In late April 2013, Nike submitted their response to Under Armour’s lawsuit with respect to its ‘I will’ registered trade mark. Under Armour’s complaint filed in February in the District Court of Maryland, alleged Nike’s latest #MAKEITCOUNT campaign advertising materials containing the phrase ‘I will…’ constituted trade mark infringement, trade mark dilution and unfair competition. Under Armour (perhaps strategically, as a popular ‘underdog’ brand) has demanded a jury trial to resolve the dispute.
In its complaint, Under Armour seeks a list of remedies that would make most companies sit up and pay attention. In addition to injunctions stopping the use of ‘I will’, they are going for corrective advertising, profits and punitive damages.
(comparison between Under Armour advertising (left) and a Nike Facebook image for #MAKEITCOUNT(right). – Photo from: Under Armour, Inc v Nike, Inc complaint, filed 21/02/2013)
(comparison between Under Armour television commercial (left) and a frame from Nike’s YouTube video for #MAKEITCOUNT (right). Photo from: Under Armour, Inc v Nike, Inc complaint, filed 21/02/2013)
Nike denies all of Under Armour’s allegations, claiming that they have not used the noun-verb descriptive combination ‘I will’ as a ‘trade mark use’, the phrase has neither acquired distinctiveness nor secondary meaning as a trade mark, there is no likelihood of confusion with consumers, that it is “not a famous trade mark”, and (perhaps ironically) that Under Armour has abandoned its trademark rights because it has failed to adequately police the mark.
So, can a company trade mark everyday words such as ‘I will’ and stop others from using those words when advertising similar goods or services? The answer is yes – in some circumstances. A trade mark is essentially a sign used to distinguish goods or services provided in the course of trade. A key consideration for the trade mark registrar in Australia is how ‘distinctive’ a mark is. Marks that are not distinctive or are descriptive terms for the relevant goods and services are generally unregistrable. Some trade marks are inherently distinctive either because they are meaningless words such as ‘Telstra’ or ‘Reebok’ or because they are words used completely out of their usual context, such as ‘Apple’ in relation to computers. Non-inherently distinctive words can also become distinctive, if combined with a distinctive logo or stylised writing, e.g ‘surf shop’ or ‘the optical shop’. Words that are not inherently distinctive can also be registered, provided that (through factual evidence of use and public reputation) they do in fact distinguish those goods or services (brand slogans such as ‘Just do it’, ‘I’m lovin’ it’ and ‘A diamond is forever’ come to mind).
Has Nike infringed Under Armour’s trade mark? Australian courts would look at factors such as whether the sign in question has been used ‘as a trade mark’ (i.e. has it been used as a badge to indicate the trade origin of the goods or services?) and whether the sign is substantially identical with or deceptively similar to the trade mark in question.
A critical element for Under Amour to establish, should this proceed to trial, will be that Nike’s use of ‘I will’ has been used as ‘a trade mark’. Nike asserts in its response that its use of ‘I will’ in the #MAKEITCOUNT campaign advertising materials is not a trade mark use, but rather is used in its ordinary, plain-english meaning to describe activities, such as “I will train one hour each day” or “I will finish what I started”.
A further key consideration for the US Court, will be the issue of whether consumers are likely to be confused and think that the Nike campaign advertising materials are actually for Under Armour, or that they suggest some kind of affiliation or association with Under Armour. Nike has started to address this point in its submission by emphasising that the campaign advertising materials include “significant Nike imagery and other uses of the Nike trademarks” – thereby arguably lessening the likelihood of consumer confusion. In Australia, these issues would not be relevant as a defence in this case.
It will be interesting to see if the US Court, when looking at the campaign advertising materials as a whole, will find Nike’s arguable emphasis of ‘I will’ (via bolding and the phrase’s placement by itself on one line) as being a significant consideration when making its decision as to whether the phrase has been used as a trade mark, and on the likelihood of consumer confusion. See examples of the advertising here.
Under Armour’s other well-known trade mark is “Protect this House” – and based on Under Armour’s complaint against Nike, it certainly appears to be trying its very best to do so.
