ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1339995
`02/13/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`NIKE, Inc.
`
`03/13/2024
`
`ONE BOWERMAN DRIVE
`BEAVERTON, OR 97005
`UNITED STATES
`
`HELEN HILL MINSKER
`ARNOLD & PORTER KAYE SCHOLER LLP
`70 W. MADISON STREET, SUITE 4200
`IP DOCKETING
`CHICAGO, IL 60602
`UNITED STATES
`Primary email: helen.minsker@arnoldporter.com
`Secondary email(s): michael.harris@arnoldporter.com, mi-
`chael.kientzle@arnoldporter.com, kathleen.duffy@arnoldporter.com,
`kim.hedgren@arnoldporter.com, trademarkdocketing@arnoldporter.com
`3125832428
`
`Docket no.
`
`1104164.5699
`
`Applicant information
`
`Application no.
`
`97483698
`
`Opposition filing
`date
`
`Applicant
`
`02/13/2024
`
`Inventive Preventives LLC
`141 UNDERHILL AVENUE
`E. WHITE PLAINS, NY 10604
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`11/14/2023
`
`Opposition period
`ends
`
`03/13/2024
`
`Class 010. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Face masks for use by dental care pro-
`viders; Face masks for use by health care providers
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Registration barred by claim or issue preclusion
`
`Mayer/Berkshire Corp. v. Berkshire Fashions
`Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir.
`2005)
`
`

`

`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`1875307
`
`Register
`
`Principal
`
`Registration date
`
`01/24/1995
`
`Application date
`
`10/03/1989
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`JUST DO IT.
`
`NONE
`
`Class 025. First use: First Use: Jan 26, 1989 First Use In Commerce: Jan 26,
`1989
`CLOTHING, NAMELY T-SHIRTS, SWEATSHIRTS AND CAPS
`
`U.S. registration
`no.
`
`4350316
`
`Register
`
`Principal
`
`Registration date
`
`06/11/2013
`
`Application date
`
`12/06/2012
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`JUST DO IT
`
`NONE
`
`Class 009. First use: First Use: Oct 31, 2008 First Use In Commerce: Oct 31,
`2008
`Eyeglass frames; Sunglasses
`
`U.S. registration
`no.
`
`4764071
`
`Register
`
`Principal
`
`Registration date
`
`06/30/2015
`
`Application date
`
`11/04/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`JUST DO IT
`
`NONE
`
`Class 018. First use: First Use: Jul 1, 2011 First Use In Commerce: Jul 1, 2011
`All purpose sport bags; Backpacks
`Class 025. First use: First Use: Jan 26, 1989 First Use In Commerce: Jan 26,
`1989
`Footwear; Headbands; Headwear; Pants; Shorts; Sports bras; Tank tops;
`Tights; Warm up suits
`
`U.S. registration
`no.
`
`4902036
`
`Register
`
`Principal
`
`Registration date
`
`02/16/2016
`
`Application date
`
`09/21/2015
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`JUST DO IT
`
`NONE
`
`Class 021. First use: First Use: Jul 1, 2015 First Use In Commerce: Jul 1, 2015
`Bottles, sold empty
`
`U.S. registration
`no.
`
`5727940
`
`Register
`
`Principal
`
`Registration date
`
`04/16/2019
`
`Application date
`
`10/26/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`JUST DO IT
`
`NONE
`
`Class 035. First use: First Use: Jul 1, 1994 First Use In Commerce: Jul 1, 1994
`Retail store services and on-line retail store services featuring apparel, apparel
`accessories, footwear, footwear accessories, headwear, eyewear and accessor-
`ies, sporting goods and equipment, bags, sports bags, sports and fitness
`products and accessories
`
`U.S. registration
`no.
`
`6185209
`
`Register
`
`Principal
`
`Registration date
`
`10/27/2020
`
`Application date
`
`04/17/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`JUST DO IT
`
`NONE
`
`Class 026. First use: First Use: Mar 2013 First Use In Commerce: Mar 2013
`Hair accessories, namely, hair ties, hair bands, ponytail holders
`
`Attachments
`
`Notice of Opposition.pdf(193151 bytes )
`Exhibit A.pdf(349317 bytes )
`Exhibit B.pdf(360034 bytes )
`
`Signature
`
`/Helen Hill Minsker/
`
`Name
`
`Date
`
`HELEN HILL MINSKER
`
`02/13/2024
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Applicant
`Inventive Preventives LLC
`
`
`
`
`
`
`Mark:
`
`Serial No.: 97/483,698
`
`Filed: June 30, 2022
`
`Published in the Official Gazette dated Nov. 14, 2023
`
`
`NIKE, INC.,
`Opposer,
`
`
`vs.
`
`INVENTIVE PREVENTIVES LLC,
`Applicant.
`
`
`
`Opposition No. ________
`
`NOTICE OF OPPOSITION
`
`Opposer, NIKE, Inc., a corporation of Oregon, whose address is One Bowerman Drive,
`
`Beaverton, Oregon 97005, believes it will be damaged by registration of the above-identified mark,
`
`applied for on the Principal Register by Inventive Preventives LLC, a New York limited liability
`
`company, whose address is 141 Underhill Avenue, E. White Plains, New York, 10604, and
`
`opposes the same.
`
`The grounds for the opposition are as follows:
`
`BACKGROUND ON OPPOSER AND ITS “JUST DO IT” MARK
`
`1.
`
`Opposer is a leading provider of a broad range of clothing, footwear, accessories,
`
`equipment, and other products and services relating to sports, fitness, health and wellness, lifestyle
`
`and fashion.
`
`
`
`

`

`
`
`2.
`
`Opposer is the owner of rights granted via federal registrations and common law
`
`rights for the marks “JUST DO IT.” and “JUST DO IT” (collectively the “JUST DO IT Mark”).
`
`3.
`
`Opposer has continuously used the JUST DO IT Mark in interstate commerce since
`
`at least as early as 1989 in connection with various clothing items.
`
`4.
`
`In addition to continuous use of the JUST DO IT Mark in interstate commerce in
`
`connection with clothing, Opposer has continuously used the JUST DO IT Mark in interstate
`
`commerce in connection with a variety of goods and services for many years, including, but not
`
`limited to, the goods and services covered by the registrations for the JUST DO IT Mark identified
`
`below, and other registrations owned by Opposer over the years for the JUST DO IT Mark.
`
`OPPOSER OWNS MULTIPLE
`TRADEMARK REGISTRATIONS FOR THE “JUST DO IT” MARK
`
`5.
`
`Opposer is the owner of multiple U.S. Trademark Registrations for the JUST DO
`
`IT Mark, including the following U.S. Trademark Registrations pleaded in paragraphs 6 through
`
`11 below.
`
`6.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,875,307 for the mark
`
`“JUST DO IT.” for “Clothing, namely T-shirts, sweatshirts and caps” in International Class 25,
`
`registered January 24, 1995. This Registration is incontestable pursuant to Section 15 of the
`
`Lanham Act, 15 U.S.C. § 1065, and thus serves as conclusive evidence of the validity of Opposer’s
`
`“JUST DO IT” mark pursuant to 15 U.S.C. § 1115(b).
`
`7.
`
`Opposer is the owner of U.S. Trademark Registration No. 4,350,316 for the mark
`
`“JUST DO IT” for “Eyeglass frames; sunglasses” in International Class 9, registered June 11,
`
`2013. This Registration is incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C.
`
`§ 1065, and thus serves as conclusive evidence of the validity of Opposer’s “JUST DO IT” mark
`
`pursuant to 15 U.S.C. § 1115(b).
`
`- 2 -
`
`

`

`
`
`8.
`
`Opposer is the owner of U.S. Trademark Registration No. 4,764,071 for the mark
`
`“JUST DO IT” for “All purpose sport bags; backpacks” in International Class 18 and “Footwear;
`
`headbands; headwear; pants; shorts; sports bras; tank tops; tights; warm up suits” in International
`
`Class 25, registered June 30, 2015. This Registration is incontestable pursuant to Section 15 of
`
`the Lanham Act, 15 U.S.C. § 1065, and thus serves as conclusive evidence of the validity of
`
`Opposer’s “JUST DO IT” mark pursuant to 15 U.S.C. § 1115(b).
`
`9.
`
`Opposer is the owner of U.S. Trademark Registration No. 4,902,036 for the mark
`
`“JUST DO IT” for “Bottles, sold empty” in International Class 21, registered February 16, 2016.
`
`This Registration is incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065,
`
`and thus serves as conclusive evidence of the validity of Opposer’s “JUST DO IT” mark pursuant
`
`to 15 U.S.C. § 1115(b).
`
`10.
`
`Opposer is the owner of U.S. Trademark Registration No. 5,727,940 for the mark
`
`“JUST DO IT” for “Retail store services and on-line retail store services featuring apparel, apparel
`
`accessories, footwear, footwear accessories, headwear, eyewear and accessories, sporting goods
`
`and equipment, bags, sports bags, sports and fitness products and accessories” in International
`
`Class 35, registered April 16, 2019.
`
`11.
`
`Opposer is the owner of U.S. Trademark Registration No. 6,185,209 for the mark
`
`“JUST DO IT” for “Hair accessories, namely, hair ties, hair bands, ponytail holders” in
`
`International Class 26, registered October 27, 2020.
`
`12.
`
`Copies of the foregoing U.S. Trademark Registrations for the JUST DO IT Mark,
`
`including the USPTO TSDR record showing the current status and title, are attached as Exhibit A.
`
`13.
`
`In addition to the registrations identified above, over the years, Opposer has owned
`
`other registrations for the JUST DO IT Mark in the United States.
`
`- 3 -
`
`

