image: Nike

image: Nike

THE FASHION LAW EXCLUSIVE – After filing to oppose a Texas-based company’s attempt to federally register the word “Waffle” as a trademark due to its own existing trademark rights, Nike is fighting World Wrestling Entertainment, Inc. (“WWE”). In an action filed in late June, Nike is asking the Trademark Trial and Appeal Board (“TTAB”) to shoot down WWE’s pending trademark application for “JUST BRING IT,” which the American entertainment company, filed in October 2014 in connection its intention to use the mark on “Clothing, namely, tops, shirts, jackets, bottoms, pants, shorts, underwear, pajamas; clothing, namely, ties; gloves; Halloween and masquerade costumes; footwear, namely, shoes, sneakers, slippers; headwear, namely, hats; wrist bands; bandanas.”

Nike, which holds trademark registrations for its famed slogan “JUST DO IT” in an array of classes, including ones that cover apparel and footwear, alleges in its opposition that “[WWE’s] use and registration of [the JUST BRING IT mark] will inevitably lead to confusion, to mistake, or to deception of the public … all to [Nike’s] grave and irreparable damage.” The Portland, Oregon-based sportswear giant further claims that the “registration of [WWE’s]  mark is likely to cause dilution of [Nike’s] JUST DO IT Mark, to the injury of [Nike], by diluting the distinctiveness of its JUST DO IT Mark and lessening the capacity of its JUST DO IT mark to identify and distinguish its goods and services.”

As for why this should be an easy win for Nike, the company asserts that it has prevailed on similar claims in the past. Nike alleges that it “has brought numerous other successful oppositions based on the JUST DO IT Mark, including its opposition to the mark JUST JESU IT reported in Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011). In Nike v. Maher, the Board sustained [Nike’s] opposition on both the grounds of likelihood of confusion with the JUST DO IT Mark and dilution, and found that [Nike’s JUST DO IT Mark was famous.”

As you may know, before a trademark may be registered with the USPTO (and enforced by a trademark holder on a nationwide basis, as opposed to on a state-by-state basis), a number of requirements must be satisfied. For example, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO. This means “the USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.”