(Trade) dressing for success - Nike’s latest weapon in the battle for the 70-billion-dollar global sneaker market

(Trade) dressing for succ…

On June 1, 2021, Nike successfully obtained Federal trademark registration on the silhouette of its iconic Air Jordan 1 sneaker. This may be surprising to readers for one of two reasons.

First, you may be asking “wait, the Air Jordan 1 is so iconic, wasn’t it already trademarked?” The answer to this is… yes, and no. Backing up a second, let’s start by addressing what exactly a trademark is. In colloquial terms, trademark protection is a way for companies to prevent certain elements of their brand from being copied by other companies. Typically, when we think of trademark, we think of protection on a particular name or logo – such as the name “Nike,” the iconic “swoosh” logo, or specific product names like the “Air Jordan 1.”

Trademarks can be obtained in one of two ways. By using a mark in commerce (generally meaning publicly displaying a mark, advertising a product using or bearing the mark, and/or selling a marked product), you automatically gain some level of “common law” rights to enforce your trademark against other similar businesses in the same geographic area. You can then obtain broader protection by federally registering your mark with the United States Patent and Trademark Office – which is a more extensive process that requires you to detail your product’s specific business uses and provide evidence of your use of the product in commerce (a “sample”). The trademark will be registered within specific business categories (for example “footwear”) if the USPTO examiner determines that the mark is not substantially similar to one already registered. The aforementioned trade name “Nike,” the iconic “swoosh” logo, and specific product name “Air Jordan 1” have all been federally-registered trademarks for quite a long time.

Enforcement of trademark law stems from two primary sources – the Federal Lanham Act and individual state intellectual property laws. Without getting into the weeds, in legal terms, the general focus of both regimes is on “consumer confusion” – or the likelihood that individuals seeing the “infringing” mark will associate it with the company holding the trademark, and thereby the infringing company will benefit from consumer confidence in the “real” company and dilute the “real” company’s value in the process.

So, now that we have our facts right on trademark, you may be asking the second question: “The trademark photo doesn’t show the words ‘Nike’ or ‘Air Jordan,’ or display the iconic swoosh, so what exactly is Nike protecting?” This is the million-dollar (or, in terms of Air Jordan market share, ten-billion-dollar) question. The answer lies in a lesser-utilized form of trademark protection known as trade dress.

Trademark law also allows companies to trademark iconic patterns, silhouettes, and other distinctive, non-functional aesthetic cues identifying a particular brand under the principles of trade dress. One of the more notable examples of trade dress protection is the iconic green and yellow color scheme used by John Deere, who successfully sued a competitor in 2015 for infringement based on an almost-identical use of colors in farm equipment. The John Deere ruling is a rare example of successful trade dress protection, however. As any company selling a tan, plaid cashmere scarf will tell you (fashionistas will recognize this as the iconic “Burberry check”), trade dress protection is more difficult to prove, since (as a general proposition), the law disfavors allowing companies to gain intellectual property protection over broad “building blocks” (like general colors or patterns or shapes).

This is part of why the Air Jordan trademark is such a big deal. On June 1, the USPTO granted a trademark not on the name “Air Jordan,” but on the very concept and silhouette of an Air Jordan 1 shoe. This means that competitors can’t make a substantially similar looking shoe without running the risk of a trademark infringement lawsuit, even if the shoe displays different logos and company branding. The Air Jordan trademark covers the following:

  • the design of the material panels that form the exterior body of the shoe
  • the design of the panel on top of the shoe that includes the eyelets for the shoe laces
  • the design of the ridge pattern on the sides of the sole of the shoe
  • the design of a stitched line running along the midsole of the shoe
  • and the relative position of these elements to each other.

However, even a registered trademark can be subject to a “cancellation” challenge – a legal proceeding by a competitor to request a trademark registration be nullified. Almost immediately after Nike registered its Air Jordan 1 trademark, one such cancellation petition was filed challenging the validity of the protection granted. In resolving the lawsuit, the court will be tasked with not only deciding whether the Air Jordan 1 shoe silhouette is protectable or constitutes such a public “building block,” but, if it allows the trademark to stand, defining the scope of just how far the protection should apply. For example, if a company were to sell a shoe that has a similar ridge pattern, but utilizes different materials and stitching, will it still constitute infringement? Time will tell, but it seems likely that more trademark filings and more lawsuits will follow, given the limited “real estate” of sneaker designs available the 70-billion-dollar global sneaker market.

Intellectual property law is a complex and quickly-changing landscape. It is becoming easier-and-easier for individual entrepreneurs to enter the marketplace and sell products (driven by increasing accessibility of manufacturing and advertising tools to individual entrepreneurs), which, by consequence, means it’s becoming harder and harder to create unique creative elements and meet market needs that aren’t already being served. If you do run a business, protecting your brand is critical – and the nature of trademark registration means that you can’t afford to wait. If you have questions about registering a trademark, defending your intellectual property from infringers, or anything else, please don’t hesitate to reach out.

For more information, please contact Matthias Kaseorg (mkaseorg@setlifflaw.com) at 804-377-1273 or Steve Setliff (ssetliff@setlifflaw.com) at 804-377-1261.