Nike and John Geiger Collection have settled a trademark lawsuit over “copycat” footwear. In a motion lodged with the U.S. District Court for the Central District of California on Tuesday, the parties are seeking the court’s approval of a consent judgment and motion for permanent injunction regarding Nike’s trademark infringement and dilution claims against John Geiger Collection, which stem from its sale of its signature GF-01 sneakers, and the Los Angeles-based footwear brand’s declaratory judgment counterclaims against Nike, in which it sought to have Nike’s Air Force 1 (“AF1”) trademark registrations invalidated on the basis that the AF1 trade dress consists of “functional features.”  

Setting the stage in the proposed consent judgment and permanent injunction, Nike and John Geiger Collection (“JGC”) do away with Geiger’s counterclaims, which will be dismissed with prejudice, as “JGC stipulates, agrees, and acknowledges that Nike is the exclusive owner of the following registered trademarks and all related common law rights: U.S. Trademark Registration Nos. 3,451,905; 3,451,907; and 5,820,374,” which cover Nike’s AF1 designs, and JGC “stipulates, agrees, and acknowledges that [these] marks are valid and enforceable.” (JGC previously argued that Nike lacks rights in the AF1 marks, as elements of the marks are “essential to the use and purpose of the sneaker and/or affect the cost, quality, performance, durability, and safety of the sneaker,” making them functional and ineligible for protection. The company also alleged that Nike has failed to police unauthorized uses of its AF1 marks, thereby causing them “to cease functioning as a symbol of quality and a controlled source.”)

Turning to the claims that Nike made against Geiger in furtherance of its lawsuit, the parties state that a judgment should be entered against JGC “on all of Nike’s counts in the First Supplemental First Amended Complaint” – trademark infringement, false designation of origin, contributory trademark dilution, and unfair competition – “because JGC, although without intent, infringed [Nike’s] asserted marks by having manufactured, using, transporting, promoting, importing, advertising, publicizing, distributing, offering for sale, and/or selling [a long list of the GF-01] products.” (While JGC has seemingly traded an infringement judgment (and other things) in exchange for Nike dropping its claims, there is certainly some room for discussion about likelihood of confusion and thus, infringement, here.)

Nike sneaker and John Geiger sneaker

As for what will happen to any remaining inventory that JGC has of the “infringing” GF-01 sneakers, the agreement enables the company to sell-off its “existing inventory […]  up to and through May 31, 2023,” and after that point, the company is required to “destroy within 14 days any remaining inventory of infringing products.” 

As part of the settlement, Nike has also garnered itself a permanent injunction (subject to court approval), which places strict limits on what JGC and any parties acting in concert with it cannot do with regards to Nike’s trademarks, this includes a permanent bar against “manufacturing, transporting, promoting, importing, advertising, publicizing, distributing, offering for sale, or selling any products … under the asserted [AF1] marks or any other [Nike] marks” that are likely to confuse consumers into believing that any JGC products “or any of JGC’s commercial activities are sponsored or licensed by Nike, are authorized by Nike, or are connected or affiliated in some way with Nike.” 

Beyond that, JGC cannot imply that it has “Nike’s approval, endorsement, or sponsorship of, or affiliation or connection with, JGC’s products, services, or commercial activities, pass off [its] business as that of Nike, or engag[e] in any act or series of acts … [that] constitute unfair methods of competition with Nike and from otherwise interfering with or injuring the asserted marks or the goodwill associated” with those mark, among other things.

The filing follows from a win for Nike early this year when Judge Mark Scarsi of the U.S. District Court for the Central District of California refused to dismiss the Beaverton-based sportswear giant’s claims against JGC, who accused the brand of attempting to “capitalize on the strength and fame of Nike and its Air Force 1 (“AF1”) by making, promoting, advertising, marketing, and selling footwear bearing the AF1 trade dress and/or confusingly similar trade dress,” albeit without Nike’s involvement or authorization, among other things. (More about that here.)

Nike sneakers and John Geiger sneakers

A statement published on Geiger’s Twitter on Tuesday states, “Nike and John Geiger have resolved the lawsuit related to Nike’s Air Force 1 trade dress and John Geiger’s footwear products, specifically his GF-01 Shoes. The lawsuit has been resolved through an amicable resolution that includes a consent judgment. As part of the resolution, John Geiger has agreed to modify the design of his GF-01 shoes. Nike respects John Geiger as a designer and other designers like him, and both parties are pleased to resolve this dispute in a way that allows John Geiger to continue building his brand while also respecting Nike’s intellectual property rights in its iconic Air Force 1 trade dress”

Customizations, Unauthorized NFTs 

Nike’s lawsuit, which started as an action against Warren Lotas’ footwear manufacturer La La Land Production & Design and subsequently added Jian Geiger as a defendant, comes as part of an enduring push by the sportswear giant to “hold accountable all bad actors” that “wrongfully trade off of Nike’s famous brand and dupe consumers into purchasing fake Nike products.” In addition to this case, Nike has filed a number of trademark-centric lawsuits against entities and individuals that it alleged were looking to build businesses on the back of its famous branding. After filing a headline-making suit against MSCHF in the wake of backlash over the Brooklyn-based company’s sale of customized (read: blood-infused) Air Max sneakers, Nike filed suit against a former employee that was customizing – and selling – initially-authentic Nike sneakers without its authorization. That case has since settled. 

