As you might expect, Nike often finds itself involved in intellectual property stories. To be fair, the company has been on both sides of the IP coin. There are plenty of stories of Nike playing IP bully: the whole Satan Shoes dustup with MSCHF, its lawsuit happy practice when it comes to counterfeits, and so on. But the company has also found itself on the receiving end of IP action, sometimes very much deserved, sometimes not so much.
Among the company’s most guarded IP is the trademark the company has on its famous motto: JUST DO IT. Nike has gone after companies, typically during the trademark application process, whenever there is an attempt to trademark a “Just [word] it” phrase. Most of that action has centered around apparel or athletic companies. But now, a business that produces succulent plant arrangements largely advertised on TikTok has found its trademark application for “JustSuccIt” opposed by Nike.
Andrea Galbreath, the owner of a California-based succulent business, says Nike is opposing the trademark she owns for her company, JustSuccIt. The shoe and athleticwear giant said it opposes her trademark because JustSuccIt could be “damaging to their brand,” according to a TikTok posted by Galbreath on Saturday.
“Nike is comin’ after me!” she says in the TikTok. “I’m just a small business in San Juan Capistrano, trying to plant happiness in the lives of others. So I’m doing my best to get ahead of this. Can you please help me tell Nike to leave me alone?”
Alright, let’s stipulate something: Nike’s slogan “JUST DO IT” is absolutely a famous trademark. That’s important here, because famous marks are afforded way more protection than a standard mark. Because it is a famous mark, and deservedly so, Nike can go beyond the standard likelihood of confusion case for opposing the mark. You will notice that public confusion is not what Nike is complaining about above. Instead, it seems to be going with tarnishment as the reasoning, based on the claim that JustSuccIt would be damaging to its brand.
There is another recognized federal cause of action in the U.S. for famous trademarks known as dilution by tarnishment. This refers to use of a famous trademark in connection with goods or services of poor quality or of an unsavory nature. Dilution can occur even if the two companies are not competitors and there is no likelihood of confusion.
All very true and I suppose Nike’s point here is that “JustSuccIt” sounds phonetically identical to “Just suck it”, which could be construed as unsavory… except that it isn’t in this case. The business sells arrangements made from succulents, a type of plant. I’m not particularly convinced that the first thing that would leap to most people’s minds upon hearing “JustSuccIt” is even Nike’s slogan. It certainly wasn’t mine, though I admit to being wildly unsavory myself.
The product or service in this case is not unsavory. The applied for trademark really isn’t either, though I imagine Nike will play heavily on potential interpretations of it that are of an unsavory nature. Still, that’s a hell of a fairly miniscule reason to oppose the trademark. And, if that’s the approach, it essentially acknowledges that there isn’t any concern about public confusion in the marketplace, nor the two companies competing against one another.
So I guess the open question is whether the USPTO will consider “JustSuccIt” unsavory or not.