The opinion of the court was delivered by: CHARLES P. KOCORAS
CHARLES P. KOCORAS, District Judge:
This matter comes before the court on plaintiff's and defendant's cross-motions for summary judgment pursuant to Rule 56 Fed. R. Civ. P. For the reasons set forth below, plaintiff's motion is granted, and defendant's motion is denied.
Plaintiff Nike, Inc. ("Nike") filed this suit against defendant Michael Stanard ("Stanard") alleging trademark infringement, unfair competition, trademark dilution, and deceptive trade practices arising out of defendants' manufacture and sale of T-shirts and sweatshirts bearing the logo "MIKE," displayed in the same typeset and along with a reproduction of the Swoosh stripe for which Mike has been granted trademark protection. Moreover, Nike contends that defendants' use of the tradename "Just Did It" Enterprises constitutes infringement on Nike's slogan "Just Do It." Both parties have filed motions for summary judgment pursuant to Rule 56 Fed. R. Civ. P.
Summary judgment is appropriate where the submissions of the parties indicate that no genuine issue of material fact stands in the way of judgment as a matter of law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). Here, the submissions of the parties show that the parties agree on the material facts of the case: Stanard offered for sale, sold and distributed through the mail T-shirts and sweatshirts bearing the name "Mike", set in the same typestyle and along with the Swoosh stripe that Mike uses as its trademark, using the company name "Just Did It" Enterprises. Yet, the parties disagree about the legal consequences of Stanard's actions. Mike argues that Stanard's activities constitute trademark infringement and unfair competition, and seek injunctive relief as well as attorneys fees. Stanard argues his work is protected as a parody, and therefore Mike is not entitled to any relief.
Nike seeks an order that defendants have infringed its exclusive rights in the trademark NIKE, the Swoosh stripe design, the NIKE and Swoosh design combination, and the trademark slogan "Just Do It." Mike seeks a permanent injunction enjoining defendants from further use of the NIKE, Swoosh stripe, and "Just Do It" trademarks. Nike also seeks the following relief: 1) an order pursuant to § 36 of the Federal Trademark Act, 15 U.S.C. § 1118 requiring defendants to deliver for destruction all infringing articles, 2) an order pursuant to § 35(b) of the Federal Trademark Act, 15 U.S.C. § 1117(b), requiring defendants to account for and pay Nike for all profits they have realized from the infringing activity, and 3) an order requiring defendants to costs of this action and reasonable attorneys' fees, in accordance with § 35 of the Federal Trademark Act, 15 U.S.C. § 1117.
In order to obtain an injunction, Nike must establish the following: 1) that it will or has succeed on the merits, 2) no adequate remedy at law exists; 3) irreparable harm will arise absent injunctive relief, 4) the irreparable harm that Nike will suffer in absence of injunctive relief outweighs the irreparable harm Stanard will suffer if the injunction is granted, and 5) the injunction will not harm the public interest. Amoco Production v. Gambell, 480 U.S. 531, 546, 94 L. Ed. 2d 542, 107 S. Ct. 1396 n.12 (1987); U.S. v. Rural Electric Convenience Coop. Co., 922 F.2d 429, 432 (7th Cir. 1991). Each of these elements will be discussed in turn.
In order to establish liability for trademark infringement and unfair competition, Nike must show: 1) that it has a protectible trademark, and 2) likelihood of confusion as to the source or origin of defendants' product. See e.g., International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir. 1988). Nike has clearly established that it has a protectible trademark. The trademark NIKE, the Swoosh stripe design, and the trademark NIKE along with the Swoosh stripe are registered trademarks.
Their registration provides prima facie evidence of their validity as trademarks and of Nike's exclusive right to use the marks on apparel and related accessories. Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366 (7th Cir. 1976), cert. denied, 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91 (1976). Moreover, each of these registrations have become incontestable under § 15 of the Federal Trademark Act, 15 U.S.C. § 1065, and accordingly constitute conclusive evidence of their distinctiveness as trademarks. Id. at 377.
Although it is not registered, the slogan "Just Do It" is also entitled to trademark protection. An unregistered mark is still entitled to trademark protection where its use is inherently distinctive as applied to the goods on which it is used, or where its use has acquired secondary meaning in the marketplace. See International Kennel Club, 846 F.2d at 1085. Although Stanard is correct in arguing that "Just Do It" is a common phrase used in the English language, Mike's use of the phrase in association with apparel makes it distinctive and arbitrary so that it is entitled to trademark protection. See Tisch Hotels, Inc. v. American aInn, Inc., 350 F.2d 609 (7th Cir. 1965). Moreover, Mike's extensive use of the phrase in conjunction with its promotion of its products has given it significant public recognition. Therefore, we conclude as a matter of law that Mike has established the validity of the marks in question.
Next we must evaluate the likelihood of confusion resulting from Stanard's use of MIKE with the Swoosh stripe. In McGraw-Edison Co. v. Walt Disney Productions, 787 F.2d 1163, 1167 (7th Cir. 1986), the Seventh Circuit set forth seven factors to be analyzed in determining the likelihood of confusion:
The degree of similarity between the marks in appearance and suggestion; the similarity of the products for which the name is used; the area and manner of concurrent use; the degree of care likely to be exercised by consumers; the strength of the complainant's mark; actual confusion; and an intent on the ...