Around the same time, Nike initiated a trademark suit against Drip Creationz, which has allegedly offered up unabashedly counterfeit AF1 sneakers, which it advertises as “100% authentic,” while also promoting and selling unauthorized footwear that it markets as handmade “customizations” of Nike’s most iconic products. That case is currently underway in federal court in California, with Nike recently amending its complaint to add new defendants to the lineup. 

And most recently, Nike has taken its trademark enforcement virtual, filing suit against StockX on the basis that the marketplace has allegedly offered up NFTs that amount to “unsanctioned products [that] are likely to confuse consumers, create a false association between those products and Nike, and dilute Nike’s famous trademarks.” 

The case is Nike, Inc. v. La La Land Production & Design, Inc., 2:21-cv-00443 (C.D. Cal.)

Nike is adding to the list of defendants that it is facing off against in a pending lawsuit over allegedly “customized” footwear. In an amended complaint that it lodged with the U.S. District Court for the Central District of California on August 18, the Beaverton-based sportswear behemoth claims that not only is sneaker customizer Customs By Ilene, Inc., dba Drip Creationz (“Drip Creationz”) on the hook for trademark infringement and dilution, and counterfeiting for offering up modified sneakers, as well as outright fakes that bear Nike branding, affiliated entity Dripz 2.0 is similarly liable, as are the companies’ co-founders and owners Ilene Arellano, Raymond Quiroz, and Brian Porter, who Nike claims are actively trying to “hide their own infringing actions” in light of its lawsuit.

In the newly-filed amended complaint, Nike claims that Drip Creationz has been offering up and selling products “purporting to be genuine Nike products, but that are, in fact, counterfeits,” namely, “knockoff Air Force 1-style shoes that it refers to as ‘D1’ shoes,” which bear designs that allegedly infringe upon Nike’s registered trademarks for to its Air Force 1 shoes and that have “crooked proportions, messy stitching, cheap details, and [are] taller than the real Air Force 1 shoes.” 

Southern California-based Drip Creationz – and the other named defendants – do not stop there, though, per Nike. In what is the most interesting aspect of the case, Nike claims that in addition to offering up the unabashedly counterfeit Air Force 1 sneakers, which it advertises as “100% authentic,” Drip Creationz and co. are also promoting and selling unauthorized footwear that they market as handmade “customizations” of Nike’s most iconic products.  The problem, according to Nike, is that in creating the customized footwear, Drip Creationz deconstructs otherwise authentic Air Force 1 shoes and “replace[s] and/or adds materials.” In the process, the defendants “materially alter” the shoes “in ways Nike has never approved or authorized,” thereby, rending them infringing and/or counterfeit. 

Drip Creationz sneakers

Specifically, the Swoosh argues that the defendants’ custom shoes contain “images, materials, stitching, and/or colorways that are not and have never been approved, authorized, or offered by Nike,” including “fake and unauthorized Nike Swoosh designs, as well as third party trademarks and protected images,” such as a pattern that mirrors Burberry’s trademark-protected check, Frito-Lay-owned Cheetos’ Chester Cheetah character, Travis Scott’s Astroworld graphic, and Chick-fil-A’s stylized word mark. 

(Echoing claims that Nike makes in its ongoing case against StockX over NFTs, Nike takes issue with the defendants’ excessive use of elements of its branding and their claims about the authenticity of the footwear, namely, Drip Creationz’s “purported guarantee of authenticity through claims that its products are ‘100% authentic’ Nike products purchased directly through Nike’s website.” Nike alleges that “customers considering purchasing purportedly Nike-branded products from Drip Creationz are, in fact, relying solely on Drip Creationz—not Nike—to guarantee that the products are ‘100% authentic.’”)

With the foregoing in mind, Nike again sets out claims of trademark counterfeiting and infringement, trademark dilution, false designation of origin, and unfair competition in connection with Drip Creationz’s unauthorized use of an array of its trademarks, including its Swoosh logo, which it says is “one of the most famous, recognizable, and valuable trademarks in the world,” as well as its Air Force 1 word mark and trade dress. This time around, Nike claims that Dripz 2.0 is also on the hook for the aforementioned causes of action. At the same time, Nike also asserts that individual defendants – Ilene Arellano, Raymond Quiroz, and Brian Porter – are liable for the activities of Drip Creationz and Dripz 2.0, as they “authorized, directed, and participated in the infringing activities conducted by both Drip Creationz and Dripz 2.0.” This includes procuring counterfeit Nike sneakers, as well as “sourcing the genuine Nike footwear used for the infringing AF1 products.” 

