On the heels of Nike’s denial of the John Geiger Collection’s motion to dismiss, the Los Angeles-based brand has filed counterclaims in its long-running fight against the sportswear giant. In a lengthy response dated February 22, Geiger denies the bulk of Nike’s allegations against him and sets out a range of affirmative defenses, arguing, among other things, that infringement of Nike’s trademark, misbranding origin and allegations of unfair competition should be prohibited because elements of Nike’s sneakers are functional, there is no likelihood of confusion between the two parties’ shoe offerings, the alleged Nike trade dress is “generic” and Geiger’s (alleged) use of any of Nike’s trademarks falls within the bounds of “fair use and descriptive use.
As well as setting out defenses to Nike’s claims, John Geiger – who has been the subject of a Nike trademark lawsuit over his sale of sneakers that allegedly violated the famous Dunk trade dress and Nike’s AF1 – sets out its own claims. against the Swoosh. Highlighting the “actual controversy” that exists between it and Nike “over whether the GF-01s embody the alleged commercial presentation depicted in” Nike’s trademark registrations for elements of the AF1 sneaker (3,451,905 and 5 820,374), and therefore, if its marketing or sale of its GF-01s infringed Nike’s rights to its AF1 trade dress, Geiger seeks a court judgment that Nike’s recordings are invalid in law and should therefore be voided. .
(Registration 3,451,905 extends to a mark which consists of “the design of the seam on the outside of the shoe, the design of the panels of material which form the outer body of the shoe, the design of the corrugated panel on the upper of the shoe that encompasses the eyelets for the shoe laces, the design of the vertical ridge pattern on the sides of the sole of the shoe, and the relative position of these elements to each other. vertical on the sides of the sole of the shoe, the repeating star pattern on the toe and heel of the sole of the shoe, and the relative position of these elements to each other.”
Setting the stage for his declaratory judgment claims, John Geiger claims that in 2020 he released the GF-01 sneaker, which he made using “different proportions and features” of Nike’s AF1 – from the lower toe area and height of the shorter midsole to the “unique and exclusive” rubber sole. Beyond that, the GF-01 is “constructed with premium leather,” meaning it’s “more luxurious than the materials used by Nike,” according to Geiger, and therefore, exists at “a higher level”. [base] price than the [AF1].” Additionally, Geiger claims that his sneaker does not use any Nike branding and instead contains Geiger’s own branding, including his “distinct and trademarked JG pattern logo”.
Yet “the GF-01 has distinct premium packaging that is nothing like the packaging and branding that comes with the typical [AF1]“, according to Geiger. The two parties’ footwear distribution channels further set them apart, Geiger claims, stating that the GF-01 is “available exclusively at johngeiger.com and select high-end retailers and positioned alongside other luxury brand footwear.” , while Nike’s AF1 is “generally…not sold at these retailers and would not be positioned alongside Geiger’s luxury goods.” And finally, “The differences in proportions and characteristics between the GF-01 and the [AF1] are obvious to any reasonable consumer,” Geiger claims, arguing that the AF1 “has many structural features that the GF-01 does not, including the swoosh logo, which makes it confusing” – the element criticism in a trademark infringement action – “practically non-existent.”
In addition to arguing for non-infringement based on alleged differences between its sneakers and those of Nike, Geiger is more fundamentally trying to downplay the strength of the marks on which Nike has made its case by claiming that the AF1 trade dress of Nike is generic (and therefore unable to identify a single source), and functional, which precludes trademark protection. In terms of functionality, Geiger says that “the shoe’s tread, grommet panel, side panel seams and lower ridges of the [AF1] shoe sole” – which are covered by the Nike records at issue – are “essential to the use and purpose of the shoe and/or affect the cost, quality, performance, durability and safety of the shoe” .
(It should be noted that Geiger has previously argued in a motion to dismiss that the AF1 trade dress “includes functional elements” – and therefore cannot serve as a mark – “because each of the elements is functional”. Geiger also asserted that the sneakers are unable to indicate a single source without a prominent Swoosh on the side. Not persuaded, the court ruled that Nike had shown that despite Geiger’s assertion to the contrary, “the presence of the the AF1 shoes don’t go against [its] claims” that the AF1 configuration has a secondary meaning, allowing the configuration to function as a trademark. In its amended complaint, Nike pointed to its “marketing of the AF1 shoes, the significant sales of these shoes, and the recognition these shoes obtain in the community at large,” which the court determined were “enough facts to do… the secondary meaning element ‘plausible at first sight.'”)
Geiger also claims that Nike has failed to control unauthorized uses of its AF1 marks, thus causing them “to cease to function as a symbol of quality and a controlled source.” According to Geiger, “Nike’s failure to police and exercise adequate quality control resulted in the relinquishment of any rights to the alleged commercial attire.”
Specifically, Geiger argues that “Nike has done almost nothing to control or protect the [trademark-protected AF1 configuration] other companies that have manufactured and marketed sneakers nearly identical to the [AF1s].” The most striking example cited by Geiger is the Bapesta sneaker that the Japanese brand A Bathing Ape launched in 2002. Although it is “identical to the [AF1]except a shooting star replaces the Swoosh design on the side of the upper and the word BAPE replaces the word AIR on the midsole” and “incorporated[ing] many, if not all, of the items of clothing claimed in [Nike’s registrations]“, Geiger alleges that “Nike has never alleged that Bapesta infringes” its rights to the AF1 marks.
On a political note, Geiger claims that the “invalid trademarks,” which she says are what the two Nike registrations consist of, “illegally stifle competitive and free markets.” In this case, Geiger claims that “Nike has used its invalid trade dress registrations to intimidate designers and manufacturers who fear legal action from Nike and lack the resources to adequately defend themselves or pursue lawsuits. similar cancellations”.
In light of the foregoing, Geiger asked the court to declare Nike registrations 3,451,905 and 5,820,374 legally invalid and to order that they be canceled by the United States Patent and Trademark Office.
John Geiger’s filing comes nearly six months after Nike added him as a defendant to an ongoing case he previously filed against shoemaker La La Land in January 2021, alleging Geiger took ” systematic measures to attempt to falsely associate [its] counterfeiting products with Nike,” and “attempted to capitalize on Nike’s valuable reputation and customer goodwill” by using its Dunk and AF1 trade presentation, as well as its iconic swoosh logo, “in a way likely to lead consumers and potential customers to believe that the counterfeit products are associated with Nike, when they are not.
The case is Nike, Inc. vs. La La Land Production & Design, Inc.2:21-cv-00443 (CD Cal.)