Don’t Do it: Judge Ends Nike Ad Campaign Over Trademark Dispute

This case highlights the importance of clearing new advertising slogans before embarking on a major marketing campaign. Because advertising slogans tend to be used for shorter periods, they are not always subject to the same level of scrutiny and due diligence as trademarks. This case highlights that one wrong step with an advertising slogan can be costly, especially when slogans are used on packaging, in-store signage, and other physical collateral. In addition to costs associated with reprinting and restocking, there is also the lost goodwill generated by a shelved slogan.

Importantly, not all advertising slogans will be used in a manner that rises to the level of trademark uses. For example, slogans that are merely descriptive or informational would likely not be protectable as trademarks, which means the risk of infringement would be lower. In this case, Nike argued that “sport changes everything” was merely descriptive of its goods and therefore not infringing of Fleet Feet’s marks. The judge rejected that argument, finding the way Nike was using the mark was indicative of trademark use. The judge also concluded that Nike should have been aware of Fleet Feet’s marks given the closeness of the two companies. Nike has filed an appeal with the US Court of Appeals for the Fourth Circuit and asked the District Court on December 10, 2019 to stay the preliminary injunction against its campaign pending appeal.