CALIFORNIA, USA — In 2020, Andrea Galbreath started a succulent business with the tongue-in-cheek name "Just Succ It" after the self-described "coronapocalypse" left her unemployed.
Inspired by making her California yard drought-tolerant, she got to work after creating her first plant-based gift box for a friend.
"I just immediately became obsessed with succulents because they are incredible the way they adapt and thrive," she said.
At first, Galbreath says she didn't really think the endeavor would turn into anything. But just like the succulents she sells, her small business started to grow.
The attention her shop started getting was behind her decision to trademark its name in April 2021. So, she hired an attorney and put what she needed in place.
That trademark was then published on Jan. 4, 2022. Not too long after, she received a notice that could change everything.
Nike "was opposing my trademark," Galbreath said.
It's because Nike wants to protect anything similar to its iconic phrase "Just Do it." And, apparently, "Just Succ It" caught its attention.
"You know, Nike is a huge, huge corporation and I thought 'well I don't have the financial resources to go after a company like this.' So, let me see — let me use the resources I do have to see if there's, you know, something I don't know," Galbreath said.
That's when she turned to TikTok. On the popular app known for challenges and dancing, Galbreath's now four-part series about Nike "coming after" her has gone viral.
As of this writing, the series has gained more than 2 million views on the app.
Even though a mass of people have seen her videos, Galbreath says she hasn't personally heard from anyone at Nike. She did, however, receive a cease and desist from the company.
According to Galbreath, the notice said that she needs to abandon her trademark and the use of the company's name.
"The reality is trademark litigation is very, very expensive and these corporations have very deep pockets and whether it's right or wrong or if I'm right or their right — it doesn't matter. The reality is I can be buried in hundreds of thousands of dollars in litigation," she said.
The small shop owner says she finds the situation to be "ridiculous" given no one is likely to head online in search of Nike's sneakers and instead ends up purchasing an arrangement of succulents.
"Nobody, nobody goes online to buy sneakers and accidentally orders a succulent arrangement instead," she said.
As for why she thinks Nike is doing this?
"Well, according to the cease and desist that they sent me, they're a very famous mark and anything with 'just' and blank 'it' they have, I guess they think they own. And that famous trademarks are held to a higher standard so they feel like they can," Galbreath said.
And, based on decisions posted to the "TTAB Reading Room" of the U.S. Patent and Trademark Office's website, she is likely on to something.
A search on Jan. 27 for "Nike" showed 14 results for oppositions filed with the USPTO by Nike, Inc. The oppositions dating back to 2003 were filed against trademarks for phrases like "Just Bet It," "Just Believe It," "Just Drew It," "Just Did It," among others.
While some cases were dismissed, the majority were sustained.
While you might be confused as to why a major company would go through the lengths of opposing the trademark of a succulent business, Attorney John Rizvi, otherwise known as "The Patent Professor," says it's not an uncommon practice.
“It’s extremely common for large companies to monitor the trademark database, or a lot of the time they’ll have attorneys monitor the trademark database and anytime something is found that’s confusingly similar or that they feel would somehow negatively impact their trademark they oppose," said Rizvi.
Here's how it works: Before a trademark examiner allows a trademark to be approved, they publish it for opposition — like Galbreath's was.
The period of 30 days "gives the examiner an opportunity to deny the mark if they believe that there’s legitimate grounds," Rizvi explained.
He says to think of it like when you're at a wedding and the officiant asks for anyone to speak now or forever hold their peace.
Given that an opposition has been filed, Rizvi says a process will begin that requires each company to either show how it will be harmed or how the trademark won't cause any harm.
“In order for a brand to maintain its trademark they have to show that they are policing their mark," Rizvi said. “And taking aggressive steps to protect their brand.”
In this case, Rizvi says it's likely about trademark dilution rather than consumer confusion since we're talking plants vs. apparel.
“Trademark dilution is a doctrine where even if there’s not consumer confusion a famous brand can claim that the distinctiveness of their brand is weakened by another mark," Rizvi said. "So, even though consumers are not confused, the mark is not as unique because of this other mark.”
Just last year, Publix sued a company for trademark infringement after it used a single "P" mark that was "confusingly" similar to its iconic "P" logo.
Years prior, Taylor Swift's team was reported to have asked Etsy sellers to remove items themed after the singer from their stores due to trademark violations.
And those are just some examples.
Galbreath says the seriousness of the situation is not lost on her but that she made herself a promise to live life joyfully.
"I know it's very serious but I do believe we have a choice about how we react to things," she said.
That's why she plans to continue pushing to make people laugh, while also inspiring them throughout the process, even if that means changing everything along the way.
"That will never change whether my name is 'Just Succ It' or I come up with something else," she said.
10 Tampa Bay reached out to Nike for comment but has yet to hear back. This story will be updated if we receive a response.
