THE FASHION LAW EXCLUSIVE - Nike has exclusive rights in the word "Waffle" when it comes to clothing and footwear, or at least it does according to its latest action on the intellectual property front. The Portland, Oregon-based sportswear giant has opposed another party’s pending trademark application for the mark “WAFL+” on the grounds that it is too close to its own trademark registrations for the word “Waffle.”
Texas-based Dommonic Nelson filed to register the WAFL+ mark with the U.S. Patent and Trademark Office (“USPTO”) in June 2015. He told TFL that he came up with the WAFL+ brand in 2012, and has since garnered quite a local following in Houston, Texas. According to Nelson, “WAFL+ from its inception is a trademark that is meant to empower others, a mark that grows into a brand that represents euphoria and accomplishments in people’s lives. It is an acronym similar to FUBU (For Us By Us), another four letter brand.”
Well, as of last month, Nike has filed to oppose Nelson’s registration. They claim that such a “registration would damage and injure [Nike],” as it is confusingly similar to Nike’s trademarks and “will inevitably lead to confusion, to mistake, or to deception of the public.” Nike claims that such confusion will cause it to suffer “grave and irreparable damage.”
As you may know, before a trademark may be registered with the USPTO (and enforced by a trademark holder on a nationwide basis, as opposed to on a state-by-state basis), a number of requirements must be satisfied. For example, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO.
This means that the USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.
So, what right does Nike have to prevent the usage and/or trademarking of the word “Waffle” or derivatives of the word, you ask? Well, it turns out, Nike has several federally registered trademarks that cover the term, including “WAFFLE,” “WAFFLE RACER,” and “WAFFLE TRAINER,” which it has used in connection various footwear items since as early as 1973.
As for whether the Houston, Texas-based Women's Arena Football League or the West Australian Football League – both of which use the acronym WAFL – will join in on this action is yet to be seen. As for Nelson, he says that the matters with Nike “has been equally attempted to be resolved in the past months. As we await notice from Nike Inc. legal representatives, we've retreated back underground."
He continued on to note: "We have an immense level of respect for the remarkable Nike Inc. brand, and hope our proactive amendments are viewed as full cooperation. It would mean a lot to get our shot (our mark granted) at building something from scratch that adds another level of meaning and value to people's lives.”
UPDATED (12/5/16): As noted by the Trademark Trial and Appeal Board, "On December 5, 2016, the parties’ filed a withdrawal of the opposition. In view thereof, the opposition is dismissed." Nike moved to end its case against Nelson, but only after Nelson agreed to amend his trademark application, namely, the specific types of goods he wants his trademark - if registered - to cover.
Initially, Nelson's trademark application listed the following goods: “Apparel for dancers, namely, t-shirts, sweatshirts, pants, leggings, shorts and jackets; Athletic apparel, namely, shirts, pants, jackets, socks, hats, and caps, athletic uniforms; Athletic shirts; Graphic t-shirts; Hooded sweat shirts; Long-sleeved shirts; Shirts and short-sleeved shirts; Sweat shirts; t-shirts for men and women."
Following his Nike-approved amendment to his application on November 22, 2016, the amended goods now read “urban apparel, namely, t-shirts for men, women and children; all of the foregoing excluding footwear and athletic apparel, such as socks, graphic t-shirts, hooded sweat shirts, long-sleeved shirts, shirts and short-sleeved shirts and sweat shirts."