Arlington,Texas Company in Trademark Dispute with Nike at Supreme Court

Updated 1/15/2013 On January 9, 2013 the US Supreme Court agreed with NIKE, Inc.  holding  a covenant not to sue rendered the ongoing litigation moot.

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Updated 11/8/2012

The US Supreme Court is hearing oral arguments today.

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Arlington, Texas based Already LLC dba YUM is in a trademark legal tangle with NIKE  over the similarity of the YUM brand “Soulja Boy” and “Sugar” shoes  and the NIKE brand "Air Force 1."

NIKE filed suit against YUM in 2009 arguing a likelihood of consumer confusion between NIKE brand registered trademark for the Air Force 1 shoe and the YUM brand shoes.   YUM responded with a trademark cancellation proceeding against NIKE.  Risking cancellation of the "Air Force 1" mark, after a year in the court system, NIKE agreed to withdraw the suit and provided a "covenant not to sue" to YUM.  YUM appealed the case to the Supreme Court.  The Supreme Court is not that interested in sneakers, but more interested in a split of the circuits regarding the use and implication of "covenants not to sue."

Already, LLC phrased its "Question Presented" to the Supreme Court as:

"Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities."

Nike Inc. styled its question a bit differently:

"Whether respondent’s covenant not to sue petitioner was worded in a fashion that resolved the 'actual controversy' in this declaratory judgment suit."

Read more here and here.

Tamera H. Bennett

Tamera H. Bennett is a wife, mom, lawyer, mediator, blogger, podcaster, and legal writer. For two decades she’s helped clients protect what they create by practicing trademark, copyright and entertainment law in Texas and Tennessee.

Tamera has co-hosted more than 85 episodes of the Entertainment Law Update Podcast since 2009. And, she’s been honored to write for BILLBOARD magazine and the TEXAS LAWYER.

In the summer of 2015, Tamera backpacked 100 miles over 10 days with her son's Boy Scout Troop. Tamera walked her first half-marathon in 2012 and walked the Cowtown Half Marathon in February 2016 and February 2017 with a PR each time. You can visit Tamera’s blog at createprotect.com and follow her on Twitter @tamerabennett.

http://www.tbennettlaw.com
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