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The Trademark Trial and Appeal Board (TTAB) granted Palm Beach Crossfit, Inc. d/b/a Crossfit CityPlaces’ motion to dismiss two of Nike’s four claims in a recent Opposition proceeding. An Opposition proceeding is an administrative process that allows third parties to formally dispute the validity of a pending trademark application. Here, the Board found that Nike had ineffectively pleaded claims under Section 2(a) and 2(c) of the Lanham Act. Palm Beach Crossfit sought to register the design marks (the “Handstand marks”), shown directly below, for athletic training services and athletic apparel.
Nike asserted that the Handstand marks falsely suggest a connection with Michael Jordan and that the marks comprise a portrait of a living individual without his consent. Nike, Inc. v. Palm Beach Crossfit Inc. d/b/a Crossfit CityPlace, Opposition No. 91218512 (September 11, 2015) [precedential]. Nike claims ownership of the design marks (the “Jumpman marks”) shown below for footwear, clothing, basketballs, and a number of additional items.
One of Nike’s four claims was for false suggestion of a connection with Michael Jordan, pursuant to Trademark Act Section 2(a). The “initial and critical requirement” for this type of claim is that the identity being appropriated is unmistakably associated with the person or institution identified. Interestingly enough, Nike generally alleged that its longstanding relationship with Michael Jordan led to a close association between Nike and Michael Jordan in the minds of the public. Nike did not assert that the public would recognize Palm Beach Crossfit’s marks as pointing uniquely to Nike (or to Michael Jordan), or that the Handstand marks are a close approximation of Nike’s (or Michael Jordan’s) identity or “persona,” an element necessary to a false suggestion of a connection claim. Accordingly, the Board dismissed Nike’s Section 2(a) claim as insufficient. An additional claim made by Nike was that the Handstand mark comprises a portrait of a living individual–Michael Jordan, without his consent, pursuant to Trademark Action Section 2(c). Under Section 2(c), a plaintiff must allege that the marks “consists of or comprises” the name, image, likeness, or signature of a particular living individual, and that “he or she is so well known that the public would reasonably assume a connection between the mark and the individual, or that, because the individual is publicly connected with the business or field of the identified goods or services, such connection would be assumed.” While Section 2(a) may be invoked by an entity, Section 2(c) specifically requires reference to “a particular living individual.” Nike asserted a licensing relationship with Michael Jordan and that it has developed and used trademarks involving Michael Jordan’s image, giving Nike a monetary interest in the image of Michael Jordan. Nike did not assert, however, that the “licensing relationship” gives it a proprietary right to assert a Section 2(c) claim on Jordan’s behalf. As such, the Board dismissed the Section 2(c) claim for insufficient pleading. Nike was given twenty days from the date of the Board’s order to amend their notice of opposition. Nike’s claims for likelihood of confusion pursuant to Trademark Act Section 2(d) and dilution pursuant to Trademark Act Section 43(c) remain. Stay tuned for updates.