Tuesday, April 15, 2008

NIKE goes after MIKE

Another one for the category “What was this applicant thinking?”

Nike, Inc. (“Nike”), owner of several registrations for the mark NIKE (for footwear and clothing), filed an opposition today against an individual named Scott Nelson who filed a Section 1(b) intent-to-use trademark application to register the mark MIKE (for various clothing). See Nike, Inc. v. Scott Nelson, Opposition No. 91183553 (T.T.A.B. April 15, 2008). A copy of the notice of opposition can be downloaded here.

The opposition not only invokes the obvious grounds for rejecting registration of the mark (likelihood of confusion, dilution), but also cites Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)) (which prohibits registration of a mark which falsely suggests a connection with a person, living or dead) and Section 2(c) of the Lanham Act (15 U.S.C. § 1052(c)) (which prohibits registration of a mark which comprises a name identifying a particular living individual except by his written consent).

Of course, the person at issue in this case would be legendary basketball player Michael Jordan. Nike’s notice of opposition notes the long-standing endorsement and licensing relationship between Nike and Jordan, whereby Nike has developed and used many trademarks consisting in whole or part of Michael Jordan's name, image or likeness, which has caused the public to closely associate Jordan with Nike.

Nike argues that Mr. Nelson has no legitimate connection with Michael Jordan, and thus registration of the mark would falsely suggest to the public a connection with Jordan. Furthermore, the mark, when used on the goods at issue, is a name identifying a particular individual, namely Michael Jordan, whose written consent to register his name is not of record. It does not matter that the mark at issue is not Michael Jordan’s full name. See In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (BO, the recognized nickname of professional football and baseball star Bo Jackson, found to be so well known by the general public that use of the name BO in connection with sports balls would lead to the assumption that he was in some way associated with the goods or with applicant’s business); see also Reed v. Bakers Engineering & Equipment Co., 100 USPQ 196, 199 (PTO 1954) (“‘Name’ in §2(c) is not restricted to the full name of an individual but refers to any name regardless of whether it is a full name, or a surname or given name, or even a nickname, which identifies a particular living individual...”).

For those who may feel that Nelson did not intend for the name MIKE in this case to be a reference to Michael Jordan, I would point out that one of Nelson’s other pending applications (link here) is for the below design mark (also for clothing):

Nike also opposed registration of this design, which bears a striking resemblance to Nike's own registered design mark of the profile of a well-known former basketball player (pictured below). See Nike, Inc. v. Scott Nelson, Opposition No. 91182458 (T.T.A.B. February 14, 2008). If the outcome of that opposition is any indication, Nelson is not going to fight Nike over MIKE.

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