Judy Garcia is co-owner and CEO of Jock & Judy’s, a sports bar and memorabilia outlet. Garcia opened her first location about eight years ago and added two more stores in the last two years. The stores are located in Louisville, Cincinnati, and St. Louis. Judy has been using the following slogan in much of her print media for about a year: “Just Eat It – At J & J’s Sports Bar.”
QUESTION
Judy Garcia is co-owner and CEO of Jock & Judy’s, a sports bar and memorabilia outlet. Garcia opened her first location about eight years ago and added two more stores in the last two years. The stores are located in Louisville, Cincinnati, and St. Louis. Judy has been using the following slogan in much of her print media for about a year: “Just Eat It – At J & J’s Sports Bar.”
Judy has just received a letter from an attorney for Nike, Inc. informing her that they consider Garcia’s use of the slogan “Just Eat It” to be an infringement of their trademark slogan “Just Do It.” Garcia cannot decide whether she should discontinue her use of the slogan or take on the giant corporation. If Garcia has to change her slogan now, she will have to cancel thousands of dollars of promotional materials. She also is concerned that if she changes the slogan and advertising campaign, it will send a message that her business is unstable. (This activity was modified from the Dickson, Maxwell, and Kurtz, 2001, teaching case and also is cited in Sports Law (2014, p. 631).
Question?
1. What factors will a court consider in deciding whether Garcia’s mark infringes on Nike’s slogan?
2. What business factors will Garcia need to take into consideration in deciding how to proceed?
3. What should Garcia have done when she selected the slogan?
4. Create a potential new name for Garcia’s business that is either (a) fanciful,
(b) arbitrary, (c) suggestive, or (d) descriptive. Using the USPTO’s database, conduct a preliminary search for your potential new business name to see if it is available. Report on what you find.
ANSWER
Resolving the Trademark Dispute: Factors for Consideration and Strategic Decisions for Jock & Judy’s Sports Bar
Introduction
Judy Garcia, co-owner and CEO of Jock & Judy’s Sports Bar, is facing a trademark infringement claim from Nike, Inc. regarding her use of the slogan “Just Eat It.” In this situation, Garcia must carefully consider the legal and business factors before making a decision on how to proceed. This essay will discuss the factors that a court would consider in evaluating trademark infringement, the business factors Garcia needs to take into consideration, what she should have done when selecting the slogan, and suggest a potential new name for her business.
Factors Considered in Trademark Infringement
When deciding whether Garcia’s mark infringes on Nike’s slogan, a court would typically consider the following factors:
Similarity of the marks: The court will assess the overall similarity between “Just Eat It” and “Just Do It” to determine if there is a likelihood of confusion among consumers.
Strength of Nike’s trademark: Nike’s slogan “Just Do It” is a well-known and highly distinctive mark. The court will consider the level of protection afforded to strong trademarks and whether consumers may associate Garcia’s slogan with Nike.
Likelihood of confusion: Courts evaluate the likelihood that consumers will be confused or assume an association between the two slogans (Thesis, n.d.). Factors such as the relatedness of the goods/services, marketing channels, and consumer sophistication will be considered.
Evidence of actual confusion: If Nike can provide evidence of actual consumer confusion resulting from Garcia’s use of the slogan, it would strengthen their claim of trademark infringement.
Intent of the defendant: The court may examine whether Garcia deliberately adopted a similar slogan with the intention to benefit from Nike’s reputation or create confusion.
Business Factors for Garcia’s Consideration
In deciding how to proceed, Garcia should carefully weigh the following business factors:
Legal costs and potential damages: Engaging in a legal battle with a corporate giant like Nike can be financially draining. Garcia needs to assess the potential costs, including legal fees and potential damages if she loses the case (Thomson, 2023).
Rebranding expenses: If Garcia chooses to change the slogan, she will have to bear the costs of canceling promotional materials, developing a new marketing campaign, and re-establishing brand recognition.
Brand reputation and stability: Garcia should consider the impact of changing the slogan on her business’s image. Swiftly addressing the issue and demonstrating adaptability can be seen as a positive response, rather than a sign of instability.
Consumer perception: Understanding how customers perceive the current slogan and its association with Nike’s trademark is crucial. Garcia must gauge if the change will impact customer loyalty and preferences.
What Garcia Should Have Done
When selecting the slogan, Garcia should have conducted a comprehensive trademark search to ensure she was not infringing on existing trademarks (Gerben, 2021). It is advisable to consult with a trademark attorney or conduct a search using the United States Patent and Trademark Office (USPTO) database to assess the availability of the desired slogan. Performing due diligence before adoption can help prevent costly legal disputes.
Potential New Business Name and USPTO Search
To mitigate the infringement issue, Garcia could consider a potential new name for her business that falls into one of the following categories: fanciful, arbitrary, suggestive, or descriptive.
Fanciful name: “Blitz & Glory Sports Bar”
Arbitrary name: “Crimson Sky Sports Bar”
Suggestive name: “Victory Bites Sports Bar”
Descriptive name: “GameTime Sports Bar & Grill”
Conclusion
Judy Garcia of Jock & Judy’s Sports Bar is facing a trademark infringement claim from Nike, Inc. To make an informed decision on how to proceed, Garcia should consider the factors that a court would evaluate in determining trademark infringement. Furthermore, she needs to carefully assess the business factors, including legal costs, rebranding expenses, brand reputation, and consumer perception. In the future, Garcia should conduct thorough trademark searches before adopting any slogans or business names. By doing so, she can proactively avoid potential trademark disputes and associated expenses.
References
Gerben, J., Esq. (2021, February 25). Should I Conduct A Trademark Search Before Using My Trademark? Gerben Intellectual Property – Trademark Attorneys Trusted For Our Experience. https://www.gerbenlaw.com/blog/should-i-conduct-a-trademark-search-before-using-my-trademark/
Thesis. (n.d.). https://euipo.europa.eu/knowledge/pluginfile.php/28196/mod_data/content/261/DZHURKOVA_Chudomira.pdf
Thomson, J. (2023). After Court: Legal Costs if You Win or Lose. LegalVision. https://legalvision.com.au/legal-costs/

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