Nike May Be Able to Register SNKRS Trademarks Following TTAB Win

Nike has nabbed a win in the latest round of its quest to register SNKRS-centric trademarks for use in connection with “online retail store services featuring footwear and clothing,” and “awards and contests to demonstrate excellence in the field of fashion and sneaker collection.” In an opinion on July 28, a panel for the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board (“TTAB”) reversed earlier refusals from the USPTO that stood in the way of potential registrations for the Swoosh on the basis that the SNKRS marks – which consist of a SNKRS word mark and a stylized version – are “generic,” or alternatively, are “merely descriptive and [have] not acquired distinctiveness in connection with Nike’s services.” 

In the TTAB panel’s opinion on Friday, as first reported by TFL, Administrative Trademark Judge Mark Lebow primarily dove into the USPTO’s genericness refusal, stating that the USPTO examining attorney presented “sufficient evidence to establish that ‘sneaker(s)’ is generic for retail services featuring sneakers because it is a term that the relevant public uses or understands to refer to a key aspect or subcategory of the genus,” and that SNKRS would be perceived as a phonetic equivalent of the word “sneakers” when used in connection with Nike’s goods/services.  

However, the TTAB panel determined that these findings “do not resolve the issue of whether the primary significance of SNKRS is the generic term to which it relates (‘sneakers’),” or whether it is perceived as “an indicator of [Nike] as the source of the services” at issue, particularly given the numerous articles that Nike produced that show that “the relevant public appears to view its use of SNKRS as a trademark.” (All emphasis courtesy of the TTAB.) While it is true that “generic marks … are not registrable as trademarks,” the TTAB asserted (citing Two Pesos, Inc. v. Taco Cabana, Inc.), and that “[e]ven proof of secondary meaning … cannot transform a generic term into a subject mark,” the panel held that it must still “consider that evidence, as well as other evidence presented by [Nike], in determining whether [its] proposed SNKRS mark is generic in the first place.”

Among the evidence presented by Nike to show that “‘SNKRS’ is recognized as [its] trademark” by the relevant consumers is “a substantial number of articles in widespread circulation evidencing the use of [Nike’s] proposed mark by third parties as a trademark” – in other words, articles that “refer to the SNKRS Platform using ‘SNKRS’ as a brand name and that use the term ‘sneakers’ when referring to footwear.” Meanwhile, the TTAB noted that the examining attorney was “apparently unable to produce any countering evidence related to third parties that use SNKRS generically when discussing [Nike’s] goods or services.” 

With the foregoing in mind, the TTAB stated that it “understand[s] the examining attorney’s concerns” about registering the SNKRS mark, “it is the record evidence bearing on purchasers’ perceptions that controls the determination, not general legal rules or subjective opinions.” Yet, the USPTO “has not met its substantial burden of establishing that SNKRS is generic for the identified services,” according to the panel.

Side note: Other evidence produced by Nike includes a survey of 300 respondents that was conducted by marketing and survey professional Hal Poret, who found that 62 percent of respondents (186 of 300) “identified SNKRS as a brand name,” compared to 26 percent that said “it is a common name (78 of 300).” Porset said that it is his opinion that “the term SNKRS is primarily perceived as a brand name of an online retail or retail store in the context of footwear and is not perceived to be a generic term in that context.” (Not terribly swayed by the survey, the TTAB found “some problems that limit its probative value,” namely, the phrasing of certain survey questions.)

Another interesting element of the TTAB’s opinion is its focus on vowel-less marks, with the panel noting that Nike sought to show that “‘consumers are privy’ to the trend of dropping letters from words, and understand such marks to be brand names rather than generic terms.” In making such a claim, Nike pointed to a 2020 article from the New York Times, which notes that “the more often vowels are dropped, the more people get used to it and make adjustments to rapidly understand implied meaning,” as well as examples of third-party USPTO registrations of “disemvoweled” marks, including FLICKR, TUMBLR, GRINDR, HLMT, and LISNR for various goods and services.

Nike highlighted one registration (Reg. No. 6004299), in particular, for the mark NTWRK, which is on the Supplemental Register, as “suggest[ing] that such disemvoweled marks are capable of acquiring secondary meaning and becoming source identifiers, even when registered for services that may refer to a non-disemvoweled term.”

SNKRS & Secondary Meaning

Turning to the issue of acquired distinctiveness of the SNKRS mark (which Nike claims in both applications, Serial Nos. 88781470 and 88781464), or the lack thereof, according to the USPTO, the TTAB set the stage by stating that “the term ‘sneakers’ is generic term for [Nike’s] services because it identifies a key aspect of those services, and that the relevant consumers would recognize SNKRS as an abbreviation of ‘sneakers’ regardless of whether they also viewed it as an indicator of source.” And given that the resemblance between SNKRS and the word “sneakers,” it is “evident that the relevant consumer will automatically equate SNKRS and the word ‘sneakers’ and know … that the services relate to sneakers.” As such, the TTAB said that “SNKRS is highly descriptive of [Nike’s] services featuring sneakers,” making its burden of establishing acquired distinctiveness “commensurately high.” 

Reflecting on the secondary meaning factors, the TTAB asserted, in part, that … 

– “Although we gave limited weight to [Nike’s] Teflon-style survey in our genericness analysis, we find, nevertheless, that it has some probative value in showing that consumers perceive [Nike’s use of SNKRS as indicating source.” 

– Nike “has continuously used” and made “substantially exclusive use of” its SNKRS mark in interstate commerce in connection with its goods/services since at least as early as February 2015.

– Nike’s extensive advertising and promotion – including on Apple Search Ads, Facebook, Instagram, Snapchat, Google, YouTube, and Twitter – supports a finding that SNKRS has acquired distinctiveness. 

– Nike’s sales support a finding that SNKRS has acquired distinctiveness. These include: “Millions of orders” through the SNKRS platform since 2015; sales increases at an average of +43 percent year-over-year since 2018 on the SNKRS platform; and more than 10,000,000 orders on the SNKRS platform in North America since 2019.

– Nike presented no evidence of intentional copying. 

– Unsolicited media coverage of Nike’s mark “has been substantial since [it] first introduced the mark,” and such evidence supports a finding that SNKRS has acquired distinctiveness. 

TLDR: After considering all of the factors for which there is evidence in determining whether Nike’s mark has acquired distinctiveness, the TTAB found that Nike “has met its burden in proving it.” 

With the foregoing in mind, the TTAB stated that the USPTO’s refusal to register “on the ground that [SNKRS] is generic for the identified services, or in the alternative that it is merely descriptive of them and has not acquired distinctiveness is reversed.” At the same time, the refusal to register the stylized SNKRS mark “on the ground that Nike has not disclaimed SNKRS because it is generic for the identified services, or in the alternative that it is merely descriptive of them and has not acquired distinctiveness, is also reversed.” 

As for next steps … Both applications will proceed to publication with the USPTO. This is likely not the end of the pushback that Nike will see in connection with the SNKRS marks. Chances are, other footwear-makers will take the opportunity to wage oppositions to block the applications, assuming that they view the marks (paired with Nike’s level of litigiousness) as potentially damaging to their own ability to operate in the sneakers space.