`

`
`
`OPPOSER’S JUST DO IT MARK IS WIDELY RECOGNIZED AND FAMOUS
`
`14.
`
`Opposer has made substantial sales of goods and services under its JUST DO IT
`
`Mark, and has used the JUST DO IT Mark as a slogan in highly successful advertising and
`
`promotional campaigns over the course of many years. As a result of Opposer’s widespread use
`
`of its JUST DO IT Mark for more than three decades, JUST DO IT has become a core part of
`
`Opposer’s identity.
`
`15.
`
`Opposer has brought numerous successful oppositions based on the JUST DO IT
`
`Mark, including its opposition to the mark JUST JESU IT reported in NIKE, Inc. v. Peter Maher
`
`and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011). In NIKE v. Maher, a precedential
`
`decision, the Board sustained Opposer’s opposition on both the grounds of likelihood of confusion
`
`with the JUST DO IT Mark and dilution of the JUST DO IT Mark, and found that Opposer’s JUST
`
`DO IT Mark is famous.
`
`16.
`
`Since NIKE v. Maher, the Board has issued six additional decisions on the merits
`
`sustaining NIKE’s opposition based on its JUST DO IT mark on the grounds of likelihood of
`
`confusion and/or likelihood of dilution. The list of decisions is summarized below:
`
`Case Name
`
`NIKE, Inc. v. Peter Maher and Patricia
`Hoyt Maher - (Precedential)
`NIKE, Inc. v. Capital E Finance Co, LLC
`
`NIKE, Inc. v. Cheryl Bauman-Buffone
`
`NIKE, Inc. v. Jamin Caldwell and
`Courtney Miles
`
`Opposed Mark Opposition
`No.
`
`JUST JESU IT
`
`91188789
`
`Date of Decision
`Sustaining
`Opposition
`August 9, 2011
`
`JUST DID IT
`
`91221511
`
`June 24, 2016
`
`JUSTSAYIT &
`Design
`
`91234556
`
`March 20, 2019
`
`JUST DREW IT!
`
`91240394
`
`April 28, 2020
`
`NIKE, Inc. v. John K. Muntean
`
`JUST BELIEVE IT
`
`91247956 September 10, 2020
`
`NIKE, Inc. v. Honest E Online LLC
`
`JUST BET IT
`
`91254139
`
`April 20, 2021
`
`NIKE, Inc. v. Salvatore DeRicco
`
`JUST DON IT!
`
`91269468
`
`April 14, 2023
`
`- 4 -
`
`

`

`
`
`17.
`
`In NIKE v. Maher, and all but one of the cases identified above in paragraph 16,
`
`the Board found the JUST DO IT Mark to be famous for both the purposes of assessing likelihood
`
`of confusion and dilution.1 For example, in NIKE, Inc. v. Capital E. Finance Co., the Board noted:
`
`“The record shows that Opposer’s JUST DO IT mark is universally recognized throughout the
`
`United States.” (See NIKE, Inc. v. Capital E Finance Co., LLC, Opposition No. 91221511,
`
`Board’s order dated June 24, 2016 at p. 16, 28 TTABVUE 16.) And in NIKE, Inc. v. Cheryl
`
`Bauman-Buffone, the Board confirmed that: “This evidence establishes that JUST DO IT is not
`
`only famous for purposes of both of Opposer’s claims, but exceedingly so. It is entitled to the
`
`highest level of protection against confusion.” (See NIKE, Inc. v. Cheryl Bauman-Buffone,
`
`Opposition 91234556, Board’s order dated March 20, 2019 at p. 11, 47 TTABVUE 11.)
`
`18.
`
`As a result of Opposer’s long use and registration of its JUST DO IT Mark, Opposer
`
`has developed substantial goodwill in said mark, and the public has come to associate the JUST
`
`DO IT Mark with the goods and services of Opposer.
`
`OPPOSER’S PRIOR SUCCESSFUL OPPOSITION TO JUST DON IT!
`
`19.
`
`On May 21, 2021, Opposer filed Notice of Opposition No. 91269468 (the “2021
`
`Opposition”) against U.S. Application No. 90/239,666 (the ’666 Application) for the mark JUST
`
`DON IT! for “Face masks for use by dental care providers; Face masks for use by health care
`
`providers; Face coverings being sanitary masks for protection against viral infection; Face covers
`
`being sanitary masks for protection against viral infection” in International Class 10. Opposer’s
`
`grounds for opposition in the 2021 Opposition were (1) a likelihood of confusion based upon
`
`
`1 In NIKE, Inc. v. Honest E Online LLC, the Board found JUST DO IT to be a famous trademark, but elected
`to decide the case based solely on the likelihood of confusion ground and did not reach the dilution claim.
`(See NIKE, Inc. v. Honest E Online LLC, Opposition 91254139, Board’s order dated April 20, 2021 at p.
`20, 28 TTABVUE 20.)
`
`- 5 -
`
`

