Nike has lost in an opposition centering on its attempt to register the term FOOTWARE as a trademark for use in connection with sneaker-specific “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices; electronic devices and computer software that allow users to remotely interact with other smart devices for monitoring and controlling automated systems,” among other hardware and software products and services. In a non-precedential opinion on February 12, a panel of Administrative Trademark Judges for the Trademark Trial and Appeal Board (“TTAB”) upheld a fellow sneaker-maker’s bid to block the registration of Nike’s mark on the basis that it is “merely descriptive and not capable of acquiring distinctiveness.”
Some Background: In March 2019, Nike filed an application for registration with the U.S. Patent and Trademark Office (“USPTO”) for the word “FOOTWARE” for use in Classes 9, 38, and 42. This prompted San Antonio Shoe, Inc. (“SAS”) to lodge an opposition with the TTAB in its July 2020, in which it argued that as a seller of tech-driven footwear (which it refers to using the term “footwear”), it has a reasonable belief that it will be damaged in the event that Nike’s mark is registered. The issue, per SAS, is that if Nike is granted a registration for the mark FOOTWARE, it “will obtain exclusive rights to a term that is descriptive and prevents competitors, including [SAS], from using the descriptive term in commerce.”
Given that “any third-party footwear manufacturers are developing and/or selling footwear products incorporating or integrating software and hardware technology,” SAS argued that Nike’s FOOTWARE mark when applied to the goods and services at issue “is merely descriptive … therefore, fails to function as a source identifier indicating the source of [Nike’s] services,” and instead, is “merely informational” as to Nike’s products.
Moreover, it claimed that consumers, who “are accustomed to seeing and purchasing products that combine products and technology,” will immediately understand that Nike’s mark is associated with a product that combines both footwear and software. This is especially true in light of the fact that consumers “regularly see the term ‘WARE’ and understand the term to be associated with technology, including software and hardware.”
SAS went on to claim that Nike cannot overcome the genericness issue by claiming acquired distinctiveness for at least a couple of reasons: (1) It “has not yet used [the] mark in commerce,” and if has started using it, “such use is recent and minimal such that [it] cannot support a claim of acquired distinctiveness;” and (2) The term “footware” is so highly descriptive that it is “not capable of acquiring distinctiveness” in the first place.
Opposition Upheld
Setting the stage in their opinion, the TTAB judges asserted that the Nike FOOTWARE mark is “a clear combination of the word FOOT (the specification) and the suffix WARE which, in the context of the computer goods and services, is defined as software and when used as a combining element specifies a ‘kind or class of software.’” Meanwhile, WARE is, “at minimum, merely descriptive of computer software and hardware goods and services,” according to the TTAB, which noted that “the addition of FOOT in front of WARE informs the consumer of a feature (or specification) of the computer software, hardware and services, that they are used in connection with footwear, the phonetic equivalent of footware.”
> A mark is merely descriptive if it “immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought,” per the TTAB, which further noted that in the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act prohibits registration of a term on the Principal Register that is merely descriptive.
This case is an interesting one in that it presents “the unusual situation where the double entendre engendered by the suffix ‘WARE’ unambiguously informs the consumer that the computer software and hardware, and computer services” – i.e., Nike’s tech “platform” – are for use “in connection with footwear,” the TTAB stated. And in that context, both FOOTWARE and FOOTWEAR “merely describe a feature of the computer goods and services.” Speaking of FOOTWARE, in particular, the TTAB judges determined that when taken as a whole, “the combination of FOOT + WARE does not result in a separate distinctive meaning.”
Despite Nike’s arguments to the contrary, the TTAB held that the fact that the Nike’s platform of technology capabilities, which combines hardware, firmware, software, and connectivity “could be used with other networked devices” and that FOOTWARE may have a different meaning in a different context is “not controlling.” The TTAB highlights that Nike’s identification of goods/services in its applications is “broadly worded … and [Nike] does not deny that the FOOTWARE platform may be incorporated into a shoe.”
That is an issue, according to the TTAB, as if a registration refusal applies to “any of the goods or services within [a] class [of goods/services],” then registration must be refused as to that entire class. As such, since the FOOTWEAR mark “merely describes a feature, function and purpose of the computer goods and services, namely, that they may be used with footwear or shoes” (and terms that “identify the function or purpose of a product or service may be merely descriptive”), the TTAB rejected registration for the mark.
> The TTAB likens the FOOTWARE mark here to SMART BEZEL, which was previously held to be “merely descriptive of electronic sensor modules for controlling and integrating home automation systems in which the sensor modules were to be used on bezels, and SCREENWIPE, which is “generic for an anti-static cloth used for cleaning computer and television screens.”
And in one final note, the TTAB also asserted that this outcome would be not impacted even if Nike “is the first to use this particular combination of merely descriptive terms,” as that does not “justify registration if the only significance conveyed by the term is merely descriptive.”
The TTAB did not delve into acquired distinctiveness, stating that while Nike “generally denie[d] the salient allegations” in its answer, it did “not plead the affirmative defense of acquired distinctiveness.”
TLDR: The TTAB sustained SAS’s opposition to register Nike’s FOOTWARE mark on the ground that it is merely descriptive.
THE BIGGER PICTURE: Not Nike’s first clash over the FOOTWARE mark, the Swoosh has faced off against Puma, which opposed Nike’s applications for registrations in the U.S. and beyond. In May 2021, a court in the United Kingdom sided with Nike, finding that the UK Intellectual Property Office did not err when it refused to block Nike’s application. Meanwhile, Puma voluntarily put an end to its stateside opposition (with prejudice) in July 2021, just over a year after it first argued that“FOOTWARE” is a “descriptive” term, and thus, ineligible for registration.
Share
