We all recognize this logo. It goes with iii little words – Just DO IT. In late April 2020, the Trademark Trial and Entreatment Board (TTAB) held that Nike'due south slogan JUST Do Information technology is a famous trademark and refused to annals the mark JUST DREW Information technology! for diverse types of athletic apparel. Nike argued that its JUST Practise IT marker is a famous trademark and has been in apply in commerce for more than twenty-five years and registered for more than twenty years. Because of its famous status, Nike was able to hands prevent the registration of the JUST DREW Information technology! mark by relying on the fame of its slogan. What exactly does it mean for a mark to be famous and who decides the event of fame? How exercise mark owners show fame?

Famous Trademark Background

For a trademark to exist famous, it must exist determined by a court or the TTAB. A famous trademark is one that has an immediate connection in the minds of the consumers with a specific product or service every bit to the source of its goods or services. Like the logo pictured above.  Did you have whatever doubt it belongs to Nike? Famous trademarks relish a broad scope of protection, even beyond the scope of their goods and services, because of how well-known the marks is by the consuming public. Marks similar STARBUCKS, APPLE, COCA-COLA and McDONALD'S are just a few examples of marks that accept been found famous.  The TTAB has found these marks famous: FACEBOOK, GUCCI, CHANEL, and BOTOX to name a few. Fame is a dominant factor in whatsoever likelihood of confusion analysis. If a party is asserting its mark is famous, information technology must clearly plant that its mark is viewed by the relevant consumers every bit a famous mark and submit prove into the record to back up its contention. It may also allege dilution by blurring, an clan between a merchandise name or a trademark and its famous marker due to similarities between the marks. The famous mark holder must also show that the distinctiveness of its famous marker will exist impaired. Dilution tin can occur fifty-fifty if the 2 companies are not competitors and there is no likelihood of confusion.

How Nike Established that Simply Practice IT is a Famous Trademark

In this Opposition, Nike was handily able to establish fame. Nike start registered the famous slogan in October 1989 and now owns four registrations for the slogan. Nike has filed more than 80 extensions of time and oppositions to vigorously defend its trademark rights in the slogan alone. Nike submitted evidence that it has spent nearly $200 meg advertising the slogan but in the Usa lonely and has partnered with celebrities such every bit Michael Jordan, Bo Jackson, Pete Sampras, Tiger Woods, LeBron James and Serena Williams in the ad campaigns. Co-ordinate to testify Nike submitted, AdAge mag deemed the But Practise IT slogan such a potent phrase that it awarded information technology first-runner up in its 20thursday Century top slogans (2d only to DIAMONDS ARE FOREVER, in example you were wondering). The Center for Practical Research conducted a study and found the Only Do IT slogan was "one of the most famous and easily recognized slogans in advert history." Co-ordinate to a 1999 third party survey, 790 out of 1000 respondents correctly identified the Just DO It slogan was associated with Nike. Moreover, the TTAB had previously establish the slogan to exist famous in prior proceedings.

Conclusion

Establishing that a trademark is famous is exceedingly costly and not for the faint of centre, but the rewards are well worth it, especially for those brands that have invested heavily in their advertising and been successful in reaching a connection not only with consumer market share, but likewise in winning consumer trust and loyalty. For these brand owners, they must also spend a pregnant amount of financial resources to defend their famous marks to ensure their investments are safe from third political party infringers. If you lot have any questions most this post or any trademark thing, please contact  us.