`

`
`
`Opposer’s prior rights in the JUST DO IT Mark, and (2) a likelihood of dilution of the distinctive
`
`quality of Opposer’s famous JUST DO IT Mark.
`
`20.
`
`The 2021 Opposition proceeded to trial on the merits on Opposer’s likelihood of
`
`confusion and likelihood of dilution claims, with both Opposer and the applicant, Salvatore
`
`DeRicco, submitting evidence.
`
`21.
`
`Based upon at least the following facts, Salvatore DeRicco, the owner of the ’666
`
`Application that was the subject of the 2021 Opposition, is in privity with the Applicant in this
`
`opposition proceeding, Inventive Preventives LLC:
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dr. DeRicco signed the ’698 Application that is the subject of this Notice of
`Opposition on behalf of Inventive Preventives LLC, indicating that he is
`Inventive Preventive LLC’s “Principal.” In the ’698 Application, Dr. DeRicco
`also provided the same email address that he provided in connection with the ’666
`Application.
`
`In the trial brief Dr. DeRicco submitted in the 2021 Opposition, he stated that he
`is the founder and CEO of Inventive Preventives LLC. See Opp. No. 91269468,
`27 TTABVUE at 7.
`
`Dr. DeRicco filed a trademark application in his personal capacity for the
`following design, U.S. Application No. 90/791,572, which he abandoned on July
`17, 2023:
`
`
`
`According to New York Department of State records, Dr. DeRicco is appointed
`to receive service of process on behalf of Inventive Preventives LLC.
`
`Dr. DeRicco’s LinkedIn page states that he is the CEO of Inventive Preventives
`LLC. See https://www.linkedin.com/in/salvatore-p-dericco-dds-57b041193/.
`
`Inventive Preventive LLC’s Facebook page states that “Dr. Salvatore DeRicco is
`an Orthodontist who patents and/or trademarks inventive, preventive products.”
`https://www.facebook.com/InventivePreventives?mibextid=LQQJ4d
`
`- 6 -
`
`

`

`
`
`22.
`
`On April 14, 2023, the Board sustained Opposer’s likelihood of dilution claim. See
`
`Opp. No. 91269468, 31 TTABVUE at 51-52 (attached as Exhibit B). The Board’s decision on the
`
`merits held in Opposer’s favor on five of the six2 non-exhaustive factors that the Board considers
`
`in determining whether a mark is likely to cause dilution by blurring. Specifically:
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer’s JUST DO IT Mark “is famous for the purposes of dilution,” and had
`become famous “well before Applicant’s October 7, 2020 filing date.” Id. at 44-
`45.
`
`Dr. DeRicco “intended to create an association with Opposer’s JUST DO IT
`mark because [Dr. DeRicco] was aware of Opposer’s mark when he adopted
`JUST DON IT!”. Id. at 47.
`
`Dr. DeRicco’s mark “JUST DON IT! is sufficiently similar to JUST DO IT to
`trigger consumers to conjure up Opposer’s famous mark.” Id. at 49 (internal
`quotation omitted).
`
`“JUST DO IT is so distinctive that the public would associate the term with the
`owner of the famous mark even when it encounters the term apart from the
`owner’s goods or services.” Id. at 50 (internal quotation omitted).
`
`Opposer “vigilantly enforces its rights to the mark JUST DO IT.” Id.
`
`“Opposer’s evidence of strong and consistent presence in print, television
`advertising, and Internet media, as well as unsolicited media coverage, proves
`that Opposer’s mark has attained a significant level of recognition.” Id. at 51.
`
`
`
`BACKGROUND ON APPLICANT AND ITS MARK
`
`23.
`
`Applicant filed its application for
`
` (hereinafter “Applicant’s Mark”)
`
`on June 30, 2022. The application was filed pursuant to Section 1(b) of the Trademark Act,
`
`claiming a bona fide intention to use the mark in commerce in connection with “Face masks for
`
`use by dental care providers; Face masks for use by health care providers; Face coverings being
`
`
`2 The Board found that there was “no evidence of any actual association between Applicant’s mark and
`Opposer’s mark inasmuch as Applicant filed an intent to use application and there is no evidence that he
`has started using his mark.” Id. at 51.
`
`- 7 -
`
`

