In July of this year, Puma SE and Puma North America Inc. (“Puma”), known for their athletic wear and footwear, sued rival Brooks Sports, Inc. (“Brooks”), for trademark infringement, patent infringement, and unfair competition. Puma seeks in this lawsuit, among other relief, to enjoin Brooks from using Puma’s NITRO trademark. Puma asserts it has been using the mark NITRO on footwear since at least March 2021, and its NITRO line of running shoes are currently Puma’s top selling running shoes in the U.S. According to the complaint, despite being on notice of Puma’s rights to the NITRO mark, Brooks moved ahead with an infringing advertising campaign #RunOnNitro.” Puma also alleges that Brooks introduced a shoe that infringes its design patent and is being sold with the NITRO mark.
Brooks fired back last month, asserting counterclaims against Puma declaring that Puma’s trademark rights are invalid. According to its counterclaim, Brooks is the leading adult running shoe brand in the United States due in large part to its technological innovations, one of which is “nitrogen-infusion.” Brooks uses SCF foaming to introduce nitrogen gas into the midsoles of its running shoes, creating cushioning to improve performance. Brooks asserts that its use of “nitro” is descriptive, that it was using the term “nitro” before Puma launched its shoe collection, and that Puma has no right to prevent Brooks from using the term “nitro” to describe its own nitro-infusing technology. Brooks further argues that Puma’s design patent has nothing to do with Puma’s Nitro branded shoes. Brooks’ counterclaim seeks a declaration that Puma has no protectible trademark rights in “nitro” for footwear, a declaration of non-infringement of “nitro,” a declaration of non-infringement of Puma’s patent, and a declaration of invalidity of the patent.
As we have noted in the past, the strongest marks are fanciful, arbitrary, or suggestive. The strength of a trademark is a critical component to an infringement claim and will surely play a role in this litigation. It remains to be seen who will cross the finish line first in this battle.