JUST BET IT trademark registration blocked by JUST DO IT. NIKE v. HONEST E

Obtaining a right to a trademark in the United States is based on using the trademark in commerce. The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products.

When a trademark application is filed in the United States, the United States Patent and Trademark Office reviews the application. The proposed trademark is scrutinized to see if it is confusing similar to an already registered trademark. If the USPTO does not believe the proposed trademark is confusingly similar, the trademark application is published for opposition. Opposition is an opportunity for trademark owners to object to the registration of a trademark because they believe it would damage their own registered trademark. The Trademark Trial and Appeal Board of the USPTO hears opposition applications.

There are various reasons that someone may oppose the registration of a trademark application, but the most common reason is that they believe it is confusingly similar to the opposer’s trademark. Section 2(d) of the Lanham Act provides that the United States Patent and Trademark Office may refuse to register a trademark if it so resembles a prior used or registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” The DuPont factors are used to determine if there is a likelihood of confusion between two trademarks. Those factors are: 1) Strength of the senior user’s trademark, 2) Similarity of the trademarks, 3) Similarity of the products or services, 4) Likelihood that the senior user will bridge the gap, 5) The junior user’s intent in adopting the mark, 6) Evidence of actual confusion, 7) Sophistication of the buyers, 8) Quality of the junior user’s products or services, 9) related products and services. How these factors are applied can be confusing therefore it is helpful to study case law to gain a better understanding.

NIKE, INC. v. HONEST E ONLINE LLC, Opp. No. 91254139 (TTAB 2021) is an example of a case where a trademark was refused registration because it was confusingly similar to an already registered trademark.

Applicant in this case “Honest E” sought to register its trademark JUST BET IT for “wearable garments and clothing, namely, shirts” in International Class 25.

Opposer has six registrations of the mark JUST DO IT for various products including “clothing, namely t-shirts, sweatshirts and caps,” and other clothing items in International Class 25. Opposer claims that it has been using JUST DO IT as a trademark since 1989. Opposer filed an opposition to Applicant’s trademark on the grounds of likelihood of confusion and dilution. 15 U.S.C. §§ 1052(d), 1125(c).

The Trademark Trial and Appeal Board applied the Dupont Factors to determine whether the trademark application should be refused. The TTAB noted that the two marks were similar because the differed in only one word. Obviously DO and BET are different words that look and sound different and have different meanings, but despite those differences, the overall connotation and commercial impression of the marks is similar. The Opposer’s trademark was found to be famous so consumers were likely to associate JUST DO IT, and similar trademarks, with Opposer. The products to which both trademarks would be applied (apparel), and the channels of trade, were found to be identical. Based on these findings the TTAB concluded that there was a likelihood of confusion between applicant’s and opposer’s trademarks. Therefore the opposition was sustained and registration was refused.

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