`

`
`
`sanitary masks for protection against viral infection; Face covers being sanitary masks for
`
`protection against viral infection; Protective face masks for medical use” in International Class 10.
`
`24.
`
`On October 3, 2022, Applicant amended the ’698 Application to delete “Face
`
`coverings being sanitary masks for protection against viral infection; Face covers being sanitary
`
`masks for protection against viral infection; Protective face masks for medical use” from the
`
`identification of goods in International Class 10.
`
`25.
`
`If Applicant is permitted to register Applicant’s Mark, the registration will give
`
`Applicant a prima facie exclusive right to the use of Applicant’s Mark for the goods set forth in
`
`the application. Such registration would damage and injure Opposer.
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`26.
`
`Opposer repeats and realleges paragraphs 1-25 as paragraph 26 of this Count I.
`
`27.
`
`Opposer’s use and registration of its JUST DO IT Mark is long prior to the filing
`
`date of the opposed Application.
`
`28.
`
`On information and belief, Applicant was aware of Opposer’s JUST DO IT Mark
`
`at the time that Applicant filed its application.
`
`29.
`
`Applicant’s Mark is confusingly similar to Opposer’s JUST DO IT Mark.
`
`30.
`
`The goods identified in Applicant’s ’698 Application, as amended, “Face masks for
`
`use by dental care providers; Face masks for use by health care providers”, are goods that are
`
`related to, and may be sold in the same channels of trade and to the same types of consumers as,
`
`the goods and services for which the JUST DO IT Mark is used and registered.
`
`31.
`
`Due to at least the similarity of the marks and goods involved, and other factors,
`
`Applicant’s use and registration of Applicant’s Mark will inevitably lead to confusion, to mistake,
`
`- 8 -
`
`

`

`
`
`or to deception of the public within the meaning of Section 2(d) of the Lanham Act, 15 USC
`
`§ 1052(d), all to Opposer’s grave and irreparable damage.
`
`32.
`
`Registration of Applicant’s Mark should be denied based on a likelihood of
`
`confusion with Opposer’s prior JUST DO IT Mark, in violation of Section 2(d) of the Lanham
`
`Act, 15 USC § 1052(d).
`
`COUNT II
`DILUTION
`
`33.
`
`Opposer repeats and realleges paragraphs 1-32 as paragraph 33 of this Count II.
`
`34.
`
`As a further ground for the opposition, Opposer’s JUST DO IT Mark, which has
`
`been in use in commerce for more than thirty years, and registered for more than twenty-five years,
`
`is famous within the meaning of Lanham Act Section 43(c), 15 USC § 1125(c).
`
`35.
`
`Opposer’s JUST DO IT Mark became famous prior to the filing date of the
`
`application for Applicant’s Mark and prior to any use or any use in commerce by Applicant of
`
`Applicant’s Mark as a trademark, service mark, or trade name.
`
`36.
`
`Registration of Applicant’s Mark is likely to cause dilution of Opposer’s JUST DO
`
`IT Mark, to the injury of Opposer, by diluting the distinctiveness of Opposer’s JUST DO IT Mark
`
`and lessening the capacity of Opposer’s JUST DO IT Mark to identify and distinguish Opposer’s
`
`goods and services, in violation of Section 43(c) of the Lanham Act, 15 USC § 1125(c).
`
`37.
`
`Registration of Applicant’s Mark should be denied based on a likelihood of dilution
`
`of the distinctive quality of Opposer’s famous JUST DO IT Mark, in violation of Section 43(c) of
`
`the Lanham Act, 15 USC § 1125(c).
`
`COUNT III
`ESTOPPEL AND PRECLUSION
`
`38.
`
`Opposer repeats and realleges paragraphs 1-37 as paragraph 38 of this Count III.
`
`- 9 -
`
`

