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NIKEPAL Was Likely to Cause Dilution by Blurring of NIKE
by Thomas
Long, Legal Editor, CCH
Trademark Law Guide
Registration of the mark NIKEPAL --for import and export agencies and
wholesale distributorships featuring testing instruments and glassware for
laboratory use and other applications --was likely to cause dilution by blurring
of the trade name and mark NIKE --registered and used in connection with
athletic shoes, sporting goods, and numerous other goods and services
--according to the federal district court in Sacramento. Nike's request for an
injunction barring use of the NIKEPAL mark was granted, as well as Nike's
request for an order sustaining an opposition to NIKEPAL's registration. A
decision by the Trademark Trial and Appeal Board (TRADEMARK LAW
GUIDE ¶60,549)
dismissing Nike's opposition action was reversed.
The NIKE mark was famous prior to the first use in commerce in May 1998 of the
mark NIKEPAL, the court said. NIKE was promoted nationally through various
combinations of athlete endorsements and television, radio, print media, and
billboard advertisements for more than two decades before 1998. Nike had spent
more than a billion dollars promoting NIKE products in the United States. Sales
of NIKE products reached the level of a billion dollars per year in the United
States well before May 1998. Since the early 1990s, NIKE had been consistently
ranked as a top brand in brand surveys in the United States and the world.
NIKE and NIKEPAL were nearly identical, in the court's view. The dominant
feature of both marks was the term "Nike." Nike's use of the NIKE mark
was substantially exclusive, and the mark was widely recognized. Consumer survey
evidence showed that there was a strong association between NIKE and NIKEPAL.
The applicant's assertion that he came up with the term NIKEPAL by opening the
dictionary to a random page was not credible, according to the court, so the
factor of intent favored Nike.
Nike, Inc., ED Cal., ¶61,106
(The above feature is selected from the newsletter
published monthly along with full text documents and other materials provided to
subscribers of the CCH
Trademark Law Guide.)
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