Trademark Trial and Appeal Board, Decision of 9 August 2011, Opp. No. 91188789, 2011 WL 3828723

The Trademark Trial and Appeal Board (TTAB) confirmed that the degree of similarity required to support a dilution by blurring claim under the Trademark Dilution Revision Act of 2006 (TDRA) was significantly lower than required under the Federal Trademark Dilution Act of 1996 (FTDA). Accordingly, it now appears evident that holders of famous trademarks have a more potent weapon in their arsenal when seeking to oppose potentially diluting third-party trademarks.

On August 9, 2011, the TTAB sustained Nike's opposition against registration of the trademark "JUST JESU IT" in connection with athletic apparel and other clothing, holding that the trademark applied for was both likely to cause confusion with, and likely to dilute by blurring, Nike's famous "JUST DO IT" trademark.

In finding that the mark was likely to dilute by blurring, the TTAB first determined that Nike's trademark was famous for dilution purposes, as Nike submitted substantial evidence showing that (1) its "JUST DO IT" mark was widely recognized by the public, (2) it extensively advertised the trademark and spent a substantial sum in such advertising, (3) it sold numerous products bearing the trademark, and (4) it held incontestable federal registrations for the trademark.

The TTAB also determined that Nike's trademark became famous prior to Applicant's filing date.

In addressing the remaining factors necessary to prove a dilution by blurring claim[1], the TTAB noted that Nike's trademark was well-recognized, that Nike engaged in substantially exclusive use of the trademark, and that Nike's trademark was inherently distinct.

Importantly, regarding the degree of similarity between the marks, the TTAB expressly held that "an important question in a dilution case [under the TDRA] is whether the two involved marks are sufficiently similar to trigger consumers to conjure up a famous mark when confronted with the second mark." The marks need not be "identical or very or substantially similar to plaintiff's famous mark" as was required to prove a pre-TDRA dilution claim.

Indeed, the TTAB agreed with the Ninth Circuit that the TDRA "sets forth a less demanding standard than that employed by many courts under the FTDA,"[2] and appeared to agree with the Second Circuit that "the similarity between the famous mark and the allegedly blurring mark need not be 'substantial' under the TDRA."[3] Thus, a mark need not be identical or a "look-alike" to show dilution by blurring, rather a mark should be "close enough to the famous mark [such] that consumers will recall the famous mark and be reminded of it."

In so holding, the TTAB has effectively made it easier for holders of famous trademarks to succeed on a claim of dilution by blurring. This decision confirms that with the passing of the TDRA, a holder of a famous trademark will likely be able to successfully oppose a mark that is sufficiently similar to the famous trademark such that it will "trigger consumers to conjure up [the] famous mark."[4]