`

`
`
`39.
`
`Applicant’s Mark is barred from registration by claim and/or issue preclusion
`
`and/or collateral estoppel.
`
`40.
`
`Applicant is in privity with the owner of the ’666 Application that Opposer
`
`successfully opposed on the merits in the 2021 Opposition.
`
`41.
`
`The 2021 Opposition was adjudicated and actually litigated, resulting in a final
`
`judgment on the merits in favor of Opposer, and the Board finding that the JUST DON IT! mark,
`
`for use in connection with “Face masks for use by dental care providers; Face masks for use by
`
`health care providers; Face coverings being sanitary masks for protection against viral infection;
`
`Face covers being sanitary masks for protection against viral infection,” was likely to dilute
`
`Opposer’s famous JUST DO IT Mark.
`
`42.
`
`The 2021 Opposition involved the same set of transactional facts as the facts
`
`pleaded in this Notice of Opposition.
`
`43.
`
`The JUST DON IT! Mark that the Board found to create a likelihood of dilution in
`
`the 2021 Opposition has the same commercial impression as Applicant’s Mark, and is its legal
`
`equivalent.
`
`44.
`
`Likewise, the goods identified in the ’693 Application, as amended, “Face masks
`
`for use by dental care providers; Face masks for use by health care providers,” are identical to
`
`goods for which Dr. DeRicco sought to register the JUST DON IT! mark.
`
`45.
`
`Accordingly, Applicant is precluded by the doctrine of claim and/or issue
`
`preclusion, and/or collateral estoppel, from registering Applicant’s Mark.
`
`- 10 -
`
`

`

`
`
`CLAIM FOR RELIEF/DAMAGE
`
`46.
`
`By reason of the foregoing, Applicant’s registration of
`
` will cause
`
`injury and damage to Opposer’s rights to its registered JUST DO IT Mark and to its use thereof
`
`described above.
`
`WHEREFORE, Opposer respectfully prays that the present opposition be sustained and
`
`that the registration sought by Applicant be refused.
`
`AUTHORIZATION FOR PAYMENT OF FEES
`
`The Patent and Trademark Office and Trademark Trial and Appeal Board are hereby
`
`authorized to collect any fees necessitated by this Notice of Opposition from the credit card on file
`
`for Arnold & Porter Kaye Scholer LLP.
`
`Respectfully submitted,
`
`Arnold & Porter Kaye Scholer LLP
`Attorneys for Opposer
`
`
`Date: February 13, 2023
`
`
`
`
`
`
`
`
`
`By: /Helen Hill Minsker/
`Helen Hill Minsker
`Michael J. Harris
`70 West Madison St., Suite 4200
`Chicago, Illinois 60602-4231
`Telephone: 312-583-2428
`helen.minsker@arnoldporter.com
`michael.harris@arnoldporter.com
`trademarkdocketing@arnoldporter.com
`
`Michael Kientzle
`Kathleen P. Duffy
`Arnold & Porter Kaye Scholer, LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001-3743
`Telephone: 202-942-5000
`michael.kientzle@arnoldporter.com
`kathleen.duffy@arnoldporter.com
`
`
`
`
`
`
`- 11 -
`
`

`

`
`
`Attachment:
`
`Exhibit A: Copies of Reg. No. 1,875,307; Reg. No. 4,350,316; Reg. No. 4,764,071; Reg.
`No. 4,902,036; Reg. No. 5,727,940; Reg. No. 6,185,209, and TSDR Records
`Showing Current Status and Title
`
`Exhibit B: Final Decision, Opp. No. 91269468, 31 TTABVUE
`
`- 12 -
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Int. Cl: 25
`
`Prior U.S. Cl: 39
`
`United States Patent and Trademark Office.resistered Jan. 24, 1995eeraSSsvshaSieteARS
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`JUST DOIT.
`
`NIKE, INC. (OREGON CORPORATION)
`3900 S.W. MURRAY BOULEVARD
`BEAVERTON, OR 97005
`
`.
`
`- FIRST USE
`1-26-1989.
`
`1-26-1989;
`
`IN COMMERCE
`
`FOR: CLOTHING, NAMELY T-SHIRTS,
`SWEATSHIRTS AND CAPS, IN CLASS 25 (U.S.
`CL.39).
`
`SER. NO. 73-829,171, FILED 10-3-1989.
`
`ANIL V. GEORGE, EXAMINING ATTORNEY
`
`

`

`Generated on: This page was generated by TSDR on 2024-02-13 10:25:42 EST
`
`Mark: JUST DO IT.
`
`US Serial Number: 73829171
`
`US Registration
`Number:
`
`1875307
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Oct. 03, 1989
`
`Registration Date: Jan. 24, 1995
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Dec. 19, 2014
`
`Publication Date:Nov. 01, 1994
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`JUST DO IT.
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Related Properties Information
`
`Parent Of: 74801373
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: CLOTHING, NAMELY T-SHIRTS, SWEATSHIRTS AND CAPS
`
`International
`Class(es):
`
`025 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 039
`
`First Use: Jan. 26, 1989
`
`Use in Commerce: Jan. 26, 1989
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`

