Just ______ it

January 13, 2012 11:07 AM

If you change a word in a trademarked advertising slogan, can it be used, or is it trademark infringement?

For instance, can a company use "Just buy it" as their tagline when Nike owns the trademark on "Just do it"? (The company in question is not in any way a competitor of Nike. Completely different product.)

posted by ljshapiro to law & government (8 answers total)

If it's likely to cause confusion with the original, i.e., make the viewer think it has to do with the original company, a case for infringement can be made.
posted by Johnny Wallflower at 11:35 AM on January 13, 2012 [1 favorite]

A more nuanced answer can be found on the Wiki page. Are the products similar?
posted by Johnny Wallflower at 11:42 AM on January 13, 2012

Eat more kale / Eat mor chikn
posted by neustile at 11:44 AM on January 13, 2012 [1 favorite]

neustile linked to the example I was thinking of - I don't know whether it would "officially" be infringement but it seems important to keep in mind that that wouldn't necessarily stop the other company from suing.
posted by brilliantine at 11:54 AM on January 13, 2012

The pork people have cease-and-desisted (if not actually sued) various people/orgs for infringement of their "The other white meat" slogan, including a lobster association who used "The ultimate white meat," a breastfeeding organization that produced t-shirts that said, "Breast: the other white milk" and, perhaps most awesomely, Think Geek, for an April Fool's gag that touted unicorn as "The new white meat."

But I don't think they actually won any suits against anyone, and they had to apologize to the breastfeeding people.
posted by mskyle at 11:55 AM on January 13, 2012

I am not a lawyer, your lawyer or your brand consultant.

However, I was a brand consultant and here's the spiel I would give you.

"I do not know your company's tolerance for risk and litigation. I can tell you what else is out there, ways of framing the decision, but the decision on whether to move forward or not is always a high level business decision made on the basis of a complete discussion and investigation with a legal professional with a background in trademark, fair use, parody and IP."

What are you using it for?
- If you're mocking Nike, a la Adbusters, or something Nike represents, and (and this is where your lawyer is going to weigh in), it is an artistic or political statement vs. a product you sell or a self promotion piece directly designed to get money, you're OK
Example: Comic book, within its pages, mocks the Starbucks logo. Totally fair use. That becomes so popular, the artist makes a shirt out of the logo and sells it online? Hit with a C&D from Starbucks

How strong is the protection of the trademark?
- Nike's "Just Do It" was too common for them to initially register a trademark globally on it. However, one by one in jurisdictions, they've been able to prove that the first and most common association with "Just Do It" is Nike, so it's now very hard to prove that "Just _____ It" or "Just Do ________" isn't just using a phrase that existed before they used it, but a company attempting to leverage the value of the Nike brand
- How many other companies have similar trademarks registered in any IC (International Class)?
- How often has the company you're riffing on legally gone after people who've leveraged their trademark?
- How common/everyday is the phrase? (McDonald's "I'm lovin' it" is difficult to protect outside of the class of food because of its proliferation. "Got ______?" has similar issues.
- How big is the company? How deep are their pockets? How big is their legal staff?
- Have they recently invested in the brand with an advertising campaign, new product launch, extension into new regions?

What is the potential for customer confusion?
- Do you and the company have any offerings in the same IC (International Class) (look on USPTO)?
- Are you based in the same geographic region?
- Do you target the same general customer audience?
- Are you selling in the same or similar retail or sales channels?
- Would a (reasonable -- although this is weak) consumer be confused that the two companies, their offers, their sales staff or technology are related in any way?

How committed is your company?
- Do you have the resources to weather a legal challenge? Even if you win, this takes time and money.
- Will it cause a public relations headache if a lawsuit or a C&D is filed?
- Will the association be seen as positive by your customers and employees? Or a "me too" move?

You, your company, your trademark attorney and perhaps even your investor relations person (depending on the size of your company) need to sit down, do some investigation, talk through all of this and determine: "Does the benefit outweigh the risk?"

(Sorry to be unfun with my answer, but there are so many variables that it's not a cut and dry answer.)
posted by Gucky at 12:16 PM on January 13, 2012 [12 favorites]

My media law prof (a class targeted at journos, not law students) put it most succinctly when he said something on the order of "when determining your actions you should always remember that both trademark infringement and fair use are what a judge or jury says they are."

He wasn't conflating copyright and trademark law; he was making the point that these are two things where you don't get an absolute answer till there's a ruling.

Which means you got sued.

Which is expensive - both with regards to time and to money - regardless of whether you eventually prevail.

If you're lucky you get a dismissal quickly. The shortest way I know of to describe the guiding rule of trademark is "likelihood of confusion." There's a good blog about it and the sidebar says The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid.

Which is my long and roundabout way of actually answering your question: it depends. Nike has a long history of using variations of "Just X it" and if you're doing something that seems to be in their arena - which covers a big area since they have all sorts of clothing and other products - yeah, you could well be violating their trademark with just a single word change.
posted by phearlez at 12:47 PM on January 13, 2012 [1 favorite]

My first port of call would be TESS, the USTPO database. You'll find there are multiple instances of live trademark registrations, including Just Kickin' It, Just Share It, Just Enjoy It. Based on that, and if I didn't sell shoes or apparel, I'd proceed.
posted by DarlingBri at 2:42 PM on January 13, 2012