Brooks is on the receiving end of a new lawsuit, with the sneaker-maker being accused of trademark and patent infringement and unfair competition by rival PUMA. According to the complaint that it filed in a federal court in Indiana on July 8, PUMA claims that Brooks is not only infringing its NITRO trademark by selling sneakers bearing that mark but goes further by using the NITRO mark on a sneaker that includes “every aspect” of a sneaker for which PUMA has a design patent in furtherance of what PUMA calls a larger “pattern of [Brooks of] copying [its] technology and disrespecting [its] intellectual property rights.”
In the newly-filed complaint, PUMA asserts that it has been using the NITRO mark on and in connection with various footwear since at least March 2021 and points to a pending trademark application for registration with the U.S. Patent and Trademark Office for the mark, noting that its NITRO-branded running shoes are “currently [its] top-selling running shoes in the U.S., and an overall top-five-selling brand of PUMA footwear in the U.S.” Having invested “significant time, energy, and resources in promoting and offering its NITRO-branded products,” PUMA claims that it has developed “substantial and valuable goodwill in its NITRO mark and owns strong common law rights in the NITRO mark across the U.S. relating to footwear, including in Indiana.”
Against this background, PUMA alleges that in late 2021, it became aware that Brooks had begun using NITRO to advertise its running shoes. Following a failed attempt to settle the matter between themselves and “with the knowledge that the NITRO mark was used and owned by PUMA,” Brooks has moved forward with “an infringing advertising campaign that makes extensive use of PUMA’s NITRO mark,” per PUMA, including social media posts that specifically include the “#RunOnNitro” hashtag.
“Brooks’ actions have caused or are likely to cause significant harm to PUMA’s reputation and the hard-earned goodwill that PUMA has developed in its NITRO mark,” per PUMA, which alleges that “consumers seeing Brooks’ use of such a confusingly similar mark in the marketplace are likely to believe that Brooks’ products are the same as PUMA’s or sponsored by, associated with, or otherwise affiliated with PUMA.”
Not finished, PUMA further asserts that Brooks has made matters even worse by offering up a sneaker in its NITRO collection – the Aurora BL sneaker – that makes use of the design reflected in the design patent (no. D897,075) that was issued to PUMA in 2019. The allegedly infringing Aurora BL shoe “has adopted every aspect of the claimed design in PUMA’s patent,” the German sportswear company claims, arguing that it “has an overall appearance that is substantially the same in the eyes of the ordinary observer.” PUMA argues that “an ordinary observer, familiar with the prior art designs … would be deceived into purchasing the Brooks’ product, assuming it to be the patented design.”
(Reflecting on the strength of Puma’s design patent infringement claim, Sarah Burstein, a professor at Suffolk Law, stated on Twitter that the claim should be tossed out, as “design patents protect the actual shape claimed, not the larger design concept.” They also “quite rightly require a very high degree of visual similarity,” which seems to be missing here. Beyond that, Burstein noted that “design patents don’t claim ‘features’ per se. They claim the entirety of whatever is shown in solid lines, as a unified whole. We don’t chop up design claims into ‘limitations,’ like we do for utility patents.”)
In addition to the “deceptive” similarity of Brooks’ sneaker to the sneaker design protected by PUMA’s design patent, PUMA claims that Brooks has also co-opted its “proprietary foam molding process [for] the Aurora BL shoe and [for] the line of shoes it sells in connection with the infringing NITRO mark.” Specifically, PUMA alleges that after it released its NITRO-branded shoes, “Brooks contacted one of PUMA’s manufacturers to copy PUMA’s technology and incorporate PUMA’s technology into Brooks’ shoes.”
Moreover, PUMA contends that on December 28, 2020, one month after it first released its NITRO-branded shoes and nearly a year after it lodged its first utility application filing for its foam molding technology (which is still pending before the USPTO), Brooks filed its own utility patent application (no. 17/134,560), which “describe[s] the same foam molding process that PUMA uses in its NITRO-branded shoes.” And all the while, Brooks allegedly “applied for its own industrial design protection for the design of the Aurora BL shoe just one month after PUMA’s ’075 patent issued” in September 2020, per Puma.
With the foregoing in mind, PUMA says in the lawsuit that it is looking “to prevent Brooks from causing confusion in the marketplace and unfairly benefitting from PUMA’s reputation and goodwill” by seeking injunctive relief (and monetary damages) to preliminarily and permanently enjoining Brooks from using PUMA’s NITRO mark in connection with the manufacture, distribution, advertising, promotion, offering for sale, and/or sale of Brooks shoes. At the same time, it is also seeking permanent injunction and monetary damages stemming from Brooks’ alleged infringement of its design patent.
The PUMA case comes days after Skechers filed a trademark lawsuit against Brooks, accusing its fellow sneaker-maker of infringing – and diluting – its “famous ‘S’ logo” by using a “confusingly similar ‘5’ mark” on footwear, a segment of the market in which competition is significant, R&D costs are high, and thus, litigation is rampant.
A rep for Brooks told TFL, “Puma is abusing trademark law by seeking to prevent competitors from using the term ‘nitro’ to describe nitro-infused shoes. Brooks is not infringing any of Puma’s intellectual property, and all of Puma’s allegations are baseless.”
The case is PUMA SE, et al. v. Brooks Sports, Inc., 1:22-cv-01362 (S.D. Ind.).