`

`Filed 66A: No
`
`Filed No Basis: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: NIKE, INC.
`
`Owner Address: One Bowerman Drive
`Beaverton, OREGON UNITED STATES 970056453
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`OREGON
`
`Attorney/Correspondence Information
`
`Attorney Name: Jennifer Martin Reynolds
`
`Attorney Primary
`Email Address:
`
`Nike.Docket@nike.com
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Jennifer Martin Reynolds
`One Bowerman Drive
`Beaverton, OREGON UNITED STATES 97005-6453
`
`Phone: 5036716453
`
`Correspondent e-
`mail:
`
`Nike.Docket@nike.com Nike_TMdocketing@cardi
`nal-ip.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jan. 24, 2024
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Dec. 27, 2022
`
`NOTICE OF SUIT
`
`Dec. 27, 2022
`
`NOTICE OF SUIT
`
`Dec. 21, 2022
`
`NOTICE OF SUIT
`
`Nov. 29, 2022
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Nov. 29, 2022
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Nov. 29, 2022
`
`TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS
`
`Nov. 29, 2022
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Nov. 29, 2022
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Nov. 29, 2022
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Sep. 06, 2022
`
`NOTICE OF SUIT
`
`Aug. 05, 2022
`
`NOTICE OF SUIT
`
`Jun. 22, 2022
`
`NOTICE OF SUIT
`
`Jun. 09, 2022
`
`NOTICE OF SUIT
`
`May 13, 2022
`
`NOTICE OF SUIT
`
`May 12, 2022
`
`NOTICE OF SUIT
`
`May 10, 2022
`
`NOTICE OF SUIT
`
`Apr. 14, 2022
`
`NOTICE OF SUIT
`
`Apr. 11, 2022
`
`NOTICE OF SUIT
`
`Mar. 09, 2022
`
`NOTICE OF SUIT
`
`Mar. 02, 2022
`
`NOTICE OF SUIT
`
`Nov. 09, 2021
`
`NOTICE OF SUIT
`
`Aug. 10, 2021
`
`NOTICE OF SUIT
`
`Aug. 06, 2021
`
`NOTICE OF SUIT
`
`Feb. 23, 2018
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Feb. 23, 2018
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Apr. 28, 2015
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Apr. 28, 2015
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Proceeding
`Number
`
`

`

`Dec. 19, 2014
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Dec. 19, 2014
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Dec. 19, 2014
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Dec. 10, 2014
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Nov. 21, 2013
`
`NOTICE OF SUIT
`
`Mar. 22, 2013
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Mar. 22, 2013
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Oct. 17, 2011
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Oct. 17, 2011
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jun. 15, 2011
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jun. 15, 2011
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Mar. 15, 2011
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Mar. 15, 2011
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jan. 03, 2011
`
`NOTICE OF SUIT
`
`Oct. 15, 2010
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Oct. 15, 2010
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jun. 24, 2009
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jun. 24, 2009
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Sep. 25, 2008
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Aug. 27, 2008
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Aug. 27, 2008
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jun. 25, 2008
`
`NOTICE OF SUIT
`
`Jun. 23, 2008
`
`NOTICE OF SUIT
`
`Jun. 23, 2008
`
`NOTICE OF SUIT
`
`Jun. 13, 2008
`
`NOTICE OF SUIT
`
`Jun. 13, 2008
`
`NOTICE OF SUIT
`
`Jun. 06, 2008
`
`NOTICE OF SUIT
`
`NOTICE OF SUIT
`
`Jun. 06, 2008
`
`Jun. 06, 2008
`
`NOTICE OF SUIT
`
`Jun. 05, 2008
`
`NOTICE OF SUIT
`
`Jun. 02, 2008
`
`NOTICE OF SUIT
`
`May 20, 2008
`
`NOTICE OF SUIT
`
`Apr. 10, 2008
`
`NOTICE OF SUIT
`
`Apr. 10, 2008
`
`NOTICE OF SUIT
`
`Apr. 10, 2008
`
`NOTICE OF SUIT
`
`Apr. 06, 2008
`
`NOTICE OF SUIT
`
`Apr. 01, 2008
`
`NOTICE OF SUIT
`
`Mar. 31, 2008
`
`NOTICE OF SUIT
`
`Mar. 31, 2008
`
`NOTICE OF SUIT
`
`Mar. 28, 2008
`
`NOTICE OF SUIT
`
`Mar. 27, 2008
`
`NOTICE OF SUIT
`
`Mar. 27, 2008
`
`NOTICE OF SUIT
`
`Mar. 26, 2008
`
`NOTICE OF SUIT
`
`Mar. 26, 2008
`
`NOTICE OF SUIT
`
`Mar. 24, 2008
`
`NOTICE OF SUIT
`
`Mar. 20, 2008
`
`NOTICE OF SUIT
`
`Mar. 20, 2008
`
`NOTICE OF SUIT
`
`Mar. 20, 2008
`
`NOTICE OF SUIT
`
`Mar. 20, 2008
`
`NOTICE OF SUIT
`
`Mar. 18, 2008
`
`NOTICE OF SUIT
`
`Mar. 13, 2008
`
`NOTICE OF SUIT
`
`Mar. 13, 2008
`
`NOTICE OF SUIT
`
`Mar. 12, 2008
`
`NOTICE OF SUIT
`
`Mar. 12, 2008
`
`NOTICE OF SUIT
`
`Mar. 12, 2008
`
`NOTICE OF SUIT
`
`

