The commercial strength or fame of a mark “may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident.” Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353 (Fed. Cir. 1992). Direct  evidence of fame, such as consumer surveys, is not necessary. Bose Corp., 293 F.3d at 1371. 

In Nike, Inc. v. Lorenzo, Opp. No. 91286066 (TTAB May 21, 2024), the Board found that Nike's JUST DO IT mark was "not only famous, but remarkably so," and thus "entitled to the highest level of protection against confusion," even though it gave little weight to a third-party survey regarding consumer recognition of the JUST DO IT mark because it was not offered in connection with expert testimony.  

A survey offered in litigation before the Board is not a freestanding piece of evidence, but instead is offered as the basis for expert opinion testimony. See generally Promark Brands Inc. v. GFA Brands, Inc., Opp. No. 91194974, 2015 TTAB LEXIS 67, at *48-60 (TTAB 2015). The survey made of record by Opposer is of dubious probative value because Opposer “did not proffer a witness with first-hand knowledge of the study to explain how the study was conducted and the significance of the study.” Coach Servs. v. Triumph Learning LLC, Opp. No. 91170112, 2010 TTAB LEXIS 383, at *35 (TTAB 2010), aff'd in part, vacated in part, 668 F.3d 1356 (Fed. Cir. 2012).

The Board suggested that the survey may have been entitled to more weight had it been commissioned in the ordinary course of business (citing Chanel, Inc. v. Makarczyk, Opp. No. 91208352, 2014 TTAB LEXIS 217, at *28 (TTAB 2014) (considering pre-litigation consumer recognition surveys commissioned and used in the ordinary course of business); NASDAQ Stock Mkt., Inc. v. Antartica, S.r.l., Opp. No. 91121204, 2003 TTAB LEXIS 391, at *37 (TTAB 2003) (considering results of annual awareness surveys to demonstrate fame)); but that was not the case here. 

Nonetheless, Nike's evidence of product sales including over 2.4 billion pairs of shoes in boxes displaying JUST DO IT between 2006 and 2010, over $200M spent on advertising and promotions featuring JUST DO IT since 2008, and unsolicited media attention consisting of articles regarding the success of the JUST DO IT advertising campaign since 1989, were sufficient to show strong fame. 

The Board held that the opposed DON'T JUST DO IT, GET IT DONE mark for various clothing items was likely to cause confusion with Nike's JUST DO IT mark, and also held that the opposed mark was likely to dilute JUST DO IT under Trademark Act 43(c)(2)(B), 15 U.S.C. § 1125(c)(2)(B).

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.