## Facts

- Nike, Inc., founded in Oregon, has used the NIKE mark since 1971 and changed its corporate name to Nike, Inc. in 1978.
- Nike sells and markets athletic footwear, apparel, and equipment nationwide and worldwide, with very large U.S. sales volumes and extensive long-term advertising expenditures.
- Nike owns numerous trademark registrations for NIKE and NIKE-formative marks covering athletic goods and related services.
- Nikepal International, Inc., a California company formed in 1998, used the NIKEPAL designation for laboratory-products distribution and related services.
- Nikepal’s principal admitted awareness of Nike’s NIKE mark before choosing NIKEPAL; NIKEPAL visually and phonetically incorporated “NIKE” as its dominant element.
- Nike presented survey evidence that a substantial majority of relevant consumers associated NIKEPAL with NIKE.

## Issues

1. Whether NIKE qualifies as a “famous” mark under federal and California dilution law.
2. Whether Nikepal’s use and proposed registration of NIKEPAL was likely to dilute the distinctiveness of NIKE by blurring.
3. Whether the TTAB erred in denying Nike’s opposition to registration of NIKEPAL when the dispute was reviewed in a civil action under 15 U.S.C. § 1071.

## Decision

- The court found NIKE to be a famous, highly distinctive mark for purposes of federal and California dilution law.
- The court held Nikepal’s use of NIKEPAL was likely to dilute NIKE by blurring based on the marks’ similarity, NIKE’s recognition, survey evidence of association, and Nikepal’s awareness of NIKE.
- The court reversed the TTAB’s denial of Nike’s opposition and ordered that the NIKEPAL application be refused.
- The court enjoined Nikepal from using “NIKE,” or any confusingly similar designation, as part of any trademark, domain name, or business name in commerce.
- Because Nike prevailed on dilution, the court did not reach Nike’s trademark infringement and unfair competition claims.

## Legal Principles

- A mark is “famous” for dilution purposes when the evidence shows widespread public recognition, including extensive duration of use, advertising, sales, and marketplace recognition.
- Dilution by blurring may be established where a junior designation creates an association likely to impair the distinctiveness of a famous mark, even if the parties’ goods or services differ.
- In assessing blurring, courts consider similarity (including whether the famous mark is the dominant portion of the junior designation), the degree of recognition of the famous mark, evidence of actual association (including survey evidence), and the junior user’s intent.
- In a civil action reviewing a TTAB decision under 15 U.S.C. § 1071, the court may consider additional evidence beyond the administrative record and may reverse the TTAB if the expanded record warrants a different result.
- Upon a showing of likely dilution, injunctive relief may bar use of the diluting designation in trademarks and commercial identifiers such as domain names and business names.

## Conclusion

The court concluded that NIKE’s fame and the strong association created by NIKEPAL established a likelihood of dilution by blurring, reversed the TTAB’s decision permitting registration, refused the NIKEPAL application, and permanently enjoined Nikepal from using NIKE or confusingly similar terms in commercial identifiers.


Nike, Inc. v. Nikepal Int’l, Inc., 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007)