`

`Mar. 03, 2008
`
`NOTICE OF SUIT
`
`Mar. 03, 2008
`
`NOTICE OF SUIT
`
`Mar. 03, 2008
`
`NOTICE OF SUIT
`
`Feb. 26, 2008
`
`NOTICE OF SUIT
`
`Feb. 18, 2008
`
`NOTICE OF SUIT
`
`Feb. 18, 2008
`
`NOTICE OF SUIT
`
`Feb. 18, 2008
`
`NOTICE OF SUIT
`
`Feb. 18, 2008
`
`NOTICE OF SUIT
`
`Feb. 18, 2008
`
`NOTICE OF SUIT
`
`Feb. 18, 2008
`
`NOTICE OF SUIT
`
`Feb. 11, 2008
`
`NOTICE OF SUIT
`
`Feb. 03, 2008
`
`NOTICE OF SUIT
`
`Jan. 28, 2008
`
`NOTICE OF SUIT
`
`Jan. 28, 2008
`
`NOTICE OF SUIT
`
`Jul. 12, 2007
`
`NOTICE OF SUIT
`
`Apr. 26, 2007
`
`NOTICE OF SUIT
`
`Apr. 26, 2007
`
`NOTICE OF SUIT
`
`Apr. 26, 2007
`
`NOTICE OF SUIT
`
`Mar. 22, 2007
`
`NOTICE OF SUIT
`
`Mar. 04, 2005
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Mar. 04, 2005
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jan. 21, 2005
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Jan. 21, 2005
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Apr. 24, 2001
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Jan. 24, 2001
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Jan. 24, 1995
`
`REGISTERED-PRINCIPAL REGISTER
`
`Nov. 01, 1994
`
`PUBLISHED FOR OPPOSITION
`
`Sep. 30, 1994
`
`NOTICE OF PUBLICATION
`
`Aug. 02, 1994
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jun. 28, 1994
`
`ASSIGNED TO EXAMINER
`
`May 11, 1994
`
`ASSIGNED TO EXAMINER
`
`Sep. 08, 1993
`
`LETTER OF SUSPENSION MAILED
`
`Aug. 10, 1993
`
`DIVISIONAL PROCESSING COMPLETE
`
`Jun. 02, 1993
`
`DIVISIONAL REQUEST RECEIVED
`
`Apr. 12, 1993
`
`NON-FINAL ACTION MAILED
`
`Oct. 01, 1992
`
`LETTER OF SUSPENSION MAILED
`
`Jul. 17, 1992
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jan. 27, 1992
`
`LETTER OF SUSPENSION MAILED
`
`Dec. 27, 1991
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Nov. 27, 1991
`
`LETTER OF SUSPENSION MAILED
`
`Oct. 25, 1991
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jul. 05, 1990
`
`LETTER OF SUSPENSION MAILED
`
`Jun. 19, 1990
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Dec. 20, 1989
`
`NON-FINAL ACTION MAILED
`
`Nov. 29, 1989
`
`ASSIGNED TO EXAMINER
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Dec. 19, 2014
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 2
`
`Registrant: NIKE, INC.
`
`

`

`Assignment 1 of 2
`
` 
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST AND THE GOODWILL
`
`Reel/Frame: 0945/0448
`
`Date Recorded: Apr. 01, 1993
`
`Supporting
`Documents:
`
`No Supporting Documents Availabl