Nike, Inc. v. DeRicco

• Docket Number: Opposition 91269468
• Decision Date: 14 April 2023
• Parties: Nike, Inc. v. Salvatore DeRicco
• Court: Trademark Trial and Appeal Board

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Nike, Inc. v. Salvatore DeRicco

Opposition No. 91269468

United States Patent and Trademark Office, Trademark Trial and Appeal Board

April 14, 2023

This Opinion is not a Precedent of the Ttab

Helen Hill Minsker, Michael J. Harris, Michael Kientzle, and Kathleen P. Duffy of Arnold & Porter Kaye Scholer, LLP for Nike, Inc.

Salvatore DeRicco, pro se.

Before Bergsman, Heasley, and Dunn, Administrative Trademark Judges.

OPINION

BERGSMAN, ADMINISTRATIVE TRADEMARK JUDGE

Salvatore DeRicco ("Applicant") seeks registration on the Principal Register of the mark JUST DON IT! (in standard characters) for "Face masks for use by dental care providers; Face masks for use by health care providers; Face coverings being sanitary masks for protection against viral infection; Face covers being sanitary masks for protection against viral infection," in International Class 10.^[1]

Nike, Inc. ("Opposer") filed a Notice of Opposition against the registration of Applicant's mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). With respect to the Section 2(d) likelihood of confusion claim, Opposer alleges that Applicant's mark so resembles Opposer's registered and common law trademark JUST DO IT as to be likely to cause confusion.^[2] Opposer pleaded ownership of the following registrations:

• Registration No. 1875307 for the mark JUST DO IT. (in typed drawing form) for "clothing, namely t-shirts, sweatshirts and caps," in International Class 25;^[3]

• Registration No. 4350316 for the mark JUST DO IT (in standard characters) for "eyeglass frames; sunglasses," in International Class 9;^[4]

• Registration No. 4764071 for the mark JUST DO IT (in standard characters) for "all purpose sports bags; backpacks," in International Class 18, and "footwear; headbands; headwear; pants; shorts; sports bras; tank tops; tights; warm up suits," in International Class 25;^[5]

• Registration No. 4902036 for the mark JUST DO IT (in standard characters) for "bottles, sold empty," in International Class 21;^[6]

• Registration No. 5727940 for the mark JUST DO IT (in standard characters) for "retail store services and on-line retail store services featuring apparel, apparel accessories, footwear, footwear accessories, headwear, eyewear and accessories, sporting goods and equipment, bags, sports bags, sports and fitness products and accessories," in International Class 35;^[7] and

• Registration No. 6185209 for the mark JUST DO IT (in standard characters) for "hair accessories, namely, hair ties, hair bands, ponytail holders," in International Class 26.^[8]

I. Preliminary Issues

Before proceeding to the merits of the refusal, we address two preliminary issues.

A. Applicant's Reply Brief

Applicant filed a reply brief.^[9] There is no provision in the Trademark Rules of Practice for Applicant to file a reply brief or a rejoinder brief. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 U.S.P.Q.2d 1797, 1799 (Fed. Cir. 2018) ("[T]he plain language of the [Trademark Trial and Appeal Board Manual of Procedure] TBMP states that the TTAB is not required to permit 'a party in the position of defendant' to file a reply brief" and the Board did not abuse its discretion in excluding defendant's reply brief), cert. denied, 139 S.Ct. 1550 (2019).

Applicant argues that he was "compelled" to file a reply brief because of the "egregiously erroneous statements" in Opposer's reply brief.^[10] Hyberbole is not persuasive. We decide the case based on the record, not the arguments of counsel. Id. at 1799 (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 U.S.P.Q.2d 1616, 1622 (Fed. Cir. 2005) ("Attorney argument is no substitute for evidence.").

We do not consider Applicant's reply brief.