It is especially pressing that the individual defendants be added to the case, Nike claims, as they have “facilitated the sale of the infringing D1 footwear from Drip Creationz to Dripz 2.0 and now own a portion of Dripz 2.0.” This “sale and partial ownership are evidence that the individual defendants are using corporate entities to attempt to hide their own infringing actions,” Nike asserts, arguing that “in such a situation, the Individual Defendants must be party to a litigation to prevent continuing this process of moving inventory anytime a complaint is filed.” 

A screenshot of Drip Creationz website

Nike is seeking monetary damages in an amount to be determined at trial, and injunctive relief to bar the defendants from further nfringing its marks and/or injuring its business reputation, among other things. 

In its formal response to Nike’s initial complaint last year, Drip Creationz argued that its sale of modified sneakers that it purchased from Nike and/or authorized Nike retailers “amount[s] to a resale by the first purchaser of the original product and is, thus, protected under the first sale doctrine and does not constitute trademark infringement or unfair competition.” Counsel for the company further claimed that a critical element is missing from Nike’s complaint, namely, likelihood of confusion, as “there is no likelihood of confusion between Nike’s asserted trademarks and the trademarks and/or usages made by Drip Creationz.”

The case comes as Nike has initiated a growing number of trademark lawsuits against customizers ranging from Drip Creationz and John Geiger to MSCHF and former employee Jeffrey Waskowiak and his company KickRich LLC. The cases have been met with scorn from no shortage of Nike fans, who have accused the sneaker giant on social media of taking customizers ideas and mass producing them, while also benefitting from the culture-building that comes with exercises in customization and potential boosts to the demand for – and thus, the longevity of – silhouettes thanks to the appeal driven by particularly well-done customization projects. 

In terms of what is driving the onslaught of customizer-specific litigation from Nike, a representative for the company said last summer that the company is not aiming to “limit the individual expression of artisans, many of whom are some of the brand’s biggest fans,” and noted that Nike “often collaborates with designers, artists and other creatives to innovate new products and experiences for our consumers with the Nike brand.” Instead, Nike says such litigation is the result of the fact that the brand “cannot allow unauthorized customizers to build a business using and leveraging some of our most iconic trademarks, undermining the value of Nike’s intellectual property,” as well as of its “brand, goodwill, and hard-earned reputation.” In other words, Nike says that it is simply policing its valuable trademark rights in order to maintain that value. 

The case is Nike, Inc. v. Customs By Ilene, Inc., 5:21-cv-01201 (C.D.Cal.)

Nike and adidas have settled a number of matters, including short-lived patent lawsuit, over their respective knitted footwear technology. On the heels of Nike filing suit against adidas in a federal court in Portland last year, arguing that the German sportswear titan made unauthorized use of its “game-changing” – and patent protected – Flyknit technology (which it spent more than a decade and upwards of $100 million dollars researching and developing) for a rival collection of “Primeknit” shoes, the parties alerted the U.S. District Court for the District of Oregon that “they have reached a settlement of the matter in litigation such that the case is dismissed without prejudice,” with each party bearing its own attorneys’ fees and costs. 

Nike first lodged its patent infringement complaint against adidas in December 2021, alleging that in lieu of engaging in innovation, adidas has spent “much of the past decade challenging several of Nike’s patents directed to Flyknit technology,” and has “continued to use Nike’s patented technology without permission.” As a result, Nike claimed that “adidas offers dozens of footwear products that infringe [its] patents, including many of adidas’s so-called ‘Primeknit’ shoes.” In the since-settled case, Nike specifically alleged that adidas was infringing nine of its 300-or-so utility patents for the Flyknit tech “by making, using, offering for sale, selling, and/or importing into the United States footwear products that practice the claimed inventions,” all of which center on “a novel method of designing and manufacturing uppers that allows Nike to use yarns made of recycled materials and to knit the upper to the exact shape necessary.” 

According to Nike’s complaint, “adidas announced its Primeknit shoes five months after Nike announced Flyknit, [and] the industry immediately took note of the similarities between Nike’s patented Flyknit technology and the adidas’s Primeknit offerings.” Instead of seeking a “license to any of Nike’s patents covering Flyknit technology, adidas opted to challenge several of them, all while marketing a number of different infringing shoe styles and following on Nike’s innovation coattails into other sports,” the Swoosh asserted, setting out nine claims of patent infringement and seeking injunctive relief and enhanced damages. 

At the time of filing, adidas pushed back against Nike’s allegations, stating, “Our Primeknit technology resulted from years of dedicated research and shows our commitment to sustainability.”

