Nike continues to flex its ever-growing muscles in protecting its lucrative Jumpman brand, blocking the NFL’s Rob Gronkowski’s registration of a silhouette of his signature touchdown spike earlier this week. In a Notice of Opposition before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“USPTO”), Nike argues that Gronkowski’s mark is too similar to the Jumpman logo (a silhouette of Michael Jordan dunking a basketball), one of the most recognizable trademarks in sports.
Gronkowski’s company, Gronk Nation, L.L.C. is applying for registration of the mark shown above and to the left in connection with “Clothing, namely, hats, caps, shirts, T-shirts, jerseys, sweatshirts, pants, jackets, [and] rain jackets”. In a formal opposition, Nike alleges that Gronkowski’s goods, in combination with his mark, are too similar to the Jumpman logos used in connection with “Footwear and clothing, namely pants, shorts, shirts, t-shirts, sweatshirts, tank tops, warm-up suits, jackets, hats, caps, and socks”, as well as “Footwear, t-shirts, shorts, pullovers, pants, warm-up suits and tank tops”. Nike believes that registration of Gronkowski’s mark will lead to consumer confusion as people could theoretically purchase Gronkowski-branded goods thinking that they are actually getting a pair of Air Jordan 4’s.
In addition, Nike seeks denial of Gronkowski’s registration based on fame. Nike alleges that it has continuously used the famous Jumpman logo in commerce for more than 25 years; Nike’s earliest registration for the Jumpman logo was over 20 years ago; and its Jumpman logo became famous well before Gronkowski’s use of his mark. As a result, Nike believes that registration of Gronkowski’s mark will lead to dilution of the distinctive quality of the Jumpman logo.
Nike’s opposition prevents Gronkowski’s application from proceeding to registration. Gronkowski has until August 5 to respond to the Notice of Opposition or the USPTO can abandon his application. Spokespersons for Nike and Gronkowski have said they wish to resolve the matter without a legal battle.
A potential legal battle would be an awkward clash between Nike – a behemoth in the sports apparel industry – and Gronkowski, who, ironically, has an endorsement deal with the very company that is opposing his registration. If it comes to that, Gronkowski would need to overcome Nike’s arguments and evidence of consumer confusion. Even if Nike loses on its likelihood of confusion claim, it would almost assuredly prevail on its dilution claim, as proving fame does not require any evidence of consumer confusion. Moreover, Nike would likely have no issues proving the fame of its Jumpman logo.
Nike took advantage of USPTO filing procedures in receiving the maximum 180-day filing extension for its Notice of Opposition. Gronkowski’s application would have likely proceeded to registration if no other parties had opposed the application as long as Gronkowski assured the USPTO that it was using his mark on the goods listed on his application.