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Nike v. Gronk - Jumpman v. Spikeman

Daniel Mills, Trademark Attorney

Posted Friday, July 7, 2017 by Daniel Mills

Nike has filed an opposition to a trademark application for a logo by Rob Gornkowski’s business, Gronk Nation, LLC. Nike is basing it’s opposition on two factors, likelihood of confusion and dilution. The two marks are the “Jumpman” logo which is a silhouette of Michael Jordan jumping with a basketball in his hand raised overhead in the act of dunking the basketball, and Gronk’s mark is a silhouette of him with a football in his hand raised over his head in the act of spiking the football. You can find a side by side comparison of the marks here.

Does Nike have a valid argument?

In the Notice of Opposition, Nike asserts that its marks have been in continuous use since 1987, are incontestable, and they have successfully opposed several other marks similar to their Jumpman design. Let’s consider the two issues raised by Nike. First, Likelihood of confusion. Even though there is a side by side comparison for your review above, it is long established precedent that such a comparison is not the way the Trademark Trial and Appeal Bord (“TTAB”) consider that question. The TTAB determine likelihood of confusion by applying the DuPont factors as set forth in the seminal case In re E.I. DuPont DeNemours & Co. There are 13 factors:

Factor 1: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

Factor 2: The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

Factor 3: The similarity or dissimilarity of established, likely-to-continue trade channels.

Factor 4: The conditions under which and the buyers to whom sales are made, i.e. “impulse purchasing” vs. careful, sophisticated purchasing.

Factor 5: The fame of the prior mark (sales, advertising, length of use).

Factor 6: The number and nature of similar marks in use on similar goods.

Factor 7: The nature and extent of any actual confusion.

Factor 8: The length of time during, and conditions under which, there has been concurrent use without evidence of actual confusion.

Factor 9: The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).

Factor 10: The market interface between applicant and the owner of a prior mark:

Factor 11: The extent to which applicant has a right to exclude others from use of its mark on its goods.

Factor 12: The extent of potential confusion, i.e., whether de minimis or substantial.

Factor 13: Any other established fact probative of the effect of use.

There is no evidence in the record yet, but in my opinion, Nike has a strong case. In most cases, the first two factors are the most relevant and are given the most weight. Here, the logos do appear similar, and the goods are nearly identical, both of those tilt toward Nike.

The second count in the Opposition is for dilution. Dilution protection is intended to prohibit (a) the lessening of the distinctiveness of a famous mark, and (b) harm to the reputation of a famous mark. In this way, dilution law views trademarks more from a “property right” perspective, seeking to protect a mark’s owner from loss of the mark’s value and uniqueness. There are 3 key issues to be determined in dilution cases:

  1. Whether the plaintiff’s mark is famous;

  2. Whether the plaintiff’s mark became famous prior to applicant’s first use of its mark (in the case of a use-based application) or prior to the filing date of applicant’s application (in the case of an intent-to-use application); and

  3. Whether applicant’s mark is likely to cause dilution of the distinctiveness of plaintiff’s mark, either through dilution by blurring or dilution by tarnishment.

With respect to the first question, Nike states that its marks are famous. Under the Trademark Dilution Revision Act of 2006, a mark is “famous” if “it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Nike must prove this by showing evidence in the record.

Regarding the second question, the Nike mark has been used longer than Gronk has been playing football, so that is clearly in Nike’s favor.

As to the question of dilution, Nike doesn’t state whether it believes Gronk’s mark will dilute through blurring or tarnishment, but I can see the argument for blurring. From the statue, there are six factors to weigh when considering blurring:

  1. The degree of similarity between the mark or trade name and the famous mark;

  2. The degree of inherent or acquired distinctiveness of the famous mark;

  3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;

  4. The degree of recognition of the famous mark;

  5. Whether the user of the mark or trade name intended to create an association with the famous mark; and

  6. Any actual association between the mark or trade name and the famous mark.

Again, there is no evidence in the record, but I think that Nike’s Dilution claim is strong. In all likelihood, this will be resolved and settled amicably as Mr. Gronkowski is a paid endorser for Nike, and a protracted battle does little good for that relationship. But is push comes to shove on this one, I think Nike would be the one not only Jumping for joy at the end, but also Spiking the ball in the end zone. Mr. Gronkowksi is a great brand and has generated a lot of money for Nike, but his contribution to the Nike fortune and legacy is a drop in the ocean compared to that of the Mr. Jordan and the Jumpman logo.

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