trademark Trial and Appeal Board found recently that Maher’s JUST JESU IT mark was likely to cause confusion because Nike's JUST DO IT mark was already established in the marketplace, the two parties’ goods were substantially similar (athletic wear), the goods were presumed to travel in the same trade channels and to be purchased by the same classes of consumers, and the marks were similar in their entireties.
While the Federal Trademark Dilution Act of 1996 states that for a trademark/brand dilution claim to exist, a Defendant’s mark needs to be identical or substantially similar to the Plaintiff's famous mark, the Trademark Trial and Appeal Board only requires the trademark be close enough to the famous mark that consumers will recall the famous mark and be reminded of it, even if the consumers do not believe that the goods come from the famous trademark owner. The Trademark Trial and Appeal Board follows the Ninth Circuit Court of Appeals and the Second Circuit Court of Appeals reasoning in finding that the Trademark Dilution Revision Act of 2006 does not require marks to be identical or substantially similar.