San Diego Trademark Attorney® Blog

Nike Fights FUEL Trademark Infringement Case By Claiming Abandonment

May 31, 2013

nike.jpg.jpgSan Diego - Fuel Clothing Company Inc., founded in 1992 by skateboarding enthusiasts Shane Levi Gould and Buster Halterman, has been pursuing a trademark infringement lawsuit in South Carolina District Court against Nike since 2012. Fuel Clothing owns the FUEL trademark, U.S. Trademark Registration No. 2,290,931, for apparel.

Fuel Clothing has taken issue with Nike's use of "Nike+ FuelBand". In response to the complaint, Nike has produced evidence in the form of a survey which it claims shows that consumers are not likely to be confused between the trademarks. The Nike+ FuelBand is a bracelet worn to track the wearer's activities and measure movements.

Apart from issues with likelihood of confusion, Nike is also alleging that Fuel Clothing has been inconsistent with its use of the FUEL trademark and has failed to properly control the trademark to the point of abandonment.

Nike stated that Fuel Clothing's failure to police the trademark against infringers, and its failure to properly control the trademark in licensing agreements, has weakened the trademark to the point that it is entitled to only a narrow scope of protection, if any. Nike has cited Fuel Clothing's own licensing activities which it claims have weakened the trademark. Nike alleges that Fuel Clothing has issued naked licenses by failing to exercise any control over the licensed trademark. In one instance, Nike alleged that licensee Safari Shirt Co. was allowed to use "fuel" in any manner they saw fit, as long as it continued to pay royalties.

Nike also alleges that Fuel Clothing allowed uses of the FUEL trademark which caused confusion as to source among the public. Nike has cited a license agreement with Fuel TV which it claims caused confusion among the public as to source.

With regard to a failure to police, Nike pointed out that Fuel Clothing did not raise any objections to Nike's use of the "Fuel it Up" and "Fuel This" slogans on its t-shirts which were launched prior to the "Nike+FuelBand" trademark. Nike also cited Fuel Clothing's failure to pursue litigation against Fossil Inc., maker of handbags and watches, over the use of "Fossil Fuel". In Nike's recent motion to end the case, it also states that Fuel Clothing did not oppose registration of Nike's U.S. Trademark Applications for "NikeFuel" or "FuelBand."

No ruling on the motion has been entered yet.