San Diego Trademark Attorney® Blog

Nike and Under Armour Battle Over "I Will" Trademark

May 7, 2013

nike.jpg.jpgSan Diego - In February of this year Under Armour, Inc. filed a complaint against Nike, Inc. claiming that Nike was infringing on Under Armour's "I Will" trademark. In response, on Monday Nike filed a response which seeks a declaratory judgment that "I Will" does not function as a trademark, that Nike's use of the phrase is fair use, and otherwise that Nike's use will not cause any consumer confusion.

Under Armour is a sporting apparel company most well-known for its breathable t-shirts. It is claiming that its customers are being confused by Nike's use of the same "I Will" slogan. Under Armour also believes the trademark will become diluted should Nike be allowed to continue using "I Will" in its advertising.

According to Nike, it has been using the two-word sentence to promote its sporting gear since as early as 1995 which is a year before Under Armour even existed. Further, Nike believes the phrase does not serve as a trademark and is not known to the general public as being associated with Under Armour.

Under Armour Inc. was started by Kevin Plank, who played college football for the University of Maryland. The company began with an idea for an athletic undershirt that would keep the wearer warm in cold weather, and cool and dry in hot weather by coordinating with the body to "regulate temperature and enhance performance."

In the Baltimore federal court action, Under Armour is seeking a permanent injunction, compensation for profits arising from infringing use, and destruction of all uses of "I will" on products and advertising material. The complaint details the infringement by showing several phrases using "I Will" in various Nike advertisements. Although the Nike ads contain additional wording such as "I will do it for my team" and "I will finish what I started," Under Armour feels the two words "I Will" is the "cornerstone symbol" of its company.

Nike, which has been in the business of selling sporting gear since 1972, claims to have used not just "I will" but other similar short noun + verb sayings like "Just do it" all since before Under Armour existed.

Although the I WILL trademark U.S. Reg. No. 2409096 has been around for over 12 years, it was originally owned by Wells Investments, Inc. (formerly Wells Ingram, Inc.) who didn't take the necessary steps to prevent use by infringers, according to Nike. The lack of policing the trademark, according to Nike, has led to the loss of trademark rights.

The U.S. Patent & Trademark Office currently lists over 10 I WILL trademarks including an application filed by PepsiCo for beverages, and Reg. No. 3,336,747 for educational services owned by The Susan G. Komen Cancer Foundation, Inc.