Maryland-based performance apparel and sporting goods company, Under Armour (UA), has recently filed a lawsuit against sporting goods giant, Nike, claiming that Nike’s use of UA’s recently-launched advertising slogan “I WILL” violated its trademark rights. More specifically, the complaint alleges that Nike willfully infringed upon UA’s trademark rights when it launched its own ad campaign displaying “I WILL” for its sporting goods and apparel in a way that is similar to UA’s longtime use of the phrase.
So, what brought about UA’s use of the catch phrase in this latest ad campaign? Well, for the past decade, UA’s classic ads have asked athletes to “Protect this House.” The response to the commercial was a natural one: “I WILL.” The trademark has been featured in relation to a wide variety of the company’s products throughout the years, either by its inclusion in product names, in the packaging of its products, and/or on the products themselves. UA promotes its goods and services via the Internet (to include well-known social networks, such as FACEBOOK and TWITTER), print media, and just about every type of digital and broadcast media imaginable.
UA owns several existing and valid trademark registration and applications for “I WILL.” The most recent filings took place back in May of 2012, which covers a variety of sporting goods and services, to include: footwear, hats, rainwear, eyewear, pants, jerseys, sweatbands, as well as mobile and on-line retail store services that feature apparel and sporting goods. Briefcases, backpacks, sport bags, tote bags, posters and a plethora of other goods are also included in UA’s filings.
UA’s earliest filing/registration date for “I WILL” (which, according to the complaint is “registered and incontestable”) was back in November of 2000 and it simply covered “articles of clothing for men, women and children, namely shirts, hats in Class 25” (which is a trademark category that covers clothing, headgear and footwear).
In its complaint, UA stated that Nike started an ad campaign in the latter months of 2012 that misappropriated UA’s trademark by pretty much making the phrase “I WILL” the focal point of its ads on its FACEBOOK and YouTube video pages, as well as on nike.com. In particular, Nike has used video footage in its ads that has the catch phrase superimposed throughout the video in big bold letters. UA argues that Nike was well aware of its ongoing, long-term use of the “I WILL” trademark (much in the same way that most people in the industry know that Nike is well known for its phrase “JUST DO IT”) and suggests that Nike’s use of “I WILL” not only does harm to UA but to the public as well because customers currently associate the phrase with UA.
UA further argues that Nike’s use of the trademark will likely cause confusion in the minds of consumers who might think that the two companies are in some way associated or connected in their efforts to advertise their goods. UA suggests that Nike’s unlawful use of “I WILL” has “damaged and irreparably injured, and if permitted to continue, will further damage and irreparably injure Under Armour and Under Armour’s “I WILL trademark/tagline.” Moreover, UA claims that Nike’s use of the trademark will probably weaken the distinguishing nature and value of UA’s famous mark.
What Does UA Want?
First of all, UA seeks to have a jury trial. Not a bad idea since the parties will be able to get a live, first-hand reaction from everyday people (some of whom may or may not be consumers of their particular products) with respect to the similarities or dissimilarities of the parties’ uses of the trademark. UA also wants the Court to issue an order finding that Nike’s use of “I WILL” infringes on its use of the mark and accordingly constitutes “unfair competition.”
Additionally, UA would like the Court to issue a permanent injunction against Nike and all of its employees, agents, dealers, etc. from registering, seeking to register and utilizing “I WILL” or any other marks that may be “confusingly similar.” Also, UA would like a court order that forces Nike to dispose of and permanently destroy any and all products, ads, signs, forms, etc. that contain or make reference to the trademark.
UA’s request from the court goes even a step further by asking that they make Nike issue pre-approved remedial ads and letters to all agents, representatives and customers to address the possible confusion and dilution that was caused by its use of “I WILL.” Further, UA would like to receive payment from Nike for any and all profits stemming from the company’s use of the trademark. Finally, UA seeks an undetermined amount of damages (including punitive damages), as well as payment of all of its litigation expenses, to include reasonable attorneys’ fees.
UA’s CEO, Kevin Plank, who has referred to the company as being the “scrappy underdog to Nike,” stated in reference to the lawsuit that the company would much rather “battle its competitors in the marketplace.” No one from Nike has commented, but do they really need to? Sure, they may or may not lose the lawsuit, but the overall numbers speak for themselves: Nike had $25 billion in revenues last year, while UA had revenues of $1.8 billion. What will the lawsuit do to Nike’s numbers? Guess we’ll soon find out.