By Brian Craig, J.D.
Nike’s "Sport Changes Everything" slogan is likely to swamp smaller sports apparel company Fleet Feet’s similar marks and is likely to cause reverse consumer confusion.
The federal district court in Greensboro, North Carolina, has issued a preliminary injunction against Nike Inc.’s "Sport Changes Everything" advertising campaign based on likelihood of confusion with Fleet Feet, Inc.’s "Change Everything" and "Running Changes Everything" registered trademarks. In finding that Nike’s campaign is likely to "swamp" Fleet Feet’s marks, Fleet Feet—a North Carolina-based retailer of running sports and sports apparel—showed a strong likelihood of reverse confusion, as Nike’s large multimedia "Sport Changes Everything" campaign is likely to overcome public association between Fleet Feet and its "Change Everything" and "Running Changes Everything" marks (Fleet Feet, Inc. v. Nike Inc., November 15, 2019, Eagles, C.).
Fleet Feet has used the registered trademarks "Change Everything" and "Running Changes Everything" for a number of years in connection with selling running shoes and other athletic apparel. In 2019, Nike began to use the phrase "Sport Changes Everything" in a large-scale and ubiquitous advertising campaign expected to last through the holidays and into the New Year. Fleet Feet filed a complaint for trademark infringement and requested a preliminary injunction.
Likelihood of success. The court first concluded that Fleet Feet is likely to prevail on the merits of its trademark infringement claim. Fleet Feet has used the registered marks consistently over a period of years. The "Change Everything" and "Running Changes Everything" marks are both valid, suggestive trademarks owned by Fleet Feet. Because the marks are suggestive, Fleet Feet need not show secondary meaning. Accordingly, Fleet Feet demonstrated a likelihood of success on the merits as to the validity of both the "Change Everything" and "Running Changes Everything" marks.
In analyzing the relevant factors, the court concluded that Nike’s "Sport Changes Everything" is likely to cause consumer confusion with Fleet Feet’s marks. While there is not much evidence of forward confusion, Fleet Feet showed a strong likelihood of reverse confusion, as Nike’s large multimedia "Sport Changes Everything" campaign is likely to overcome public association between Fleet Feet and its "Change Everything" and "Running Changes Everything" marks. Fleet Feet’s distinctive "Change Everything" and "Running Changes Everything" marks have relatively low commercial strength, Fleet Feet’s substantial advertising expenditures are a drop in the bucket compared to Nike’s spending, and Nike’s advertising campaign using the "Sport Changes Everything" phrase is likely to swamp Fleet Feet’s marks in the market and to cause consumers to link Fleet Feet’s marks with Nike. The similarity of the marks, the advertising, and the facilities and the intent factors weigh in favor of Fleet Feet on reverse confusion. While the lack of any evidence of actual confusion favors Nike, the court concluded that factor does not outweigh the other factors. The risk of reverse confusion is especially strong because the campaign is wide-ranging and ongoing.
Irreparable harm. The court also concluded that Fleet Feet will likely be irreparably harmed without a preliminary injunction because Nike’s "Sport Changes Everything" campaign will further damage Fleet Feet’s trademark interests. Fleet Feet’s interests will not be protected by a permanent injunction after Nike’s "Sport Changes Everything" advertising campaign is over. Fleet Feet risks having its marks swamped due to the continued public association between Nike and a mark that is so similar to Fleet Feet’s mark.
Balance of equities. Furthermore, the court found that the balance of equities tips in favor of Fleet Feet. Although Nike contends that it would cost significant resources to redo the campaign at this stage, it provided only conclusory evidentiary support.
Public interest. Finally, the court determined that an injunction against Nike’s ongoing use of the "Sport Changes Everything" mark will protect the public from further confusion about the source of Fleet Feet’s goods. The court recognized that there is a strong public interest in preventing trademark infringement and that the purpose of a trademark is to protect the public from confusion about the identity of the enterprise from which goods and services are purchased. Weighing the relevant factors, the court issued a preliminary injunction against Nike.
Bond amount. The court ordered Fleet Feet to post a $1 million bond. While Nike argued that the bond amount should be at least $16 million, the amount it has already spent on the "Sport Changes Everything" campaign, Nike failed to submit evidence to support how much it would cost to remove the "Sport Changes Everything" mark and still use the remainder of the already-developed promotional materials. The court concluded that Nike should be able to estimate this amount given its previous efforts to rework the "Sport Changes Everything" campaign for use at the New York and Chicago marathons.
This case is No. 1:19-CV-885.
Attorneys: Matthew S. Deantonio (Bradley Arant Boult Cummings LLP) for Fleet Feet, Inc. Andrew R. Shores (Ward and Smith, P.A.) and Marc E. Miller (Dla Piper LLP) for Nike Inc.
Companies: Fleet Feet, Inc.; Nike Inc.
MainStory: TopStory Trademark NorthCarolinaNews
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