Nike is enforcing its SNKRS trademark in a new opposition proceeding, with the sportswear titan looking to block the registration of a “confusingly similar” SNKRS-centric mark. In the notice of opposition that it recently lodged with the Trademark Trial and Appeal Board, Nike argues that it will be damaged if California-based company, I Hate Snkrs’ trademark – “I HATE SNKRS” – is registered for use on hats, shoes, socks, and apparel. In particular, counsel for Nike asserts that “due to the similarity of the marks and goods involved, and other factors,” including its use of imagery of Nike-sponsored athletes, I Hate Snkrs’ “use and registration of the ‘I HATE SNKRS’ [mark] will inevitably lead to confusion, to mistake, or to deception of the public.”
In its April 23 opposition filing, as exclusively reported by TFL, Nike asserts that it is the owner of “rights granted via federal registrations and common law rights for the mark ‘SNKRS’, as well as a design mark” that consists of the word SNKRS placed alongside Nike’s swoosh logo for use across an array of goods and services. In terms of registrations, Nike maintains registrations in the U.S. for the SNKRS word mark and stylized SNKRS and swoosh logo for use in connection with …
> “Downloadable computer application software for mobile phones and personal digital devices,” etc. (Class 35), and “providing information, news and commentary in the field of entertainment, popular culture and sports” (Class 41); and
> “Operating an online marketplace featuring footwear and clothing; on-line retail store services featuring footwear and clothing,” etc. (Class 35), and “providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of fashion and sneaker collection” (Class 41).
Nike’s also highlights its registration for the “SNKRS STASH” word mark for “entertainment services, namely, providing an online computer game; entertainment services,” etc. (Class 41).
What Nike cannot, of course, point to is a registration for either of the SNKRS marks for use on apparel and sneakers for obvious reasons. One need not look further than the back-and-forth between Nike and the U.S. Patent and Trademark Office (“USPTO”) that preceded the issuance of the registrations above to garner how Nike would fare if it sought a registration for SNKRS for use on footwear and/or apparel in Class 25.
Before ultimately granting registrations to Nike for the SNKRS marks for use on services in Class 35 and 41, the USPTO took issue with the marks on the basis that SKNRS is generic or merely descriptive when used in connection with the services at issue. Nike was obviously able to overcome the USPTO’s rejections, as indicated by the since-issued registrations, but would inevitably face a much steeper battle should it seek to register SNKRS for use of footwear and apparel.
Against that background, Nike claims that it has amassed common law rights in the SNKRS marks for use on apparel and footwear that should enable it to block the registration of the “I HATE SNKRS” mark. Specifically, Nike says that it has continuously used its SNKRS marks since at least as early as February 2015 in connection with its SNKRS platform, which it utilizes to provide “online retail store services and serves as an online marketplace for a variety of [Nike] goods, including apparel, footwear, and other accessories.”
Additionally, Nike contends that “over the years since the [SNKRS platform] launch in 2015,” it has also used the SNKRS marks “in connection with physical pop-up retail stores and on apparel available for sale at such pop-up retail stores.” Hence, its common law rights in the SNKRS mark in connection with the marketing and sale of apparel and footwear.
With the foregoing in mind, and in light of its allegations that the “I HATE SNKRS” mark, which the applicant began using in 2021, will damage its pre-existing rights in its SNKRS marks, Nike is urging the Trademark Trial and Appeal Board (“TTAB”) to refuse the application for registration. Chances are, things will weigh in Nike’s favor – albeit not because of a substantive decision from the TTAB. Instead, I Hate Snkrs, a seemingly small company, might opt to abandon its application for registration in lieu of waging a defense against Nike. Stay tuned.
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