Background
Is this small business name too similar to Nike’s famous slogan?
JUST DO IT vs. JUST SUCC IT
Andrea Galbreath created an LLC using the name, Just Succ It, in July 2020 for her succulent business. In the years since she launched the shop, Andrea has expanded her products to include custom planters, gift boxes, and succulent-themed novelty items with phrases inspired by the shop’s name.
After seeing another online store copy the name she filed to trademark JUST SUCC IT in April 2021. Then on Jan. 4, the trademark was published. The mark is intended to be used for “on-line retail store services featuring clothing, novelty items, home decor, plants and a wide variety of goods of others”.
The Dispute:
Soon after publishing her trademark, Galbreath received a notice from the United States Patent and Trademark Office (USPTO) that Nike had filed an opposition notice because of the name’s similarity to Nike’s “Just Do It” slogan.
Galbreath argues that no one would consider her small business to be similar to Nike. In addition, she states that when people hear ‘Just Succ It’ they’re not thinking of the word ‘do.’
Galbreath said that fighting the opposition will be prohibitively expensive. She is still trying to figure out a strategy and plans to keep using the name for her business in the meantime. She has filed for an extension and has turned to TikTok to gain support. Her first video about her plight has 471,000 views. Her follow-up video garnered 2.1 million views.
In order for Nike to succeed they would need to prove that consumers would likely confuse Galbreath’s “Just Succ It’ branding with their “Just Do It” trademark.
They would also need to consider whether Galbreath intended to create an association with the famous mark and if there is an actual association between the mark or trade name and the famous mark.
What Should You Do If Your Trademark Application is Opposed?
After your trademark application has been reviewed and approved by an examining attorney, the mark will be published in the Original Gazette for opposition. During this thirty-day period, anyone with an interest in the proceeding can oppose the trademark application and attempt to stop the trademark from being registered.
If a notice of opposition has been filed against your trademark application, you must file an answer within 30 days. If you fail to respond then the Trademark Trial & Appeal Board (TTAB) will issue a Default Judgment sustaining the opposition and refusing the registration of the opposed application.
Once your answer is filed, the TTAB will set a trial calendar with the deadlines for each stage of the opposition proceeding. At this point, it’s recommended that you hire a trademark attorney. Filing a response and representing yourself as a trademark owner (or applicant) before the TTAB is complex.
When your attorney prepares your case for the trademark opposition proceedings, the objective will be to gather evidence that supports your case and which the opposing party may or may not be ordered to disclose for discovery. During the proceedings themselves, each side will present their points in briefs as well as optional oral arguments.
The TTAB will then deliberate. Generally, it takes several months for them to do so. At the end of the deliberation period, they will issue a decision. If they decide to reject your application, you can appeal to Federal or district courts with jurisdiction over the trademark process.
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