;
Image: New Balance

New Balance is calling foul on Nautica for “intentionally” copying some of its staple design and branding elements – one of which being the stylized “N” that has appeared on its sneakers since the 1970s – in a newly-filed lawsuit. Since the release of its 320 trainer in 1976, New Balance claims that it has adorned “nearly all [of its] footwear” and apparel with its “N” logo. By adopting similar branding of its own, New Balance claims that “Nautica is willfully and intentionally intending to free-ride off of the goodwill associated with [New Balance’s] Block ‘N’ trademarks,” and thereby, running afoul of the law.

According to the complaint that it filed in a federal court in Massachusetts on August 21, New Balance claims that thanks to decades of consistent use and its practice of routinely spending significant sums of money promoting its brand, including the iconic “N” trademark, consumers have come to associate the block “N” with its brand, which is why it is problematic, it says, that Nautica recently began using a capitalized letter “N” on “various types of footwear … [and] various types of apparel.”

By using “a block letter ‘N’” on sneakers, slides, t-shirts, and other products, New Balance claims that Nautica is “likely to cause confusion among consumers and/or suggest an affiliation, connection, or association between [it] and Nautica,” and thus, is infringing upon its famous “N” trademark.

But is this case really that straightforward? Probably not. After all, New Balance does not have sweeping, uninhibited rights to prevent others from using of the letter “N” on garments and footwear. In fact, the relevant trademark registrations that New Balance points to in its complaint set out markedly narrower protections than New Balance’s counsel asserts in the complaint. Instead of covering a “block letter N,” the registrations specifically cover a more limited “stylized representation of the letter N with a contrasting border.”

 New Balance’s stylized “N” with contrast (left) & Nautica’s “N” (right) New Balance’s stylized “N” with contrast (left) & Nautica’s “N” (right)

(Although, it is worth noting that New Balance may enjoy some common law (i.e., state law) trademark protection in a stylized block letter “N” without a contrasting border, as New Balance’s counsel seems to assert in its state law trademark infringement claim, as distinct from its federal claim).

While the Nautica shirts that New Balance points to bear nearly identical stylized “N” marks, complete with a “contrasting border” (pictured above), the Nautica footwear that New Balance highlights in its complaint does not.

Nonetheless, New Balance is probably not without recourse for the products that make use of a capitalized letter “N” but lack the “contrasting border.” As trademark attorney and former USPTO examiner Ed Timberlake tells TFL, “Nautica’s ‘N’ not precisely matching the description of New Balance’s mark in [its] registration doesn’t necessarily mean” that New Balance does not have merited infringement claims.

In fact, New Balance may have more rights here than what initially meets the eye because “New Balance [has] presumably forged a connection in many people’s minds between at least their stylized N and footwear,” per Timberlake. More than that, he says that “since the test for trademark infringement involves ‘likelihood of confusion’ not [a] ‘near-identity’ analysis, it seems that New Balance has also earned a little bit of conceptual space around (at least) their stylized N registrations.”

The likelihood that consumers could be confused as to the source of Nautica’s products is increased by the fact that Nautica has embarked on a number of collaborations with “well-known New Balance supporters” – such as one with rapper Lil’ Yachty, who “name-dropped [New Balance] in his hit song ‘Minnesota,’” New Balance asserts.

The alleged foul play by Nautica goes beyond infringing “N”-emblazoned footwear. In addition to trademark infringement, New Balance claims that Nautica’s “N”-emblazoned wares give rise to claims of trademark dilution, a separate trademark concept that applies when a famous trademark is used in a way that stands to diminish the trademark’s ability to identify a single source of the products, which is precisely what is going in here, per New Balance. And more than that, New Balance asserts a claim of design patent infringement, as a pair of Nautica sneakers consists of an upper design that is “virtually identical to the ornamental design” that is covered by one of New Balance’s design patents.

With this in mind, New Balance has asked the court to prohibit “Nautica, its employees, agents, servants, and all in privity or acting in concert with any of them, from using the Block ‘N’ Marks, or any block letter ‘N’ or any derivative(s) thereof or any design(s) confusingly similar thereto, in commerce on Nautica’s footwear and apparel.” In addition, New Balance is seeking monetary damages, including profits, New Balance’s actual damages, enhanced damages, exemplary damages, costs, and reasonable attorneys’ fees.

A rep for Nautical’s parent company Authentic Brands Group was not immediately available for comment.

*The case is New Balance Athletics Incorporated v. Authentic Brands Group et al, 1:19-cv-11792 (D. Mass).