B. Applicant's list of third-party registrations

Applicant, in his testimony declaration, refers to two lists of third-party registrations: (i) a list of five third-party registrations for marks using the JUST IT format purportedly registered before Opposer's earliest JUST DO IT registration; ^[11]and (ii) a list of 173 third-party registrations for marks in the JUST IT format.^[12] Applicant did not attach copies of the registrations as exhibits to his declaration, stating "Applicant hopes this evidence format may be acceptable for consideration, by the TTAB, rather than the possible 173 x 4 pages per Registration and at least 5 copies of each, equaling up to 3,460 pages, if printed."^[13] A party to an inter partes proceeding before the Board may introduce, as part of his evidence in the case, a registration owned by a third party not involved in the proceeding. Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 U.S.P.Q.2d 1066, 1070 n.11 (TTAB 2011) (third-party registrations admissible under notice of reliance); Kohler Co. v. Baldwin Hardware Corp., 82 U.S.P.Q.2d 1100, 1110 (TTAB 2007). On the other hand, a party may not make a third-party registration of record simply by introducing a list of third-party registrations that includes it. See, e.g., Edom Labs. Inc. v. Lichter, 102 U.S.P.Q.2d 1546, 1550 (TTAB 2012) (listing of third-party marks downloaded from the USPTO database does not make registrations of record); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 U.S.P.Q.2d 1826, 1829 n.8 (TTAB 2012) (summary of search results from USPTO's electronic database is not an official record of the Office); Calypso Tech. Inc. v. Calypso Capital Mgm't LP, 100 U.S.P.Q.2d 1213, 1217 (TTAB 2011) (summaries of search results for third-party registrations are not official records and have not been considered). Accordingly, Applicant's declaration with lists of third-party registrations is not an acceptable format for introducing the third-party registrations into the record.

In its brief, Opposer noted that Applicant introduced his testimony declaration but Opposer did not lodge an objection to Applicant's lists of third-party registrations.^[14] We find, therefore, that Opposer waived any objection to the admissibility of Applicant's lists of third-party registrations.

With respect to the list of five third-party registrations for marks using the JUST____ IT format purportedly registered before Opposer's earliest JUST DO IT registration, Applicant provided the mark, registration number, and registration date. With the list of 173 third-party registrations for marks in the JUST IT format, Applicant provided the mark, the International Class, and unidentified dates. Even though Opposer waived any objection to Applicant's lists of third-party registrations, Applicant's lists of third-party registrations without goods or services has little, if any, probative value. See Nat'l Cable Television Ass'n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 U.S.P.Q.2d 1424, 1430 (Fed. Cir. 1991) (a list of registrations without the corresponding goods and services is of little use in a likelihood of confusion analysis because the strength of a mark is determined in the context of the number and nature of similar marks used in connection with similar goods and services); In re Eagle Crest, Inc., 96 U.S.P.Q.2d 1227, 1229 (TTAB 2010) (a list of third-party registrations without the description of goods and services has no probative value); Nat'l Fidelity Life Ins. v. Nat'l Ins. Trust, 199 U.S.P.Q. 691, 694 n.5 (TTAB 1978) (list of registrations without goods and services and other relevant information "has no probative value"). We further note that Applicant's "list" does not indicate whether the registrations issued on the Principal or Supplemental Registers, included claims of acquired distinctiveness or disclaimers, or issued pursuant to foreign rights instead of use in U.S. commerce.

Finally, with respect to the list of five third-party registrations for marks using the JUST____ IT format purportedly registered before Opposer's earliest JUST DO IT registration, four of the five registrations have been canceled. Only Registration No. 6617992 is a live registration. A cancelled or expired registration has no probative value other than to show that it once issued and it is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 U.S.P.Q.2d 1307, 1309 (Fed. Cir. 1989) ("[A] cancelled registration does not provide constructive notice of anything."); In Re Ginc UK Ltd., 90 U.S.P.Q.2d 1472, 1480 (TTAB 2007). In re Hunter Publ'g Co., 204 U.S.P.Q. 957, 963 (TTAB 1979) (cancellation "destroys the Section [7(b)] presumptions and makes the question of registrability 'a new ball game' which must be predicated on current thought.").

With the above-noted caveats, we will consider Applicant's lists of third-party registrations for whatever probative value they may have.

II. The Record

The record includes the pleadings, and under Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant's application. In addition, because Opposer attached copies of its pleaded registrations printed from the USPTO Trademark Status and Document Retrieval (TSDR) system showing the current status and title to the registrations, those registrations are of record. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).

The parties introduced the testimony and evidence listed below:

A. Opposer's testimony and evidence

1. Notice of reliance on news articles in printed publications and periodicals from January 2, 1989 through October 5, 2018 available to the general public referring to Opposer's JUST DO IT mark;^[15]

2. Notice of reliance on excerpts from Opposer's website nike.com introducing advertising with Opposer's JUST DO IT mark;^[16]

3. Notice of reliance on excerpts from Opposer's Facebook page displaying the use of Opposer's mark JUST DO IT;^[17...