Nike and adidas knitted sneakers
Nike’s Flyknit (top) & adidas’ Primeknit (bottom)

Prior to the parties’ settlement, the case had been put on hold, with the court granting adidas’ unopposed motion to stay the case pending the outcome of a U.S. International Trade Commission (“ITC”) investigation. On the same day that Nike filed suit against adidas, it also requested that the ITC institute an investigation of adidas based on its “unlawful and unauthorized importation into the United States, sale for importation, and/or sale within the United States after importation of certain knitted footwear products that infringe Nike’s patents protecting its Flyknit technology.” That proceeding – in connection with which Nike is looking to get the federal trade body to block the import of adidas’ allegedly infringing Primeknit footwear – has similarly been settled.

A Separate Squabble

The settlement extends to additional (but related) fights between Nike and adidas, including the patent lawsuit that pitted the sportswear giants against one another for almost a decade over Nike’s U.S. Patent No. 7,347,011, which is the original patent in its “Knitted Textile Upper Family.” Adidas initially filed a petition for inter partes review (“IPR”) in 2013, challenging the patentability of an array of claims in Nike’s and the Patent Trial and Appeal Board (“PTAB”) instituted a review.

The proceedings saw Nike seeking to amend its patent by cancelling the challenged claims (claims 1-46) and adding substitute claims. Pushing back, adidas argued that the substitute claims, which concern “a single flat-knit textile element,” are unpatentable in light of three examples of prior art. While the PTAB granted Nike’s request to cancel the claims, it refused to allow the Swoosh to add the substitute claims due to the prior art, prompting Nike to appeal to the U.S. Court of Appeals for the Federal Circuit. (The appeals court affirmed the PTAB’s findings that the substitute claims are unpatentable and that Nike had the burden to prove the patentability of the substitute claims.)

Fast forward to 2020, and the matter landed before the Federal Circuit again, with Nike taking issue with the PTAB’s determination that its substitute claim 49, which focuses on “a knit upper with apertures for laces made by omitting stitches in the knit,” is not patentable, among other things. (The court made such a decision based not on the previously-cited prior art references but on separate prior art.) Siding with Nike, a panel for the appeals court stated in a decision in April 2020 that the PATB may raise unpatentability grounds sua sponte when reviewing a motion to amend a claim in an IPR proceeding. Specifically, the Federal Circuit held that the PTAB may, in fact, cite prior art or other invalidity grounds not raised by the challenging party (adidas, here), provided it gives the parties notice and opportunity to respond before issuing a final decision. 

As recently as this month, that since-settled case landed back before the Federal Circuit for the third time in nine years, with counsel for Nike arguing that in the face of a challenge from the PTAB, a petitioner (adidas in this case) bears the burden of persuasion. (According to Bloomberg, a panel of judges to the Federal Circuit “seemed skeptical” during an oral argument on August 1 that Nike Inc. “would have saved a patent claim regardless of whether Adidas had the burden of persuasion after [the PTAB] raised its own challenge” to Nike’s patent.)

The cases are Nike, Inc. v. adidas AG, 3:21-cv-01780 (D. Or.); Adidas AG v. Nike Inc, 2:22-cv-00198 (E.D.Tex.); and In the Matter of Certain Knitted Footwear, No. 337-TA-1289 (ITC).

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.” 

Puma Lawsuit
One of Puma’s NITRO sneakers

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.”)

Puma Lawsuit

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.).

Nike has received preliminary responses from the U.S. Patent and Trademark Office (“USPTO”) after filing a handful of trademark applications for registration last fall for use of some of its most famous marks in the metaverse. The sportswear titan made headlines in October in the wake of lodging a number of intent-to-use applications with the USPTO for its name, Swoosh logo, “JUST DO IT,” and Jordan marks for use on “downloadable virtual goods” (in Class 9), “retail store services featuring virtual goods” (Class 35), and “entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments” (Class 41).

Fast forward from October 2021 to late this month, USPTO examining attorney Barbara Rutland has issued a handful of Office actions, requiring Nike to clarify its “indefinite” identification of the goods and/or services in connection with which it is looking to claim rights in – and registrations for. Rutland states in response to each of the metaverse-related applications that the “precise nature of the goods and services is unclear,” and encourages Nike to substitute “clarifying wording” in order to enable some of the early metaverse trademark applications to proceed in the pre-registration process.

Elsewhere under the Nike, Inc. umbrella, Converse got the go-ahead for publication of three of the metaverse-focused trademark applications for registration that it filed in early November 2021. The USPTO issued notices of publication on June 22 for the applications for “CONVERSE” word mark, “a five-pointed star oriented to the left of a chevron design,” and Converse Chuck Taylor All Star logo without any previous pushback in the form of Office actions. The applications claim use (on a 1(b) basis) on the following goods/services …

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