Nike Loses In EU Over ‘Footware’ Trademark After Losing In US Earlier This Year

It will come as no shock to regular readers here when I remind you all that Nike is a notoriously aggressive actor when it comes to policing its intellectual property, including for trademarks it holds. The reason that reminder is important as a matter of throat-clearing in this case is that one of the worst outcomes when it comes to trademark law is when you pair an aggressive holder of a mark with a mark that is also far too broad or generic, such that it never should have been granted in the first place.

Which brings us to Nike’s attempts to register and hold onto a trademark for “Footware.” The mark was supposed to be used in conjunction with a line of “smart sneakers”, where the shoes would be embedded with hardware running software that would ostensibly provide the wearer with workout metrics and statistics and whatnot. Nike applied for the mark in both the EU and United States. The United States application was halted and ultimately denied after an opposition was filed by San Antonio Shoes earlier this year.

San Antonio Shoes also argued that that the words “footware” and “footwear” are often used interchangeably, which renders the term merely descriptive, because phonetically identical words or simple misspellings do not remove the merely descriptive aspect of the word.

The Board agreed with San Antonio Shoes’ argument in a decision issued on Monday, stating, “as a whole, this combination of ‘Foot’ + ‘Ware’ does not result in a separate distinctive meaning. Even if applicant is the first to use this particular combination of merely descriptive terms, that does not justify registration if the only significance conveyed by the term is merely descriptive.”

Now, I would have also argued before the TTAB that the term is in and of itself generic. A portmanteau of two generic words, footwear and software in this case, doesn’t suddenly become non-generic as a result. Between that and the afore-mentioned phonetic similarities, there is zero reason this mark should have been approved even without the opposition. That detail aside, at least the Trademark Office managed to get to the right place and not grant the mark.

In Europe, though, it was Puma that opposed the trademark application, and for similar reasons. The EU General Court upheld the appeals panel’s decision to void the application, given the generic nature of the applied for mark.

The spat follows a complaint by Puma, which, among other arguments, claimed that Nike’s use of the word could lead to an interpretation of it as a type of software or technology for the feet. 

Puma said it’s “delighted” with the ruling. The Bavaria, Germany-based firm said it “has been arguing for years that at least some consumers will read the term ‘footware’ as ‘footwear’ and therefore will only see the sign ‘footware’ as descriptive information regarding the intended purpose of the goods and services.”

Sorry, Nike, but you’ll have to come up with something a bit more unique for your smart sneakers than “footware.” Just, you know… do it.