Nike and Geiger settle trademark lawsuit over look-alike sneakers

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Nike and John Geiger Collection have settled a trademark lawsuit over “copycat” shoes. In a motion filed in the U.S. District Court for the Central District of California on Tuesday, the parties are seeking court approval of a consent judgment and motion for a permanent injunction regarding claims of infringement and dilution of the Nike trademark against John Geiger Collection, which arise from his sale of his signature GF-01 sneakers, and the Los Angeles-based shoe brand’s declaratory judgment counterclaims against Nike, in which it sought to have the company’s records invalidated. trademark Nike Air Force 1 (“AF1”) on the grounds that the AF1 trade dress consists of “functional features”.

Setting the stage in the proposed Consent Judgment and Permanent Injunction, Nike and John Geiger Collection (“JGC”) delete Geiger’s counterclaims, which will be dismissed with prejudice, as “JGC states, agrees and acknowledges that Nike is the exclusive owner of the following trademarks and all associated common law rights: U.S. Trademark Registration Nos. 3,451,905; 3,451,907; and 5,820,374”, which cover Nike’s AF1 designs, and JGC “stipulates, agrees and acknowledges that [these] marks are valid and enforceable. (JGC previously argued that Nike had no rights to the AF1 marks because elements of the marks are “essential to the use and purpose of the sneaker and/or affect the cost, quality, performance, durability and safety of the sneaker”, which makes The company also alleged that Nike 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”.)

With respect to the claims Nike made against Geiger in its lawsuit, the parties say judgment should be entered against JGC “on all of Nike’s counts in the First Amended Supplemental Complaint” – infringement trademark, false appellation of origin, contribution to brand dilution and unfair competition – “because JGC, although without intent, has infringed [Nike’s] trademarks claimed by having manufactured, used, transported, promoted, imported, advertised, made public, distributed, offered for sale and/or sold [a long list of the GF-01] of the goods.” (While JGC apparently traded infringement judgment (and other things) in exchange for Nike dropping its claims, there is certainly room for discussion about likelihood of confusion and thus infringement , here.)

As for what will happen to any remaining inventory that JGC has of “infringing” GF-01 sneakers, the agreement allows the company to sell its “existing inventory.” […] until May 31, 2023”, and after this date, the company is required to “destroy within 14 days any remaining stock of counterfeit products”.

As part of the settlement, Nike also obtained a permanent injunction (subject to court approval), which imposes strict limits on what JGC and all parties acting in concert with it cannot do with respect to trademarks of Nike, this includes a permanent prohibition against “manufacturing, conveying, promoting, importing, advertising, making known, distributing, offering for sale or selling any goods…under the affirmation [AF1] brands or any other [Nike] brands” that are likely to confuse consumers into believing that any JGC product” or JGC commercial activity is sponsored or authorized by Nike, is authorized by Nike, or is related or affiliated in any way with Nike”.

Beyond that, JGC cannot imply that it has Nike’s “endorsement, endorsement, or sponsorship of, or affiliation or connection with, JGC’s products, services, or business activities, to pass [its] company like that of Nike, or commit[e] in any act or series of acts… [that] constitute methods of unfair competition with Nike and of interfering with or damaging the claimed marks or goodwill associated with such marks, among others.

The filing follows a victory for Nike earlier this year when Judge Mark Scarsi of the U.S. District Court for the Central District of California declined to dismiss the Beaverton-based sportswear giant’s claims against JGC, which charged the brand to attempt “to capitalize on the strength and reputation of Nike and its Air Force 1 (“AF1”) by manufacturing, promoting, advertising, marketing and selling footwear bearing the AF1 trade dress and/or trade dress confusingly similar commercial,” albeit without the involvement or permission of Nike, among other things. (More on that here.)

Nike Geiger Trial

A statement posted to Geiger’s Twitter on Tuesday reads, “Nike and John Geiger have resolved the lawsuit related to Nike’s Air Force 1 trade dress and John Geiger’s footwear products, specifically his GF-01 shoes. The lawsuit was resolved by settlement which includes a consent judgment. As part of the resolution, John Geiger agreed to change the design of his GF-01 shoes. Nike respects John Geiger as a designer and other designers like him, and both parties are happy to resolve this dispute in a way that allows John Geiger to continue to build his brand while respecting the intellectual property rights of Nike on its iconic Air Force 1 trade dress.”

Customizations, NFT not allowed

Nike’s lawsuit, which began as a lawsuit against Warren Lotas’ shoemaker La La Land Production & Design and later added Jian Geiger as a defendant, is part of a persistent push by the giant sportswear to “hold accountable all bad actors” who “wrongfully sacrifice Nike’s famous brand and trick consumers into buying fake Nike products. In addition to this case, Nike has filed a number of lawsuits centering on trademarks against entities and individuals it claims sought to build businesses on the back of its famous brand image After filing a lawsuit against MSCHF following a backlash over the company’s sale Brooklyn-based company of custom Air Max (read: blood-soaked) sneakers, Nike has filed a lawsuit against a former employee who customized — and initially sold — authentic Nike sneakers without his permission. case has since been settled.

Around the same time, Nike filed a lawsuit against Drip Creationz, which allegedly offered shameless counterfeit AF1 sneakers, which it advertises as “100% authentic,” while promoting and selling unauthorized footwear that ‘she markets as handmade ‘customizations’. Nike’s most iconic products. That case is currently pending in federal court in California, with Nike recently amending its lawsuit to add new defendants to the lineup.

And more recently, Nike made its trademark application virtual, suing StockX on the grounds that the marketplace allegedly offered NFTs that amounted to “unlicensed products.” [that] are likely to confuse consumers, create a false association between these products and Nike, and dilute Nike’s well-known brands.

The case is Nike, Inc. vs. La La Land Production & Design, Inc.2:21-cv-00443 (CD Cal.)

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