Common Law Trademark Infringement, Design Patent Infringement, Matthew P. Brookman, Richard L. Young, Trademark Infringement
Shoe giants Puma and Brooks are involved in a lawsuit in Indiana over loosely-related trademark and patent design infringement claims.
PUMA began using the NITRO trademark in connection with running shoes in March 2021. Per the Complaint (below), PUMA’s line of NITRO running shoes were apparently a Top 15-selling running shoe brand in the U.S. in the year 2021.
In November 2021, PUMA noticed Brooks’ using the term “Nitro” in advertisements for a line of shoes with nitrogen-infused midsoles. In December 2021, PUMA’s counsel sent a letter describing their “exclusive rights” in the NITRO trademark. The subsequent 7 months apparently saw Brooks reject a settlement offer and offer no counterproposal, resulting in this lawsuit. Puma has a pending trademark application for NITRO filed in December 2021 that is still awaiting initial examination.
I question whether Brooks is really even using “Nitro” as a trademark. It seems they are just using a commonly-used shorthand for nitrogen, the common element infused in the shoe’s midsole. A possible resolution, should Brooks deem it necessary or the fight not worthwhile, would be to simply change their advertising from “Nitro” to “Nitrogen.”
The lawsuit is probably equally about PUMA’s claim for design patent infringement, a common dispute between shoe companies. Design patent claims highlight the constant “fine line” walked by consumer shoe designers to exploit a hot, current shoe trend but not copy a competitor’s design. The claims are loosely connected because the allegedly infringing shoes include nitrogen-infused midsoles, and thus are part of the Brooks “Nitro” advertising campaign. I’m not a shoe guy, so I don’t really know shoe terminology or what else is out in the market currently, but I can spot some obvious differences between PUMAS’s patent and the Brooks shoe.
Upon a quick review, the PUMA’s patent’s sole seems to be clearly 3 segments, while Brooks is 4 segments. The back of the heel is smooth on the patent while it is multi-ridged, both internally and externally, on the Brooks shoe. The back segment of the sole on the Brooks is much longer, has a protrusion with a rear wedge cut-out and also a circular impression on the side. The toe end is ridged on the Brooks shoe versus smooth on the design. These differences are just based on a quick initial review but I’m sure blog readers and Brooks’ counsel can find a few more. People familiar with current shoe trends might find even more.
Since 1851, the test for design patent infringement has been the “ordinary observer” test, which compares two designs from the viewpoint of an “ordinary observer,” not an expert in the trade, and requires that the resemblance be intended to deceive the observer and sufficient to induce him to purchase one supposing it to be the other. Recent jurisprudence in the Federal Circuit has seemingly evolved (or devolved, depending on your viewpoint) the test into what has been deemed an “extra-ordinary observer” test, in which the differences between the accused design and the patented design should be reviewed from the viewpoint of someone familiar with the prior art. As I mentioned above, I’m not familiar with the current women’s running shoe market so I could be a qualified “ordinary observer” but probably would not meet the higher standard. Which of the two standards should apply in the Southern District of Indiana in 2022 will likely be a primary focus of the lawsuit as it could be determinative.
If you’re wondering why this lawsuit was filed in Indiana, one explanation is that Brooks has a 400,000 square foot distribution center located in Whitestown, Indiana. PUMA didn’t specifically request seizure or destruction of Brooks’ existing inventory, but perhaps it is on their mind. Another consideration, as mentioned above, is finding a good venue to apply the lower “ordinary observer” standard.
Based on the size of the parties and the previously failed settlement negotiations, we can probably expect some fireworks in this lawsuit. Stay tuned for updates.
PUMA SE at al v. Brooks Sports, Inc.
Case Number: 1-22-cv-01362-RLY-MPB
File Date: July 8, 2022
Plaintiff: PUMA SE, PUMA North America Inc.
Plaintiff Counsel: Joel E. Tragesser, Michael T. Piery, James J. Aquilina of Quarles & Brady LLP
Defendant: Brooks Sports, Inc.
Cause: Trademark Infringement, Design Patent Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman