Nike’s Jordan Brand basketball shoes have been getting serious air since they were first introduced in 1985. One of the brand’s latest models, the Dwyane Wade-endorsed Jordan Fly Wade, however, faces the threat of being permanently grounded.
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Point 3, which manufactures and sells basketball apparel, owns a federally registered trademark of a stylized “3” with a round dot in the middle of its left side. According to the company, the Point 3 logo is prominently displayed on all of Point 3’s goods, as well as in all its advertising and promotional materials. The complaint alleges that Point 3 has been using the mark on its products since as early as April 2010.
Nike’s allegedly infringing logo is a similarly stylized “3” with a small dot positioned in the same location as Point 3’s. Unlike Point 3’s logo, however, Nike’s features a background of a basketball, a crosshairs, and a “D”-shaped dot.
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Point 3’s complaint alleges that Nike is liable for trademark infringement under common law and 15 U.S.C. § 1114, false designation of origin and unfair competition in violation of common law and 15 U.S.C. § 1125(a), common law misappropriation, and unfair and deceptive trade practices.
In particular, Point 3 asserts that “the Point 3 Logo has become uniquely associated with Point 3, the basketball apparel products that it sells, and the concept of an evolution in basketball apparel" and claims that, by using a highly similar design on its Jordan Fly Wade shoes, Nike is leading consumers to confuse those shoes with Point 3’s brand.
Point 3 has asked the court to preliminarily and permanently enjoin Nike from using the “3” design logo and “deliver up for destruction” any Nike possessions bearing the logo as well as all means of making such items. Point 3 has also requested punitive damages and money to undertake corrective advertising.
Them’s fightin’ words.
Nike’s answer, filed on June 8, 2011, makes Point 3’s complaint look like an air ball granny shot lobbed from half-court.
After denying the allegations of Point 3’s claims in its answer, Nike’s answer presents eleven affirmative defenses. Among other things, Nike claims that it adopted and used the D3 basketball graphic in good faith at about the same time as Point 3’s first commercial use of its purported trademark. Nike also argues that its use of the D3 basketball graphic does not cause any likelihood of confusion with Point 3 or Point 3’s purported trademark and therefore does not constitute infringement. According to Nike, the logo distinctly represents Dwyane Wade’s codename, “Agent D3,” which is derived from Wade’s first name initial and Miami Heat jersey number. Nike’s answer states that Nike has used Wade’s Agent D3 designation in its marketing efforts since October 2010, portraying Wade in its promotional videos and advertisements as a secret agent tasked with the mission of "bringing the [championship] rings back to Miami."
More fundamentally, Nike challenges Point 3’s claims on the basis that its purported trademark is invalid because the Point 3 logo, the number 3 with a point, is generic, or at best merely descriptive, and has not achieved secondary meaning. Nike also claims that Point 3’s federal trademark registration is invalid because Point 3 claimed commercial use in footwear when the mark has never been used in connection with footwear. Furthermore, citing the declaration under oath of Michael Luscher, founder and chief executive officer of Point 3, that Point 3 had used the Point 3 logo in connection with footwear, Nike argues that Point 3 committed fraud in making such false representations during the prosecution of the trademark application.
Finally, Nike drives hard to the hoop with counterclaims against Point 3, asking the court to declare Point 3’s trademark invalid under federal, state, and common law, to disallow Point 3 from ever re-registering that mark, and to rule that Nike’s use of its D3 logo does not infringe Point 3’s supposed trademark.
On June 9, 2011, the day after filing its answer, Nike released a new wave of Jordan Fly Wade styles, which display the allegedly infringing logo. As of this writing, Nike and Point 3 hang in the air in suspended animation, waiting to see whether the Jordan Fly Wades will soar and score or get stuffed by Point 3’s suit