Puma is not easing up on its quest to block Nike from gaining a trademark registration for the word “footware” for use on seemingly sneaker-specific software products and services. On the heels of waging an early-stage challenge to the trademark application that Nike filed in March 2019, which saw Puma send a “letter of protest” to the U.S. Patent and Trademark Office (“USPTO”), arguing that that “footware” is a “descriptive” term, and thus, not eligible for registration, the German multinational footwear brand has initiated opposition proceedings in connection with Nike’s application, asserting that Nike’s potential registration should be blocked.
In its June 16 opposition filing, as first reported by Law360, Puma argues – again – that “footware” is a “merely descriptive” term for technology-driven footwear designs and should not be registered by any company, especially the $125 billion giant that is Nike. According to Puma, the Beaverton, Oregon-based sportswear titan’s “footware” trademark “is phonetically equivalent to and a misspelling of the word ‘footwear,’” making it “a generic term for products sold in commerce, namely, footwear,” and not an indicator of a particular source of goods/service, which is precisely the purpose of a trademark.
(It is worth noting that Nike does not list footwear as a class of goods in its application; instead, it is claiming rights in classes 9, such as “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices;” 38, including, “telecommunications services, namely, transmission of data by means of telecommunications networks, wireless communications networks and the Internet;” and 42, “application service provider featuring application programming interface software for integration of third-party applications to allow an interactive user experience.”).
Just in case that such alleged genericness is not enough to make Nike’s mark ineligible for registration, Puma asserts in its filing with the USPTO’s Trademark Trial and Appeal Board that Nike is far from the only party in the business of selling products that “combine footwear, hardware and/or software technologies.” In fact, Puma claims that it started “manufacturing and selling footwear incorporating computer technology at least as early as 1986,” while other companies, such as Under Armour, Altra, and Samsung, are similarly offering up tech-centric footwear products.
Such a prevalence of rival tech-centric footwear products likely mean that “consumers are accustomed to seeing and purchasing products that combine products and technology, including products pairing software and/or hardware technologies with footwear,” and as a result, understand that the word “footware” is used to generally “describe software combined with foot products, including footwear,” and not to pin-point the products of a single manufacturer.
“Just as consumers understand that spyware describes software combined with spying,” per Puma, “they will also understand that ‘footware’ describes software combined with foot products, including footwear.”
Herzogenaurach, Germany-headquartered Puma goes on to assert that “to the extent Nike has commenced use of [the ‘footware’] mark, such use is recent and minimal in length,” and as such, “could not support a claim of acquired distinctiveness” (i.e., that consumers have come to associate the mark with a single source as a result of consistent use, marketing, sales success, etc.), which might otherwise enable the sportswear giant to claim rights in the mark despite the alleged lack of inherent distinctiveness.
Ultimately, Puma argues that if Nike is granted a registration for the “footware” mark, “it would receive exclusive rights over a term that is descriptive and prevent competitors, including [Puma], from using such a descriptive term in the marketplace,” and requests that Trademark Trial and Appeal Board sustain its opposition and refuse registration for Nike’s mark.
Beyond its pending application for “footware” – which was met with a single Office Action (in which the USPTO asked Nike to “explain whether the wording in the mark ‘Footware’ has any significance in the software, hardware, or telecommunications trade or industry or as applied to [Nike’s] goods and/or services, or if such wording is a “term of art” within [Nike’s] industry”) – before proceeding to the opposition stage, Nike is also seeking trademark registrations for “SNKRS.” Counsel for Nike filed four trademark applications for registration with the U.S. Patent and Trademark Office (“USPTO”) early this year in connection with its “SNKRS” venture.
In two of the applications, Nike is seeking federal trademark registrations (and the benefits that come along with them) for “SNKRS” for use on: (1) clothing and footwear; (2) an online marketplace featuring footwear and clothing; (3) services of “providing information, news and commentary in the field of fashion, entertainment, sneakers, popular culture and sports;” (4) and the service of “providing a website that gives users the ability to review various print, photographic, graphic image, and audio and video content.” The other two applications center on the sportswear giant’s use of “SNKRS” in conjunction with its swoosh logo, for which Nike claims uses in the same four classes of goods and services.
After filing the four trademark applications in late January, Nike has (unsurprisingly) received preliminary pushback across the board from the USPTO’s examining attorney.