Sportswear giant Nike stumbled at the starting line in its Trademark Trial and Appeal Board (TTAB) opposition proceeding against Palm Beach Crossfit (PB Crossfit) earlier this September, 2015. Nike owns several well-known marks, but this specific opposition concerned a mark near and dear to the hearts of all basketball fans, and Chicago in particular, the “Jumpman.” Nike has a problem with PB Crossfit’s handstand mark, shown below, claiming (1) it falsely suggests a connection with Michael Jordan and Nike, (2) shows a portrait of a living person without their consent (also Jordan); (3) likelihood of confusion with the Jumpman mark; and (4) dilution. PB Crossfit filed a motion to dismiss all of Nike’s claims in the TTAB, and in a rare precedential opinion, the TTAB granted PB Crossfit’s motion to dismiss as to the false connection with Jordan and the lack of Jordan’s consent for their mark. Nike’s likelihood of confusion and dilution claims, however, are still live.
PB Crossfit claims the marks are depictions of one of its members. Whether that is true, and whether it’s a viable defense, were not considered by the Board. Regardless, PB Crossfit’s marks are for athletic training services in Class 41, and Class 25 athletic tops and bottoms for weight lifting, cardio, yoga, warm-up, running, and outerwear including shorts and t-shirts. The Jumpman marks, by comparison, are for specific items of clothing and footwear, including warm-up gear, in Class 25, sports bags and backpacks in Class 18, and basketballs in Class 28. Considering the visual similarities in the marks and the similar sporty nature of the goods, it’s not hard to see why Nike took issue. Regardless, the outcome of this motion demonstrates one of the most important aspects of trademark law. Make sure when pleading that you always specify and focus on how the mark identifies your brand. Nike’s § 2(a) false connection and § 2(c) lack of consent claims failed for one obvious reason: Nike forgot to emphasize the association with itself, instead focusing on superstar Michael Jordan.
The TTAB said that for a § 2(a) false connection claim, “the ‘initial and critical requirement’ is that the identity allegedly being misappropriated is unmistakably associated with the person or institution identified.” Nike, however, alleged that PB Crossfit’s handstand mark suggested a connection with Michael Jordan, not Nike. And Jordan is not a party in this action. Because Nike did not assert specifically that the public would recognize its mark as pointing to Nike, nor that there the handstand marks “point uniquely” to them, its claim was insufficient. Properly pleading § 2(a) would have required that:
- Defendant’s mark is the same or a close approximation of the identity of a person or institution (e.g., PB Crossfit’s mark is a close approximation of Nike’s identity through the Jumpman mark);
- Defendant’s mark would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to the person or institution identified (e.g., PB Crossfit’s mark would be recognized as a Nike mark by consumers, in that the mark points uniquely and unmistakably to the Jumpman mark by Nike);
- The person or institution identified is not connected with the goods sold or activities performed by the defendant under the mark, (e.g., Nike is not connected with the goods and activities of PB Crossfit); and
- The identity of the person or institution identified is of sufficient fame or reputation that when defendant’s mark is used in connection with its goods or services, a connection with the person or institution identified would be presumed (e.g., Nike and its Jumpman mark are sufficiently famous that when PB Crossfit’s handstand mark is used for athletic goods and services, a connection with Nike and the Jumpman mark would be presumed).
Furthermore, as to the § 2(c) lack of consent claim, though Nike attempted to rely on its well-known licensing relationship with Jordan, it did not ever assert that that licensing relationship gives a proprietary right to assert a 2(c) interest on Jordan’s behalf. Section 2(c) actions require reference to a “particular living individual,” but, as with any suit on behalf of another person, you need to be able to prove that you have the authority to assert rights on their behalf.
Despite this setback, Nike still has two solid claims they can assert for likelihood of confusion and dilution. Furthermore, the Board gave Nike twenty days to file an amended notice, if it “believes sufficient grounds exist to re-plead its Section 2(a) and 2(c) claims. This could work out in Nike’s favor as the false connection claim is likely fixable, considering the history of the Jumpman mark. And as for the lack of consent claims, even if Nike doesn’t have any specific provisions in its licenses that allows it to sue on Jordan’s behalf, Michael Jordan has shown plenty of evidence this year that he doesn’t take the unauthorized use of his identity lightly. PB Crossfit could end up fighting this battle on two fronts, although considering the average Crossfitter, it’ll certainly have energy for the fight.