Notes on Trademark Monitoring

By Jaiana Casanova

Reviewed by Kyu Hee Chu

Having a registered trademark is generally not enough nowadays. It has become increasingly important to monitor the trademark and the market for anyone trying to take advantage of the good will of a well established trademark.

One example of this importance concerns Nike, the sports apparel brand, which recently opposed the registration of the trademark “JUST JESU IT” for sports apparel, claiming the similarity with its widely known “JUST DO IT.” Nike argued that its mark is famous, and that the “JUST JESU IT” mark would be confusingly similar and would dilute the Nike brand.

The Trademark Trial and Appeal Board (TTAB) agreed with Nike on this position, finding that there was likelihood of confusion, that the goods were presumed to travel in the same channels of trade, and that they would possibly be purchased by the same consumers. The TTAB also agreed with Nike indicating that its mark was famous for purposes of dilution, and held that the requisite of “association” was enough for a finding of dilution by blurring, setting aside the previous standard of “substantial similarity” or “near identical” test.

Opposing the registration of a mark is one way of protecting a trademark. Other ways to monitor trademarks are – paying close attention to the use licensees give to the mark, by making sure they use it properly as an adjective, not as a noun. If a licensee uses the trademark as a noun, it may then acquire a generic or descriptive meaning, losing in consequence the trademark protection acquired by law. In addition, it is necessary that licensees also take the necessary measures to promote the brand and to protect it from infringers.

It is important to keep in mind that there is much trademark infringement out there and it does not seem like it will stop anytime soon. For this reason, major names, from apparel brands to performers, must pay special attention to the use of their names and likenesses in order to fight infringement before it gets out of hand.

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