Updated on Feb. 28 at 11:54 am.
The Trademark Trial and Appeal Board halted Nike’s attempt to secure a U.S. trademark registration for the term “Footware” following an opposition by San Antonio Shoes on Monday.
According to documents from the United States Patent and Trademark Office, San Antonio Shoes argued that “footware” is merely a descriptive word for foot-worn wearable technology and thus not a term that could be owned my one company.
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.
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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.”
“We are glad that the Board agreed with our position that ‘footware’ is merely descriptive of the foot-worn wearable technologies that are becoming more common in the footwear marketplace,” said Joe Lawlor, partner at Haynes and Boone – the law firm that represented San Antonio Shoes in this matter. “This is a helpful decision for brands and consumers, because as smart shoe technologies become more prevalent, no one brand will have a monopoly on this descriptor.”
As a result of Monday’s ruling, Nike will not receive a registration for the term. However, Nike could technically appeal the Board’s decision in the coming months. “There’s a few different appeal avenues Nike could take,” Lawlor told FN. “Basically, over the next month or two, we’ll learn whether or not they’ve decided to appeal. It’s certainly possible that they appeal, but it probably is not a worthwhile endeavor for them. But it’s possible they do it anyway.”
Puma filed a similar appeal to Nike’s trademark request to register “footware” in the EU. According to the German sportswear company, it won its appeal in front of the European Union Intellectual Property Office (EUIPO) on Jan. 9, 2023 to stop Nike from using the mark.
Nike first filed its “footware” trademark request back in 2019. At the time, the athletic company was seeking to expand its range of “smart” sneakers, such as the self-lacing Adapt BB that released earlier that same year. In the application, Nike sought to register the term in referring to various types of computer hardware and software applications to use in connection with its shoes. San Antonio filed its initial opposition back in July 2020.
“San Antonio Shoes believes that it is important for everyone in the industry to have the right to use generic descriptive terms, even when the spelling might be altered,” a representative of San Antonio Shoes said in a statement.
FN has reached out to Nike for comment.
