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Image: Nike

On the heels of being slapped with a trademark infringement and dilution lawsuit by Nike over its Staple Pigeon OG sneaker, which is a dead ringer for the Pigeon Dunk that Nike first released in 2005, Warren Lotas has assured consumers who pre-ordered the allegedly infringing sneakers that they will get them. In a series of Instagram posts last week, Los Angeles-based Lotas stated that “as of now, both releases will be fulfilled as promised.” However, a new filing from Nike strongly suggests that Lotas’s impending distribution of the pre-sold sneakers, which are slated to be shipped to consumers in December, very well might not go as planned.

According to the Notice of Motion and Motion for Preliminary Injunction that counsel for Nike filed on Monday, the Beaverton, Oregon-based sportswear giant sets the stage by stating that it “owns trademark rights in the famous Swoosh design it has continuously and substantially exclusively used in connection with footwear for nearly fifty years, and in the trade dress” – i.e., the source-identifying, overall image – of its “iconic” Dunk sneakers, which it has continuously and substantially exclusively used … for over thirty years.” 

By way of its recently-introduced Staple Pigeon OG sneaker, which it appears to have worked on with Nike collaborator Jeff Staple (or at least gotten authorization from Staple, who was behind the original Nike SB Dunk Low Pigeon in 2005), Nike claims that Warren Lotas is blatantly infringing both of those famous marks. (Staple is not named as a defendant in the complaint).

Echoing the assertions in the complaint that it filed in a California federal court on October 14, Nike argues that Warren Lotas is “promoting and offering to sell footwear and apparel that use a confusingly similar mark as Nike’s Swoosh deign and/or the identical trade dress as Nike’s Dunk sneakers,” and that as a result, “has caused actual consumer confusion” and engaged in trademark infringement, false designation of origin/unfair competition, trademark dilution, and federal unfair competition, and common law trademark infringement and unfair competition. 

With the foregoing in mind and given that Warren Lotas “recently took pre-orders for an unlimited number of two sneakers that are virtual copies of Nike’s most coveted, limited-edition Dunks,” orders that the brand allegedly intends to fulfill starting in December 2020, Nike argues that the confusion already caused by the lookalike sneakers “will only escalate if Warren Lotas is allowed to fulfill the pre-orders.” If Warren Lotas is able to “flood the market with its fakes,” Nike claims that it will “lose control over its hard-earned reputation, and the goodwill [that it] has spent decades building in its trademarks will be damaged.” As such, Nike argues that Warren Lotas must be formally prohibited from “fulfilling the pre-orders for the infringing sneakers during the pendency of this action.” 

As for what exactly Nike is seeking in connection with its preliminary injunction, it has asked the court to require that Warren Lotas be prohibited from “fulfilling all pre-orders taken to date for the infringing sneakers and/or colorable imitations of the infringing sneakers.” And from “promoting, offering to sell, selling, and/or taking additional pre-orders for the infringing sneakers and/or colorable imitations of the infringing sneakers.” 

More than that, Nike has asked the court to require Warren Lotas to escrow the money it has already received from all pre-orders taken to date for the $300 infringing sneakers in order to ensure that if Nike prevails in the case, Warren Lotas “may return those funds to customers who ordered [its] fakes under the mistaken belief that Nike was the source of the infringing sneakers or otherwise approved or sponsored the infringing sneakers.” 

On the heels of Nike’s complaint, Lotas stated on Instagram that he and his brand are “investigating the claims made against us and will do what it takes to remedy the situation amicably.”

UPDATED (November 2, 2020): Since filing its motion for a preliminary injunction, Nike has since argued that “a preliminary injunction is warranted” and notes that despite WL’s allegations to the contrary, the company has not “unequivocally ceased the allegedly wrongful behavior” as a result of the “replacement” shoes that it is offering up to remedy the allegedly infringing pre-order ones.

On the heels of WL requesting an extension of time to file its opposition and thereafter, “ignoring the court’s order” and “nonetheless, filing its opposition three days after the deadline,” Nike has filed a Reply in Support of Motion for Preliminary Injunction re: Trademark Infringement. In its reply, Nike claims that WL’s “opposition itself shows that WL has likely not ceased all of its infringing activity,” as the opposition “confirms WL is promoting ‘replacement’ sneakers that appear to bear the same or a similar infringing outsole as the fakes Nike identified in its preliminary injunction motion” in what Nike calls “a blatant bait-and-switch.”  

WL “never presented these ‘replacement’ sneakers to Nike for its review or approval,” the sportswear giant asserts, noting that “if it had, Nike would have likely told WL that the [they] are unacceptable because they appear to still infringe at least some of Nike’s Dunk trade dress registrations.” For example, Nike alleges that the “replacement” sneakers “appear to have at least the same or a similar infringing outsole as the WL Pigeon and WL Broccolini sneakers,” thereby, giving rise to claims of trade dress infringement. 

In case that is not enough, Nike claims that “WL is still promoting its business and brand with Nike’s trademarks.” As of November 2, 2020, “both the infringing Warren Lotas X Staple Pigeon OG and Warren Lotas Freddy Broccolini Chanclas at issue in this case still appear on WL’s Instagram page.” And still yet, Nike argues that WL “has not refuted the merits of [its] preliminary injunction motion and has failed to meet its ‘heavy burden’ of showing that it is absolutely clear that WL has ceased infringing and will not in the future infringe Nike’s trademarks.” The company “gamesmanship warrants a preliminary injunction,” per Nike, which is “necessary to prevent irreparable harm.”

A hearing on Nike’s preliminary injunction motion is scheduled for November 16.

*The case is Nike, Inc. v. Warren Lotas and Warren Lotas LLC, 2:20-cv-09431 (C.D.Cal.).