The following article is a guest contribution from Alan Wilmot, a 2L at the University of Miami School of Law.
Under Armour and Nike Inc. reached a settlement agreement regarding the trademark infringement lawsuit initiated by Under Armour for Nike’s alleged illegal use of the “I Will” slogan. As a result, Under Armour’s complaint was dismissed Monday, February 10, pursuant to an approved court order by a Baltimore U.S. District Judge—almost one year to the date Under Armour filed its original lawsuit, February 21.
In the lawsuit, Under Armour alleged that Nike infringed upon its trademark phrase “I will” by using the slogan in social media ads such as “I will finish what I started” and “I will sweat while they sleep.” With the lawsuit, Under Armour sought damages and injunctive relief, hoping to prevent Nike from continuing to use the phrase or a substantially similar slogan in relation to its products. While the terms of the settlement agreement were undisclosed, it can be assumed that Under Armour was able to achieve at least the latter part of the remedies it sought with its claim.
The crux of Under Armour’s lawsuit rests on its belief that the average consumer would be confused as to whose products they were purchasing if both companies were to utilize slogans incorporating “I will.” For such a determination on this issue, courts typically look at a distinct set of seven factors to help decide it the moving party has a claim for asserting likelihood of confusion. These seven factors are: (1) the strength of the mark allegedly being infringed; (2) the similarity between the infringed and infringing marks; (3) the similarity between the goods and services offered under the two marks; (4) the similarity of the sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) the similarity between the holders advertising methods; (6) the intent of the alleged infringer to benefit off the infringed party’s established good will; and (7) the existence of actual confusion in the consuming public.
However, another claim that Under Armour could have possibly utilized in its lawsuit against Nike is that the company’s use of the “I will” slogan was effectively diluting Under Armour’s use of the slogan in commerce. Within trademark law, there are two main theories of dilution: (1) tarnishment; and (2) blurring. By pleading dilution, Under Armour does not have to prove that a likelihood of confusion exists among its customers as it relates to the purchase of products utilizing “I will.” Under the first category, dilution by tarnishment occurs when a famous mark is improperly associated with an inferior or offensive product or service. Courts typically find tarnishment when a famous trademark—and the mark must be famous—is wrongfully associated with another mark that pertains to nudity, pornographic material, or drugs. Because Nike, as an athletic apparel merchandising factory, unquestionably does not fall within any of these categories, it is more likely that Under Armour would have pursued a dilution claim under the second category. In order to determine dilution by blurring, federal law specifies six non-exhaustive factors for the courts to consider: (1) the degree of similarity between the mark or trade name and the famous mark; (2) the degree of inherent of acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark. While these elements, viewed on its face, seem similar to the likelihood of confusion factors, it is important that a likelihood of confusion is not need in order to prove a dilution claim.
By claiming the “I will” slogan as one of the “cornerstone symbols” of the company, Under Armour essentially stakes its claim that the phrase is widely recognized as famous enough to warrant protection. Consequently, looking at the factors, Under Armour could make a claim that all except the fifth element would be found in its favor. Any use by Nike of the “I will” slogan will undoubtedly be similar to any use by Under Armour, simply because the respective slogans utilize similar language. For example, compare Nike’s “I will protect my home court” to Under Armour’s “Protect This House: I will.” Additionally, Under Armour has a legit claim to assert that its slogan has acquired distinctiveness with relation to the company and its products due to the amount of advertising dollars put into promoting the slogan, the litany of merchandise it appears on, and the many years the phrase has been in public eye and ear. Also by bringing this claim, the company, for all intents and purposes, states that only it alone can use the phrase throughout commerce, effectively using this litigation as a way to claim substantial exclusivity with the phrase. As for element six, it is within the realm of possibility that Under Armour could produce surveys or questionnaires that, if presented to consumers, would serve as evidence of actual association. One way this could be achieved is by placing both previously mentioned examples side by side, and having consumers attempt to place either example with its respective company. If a substantial amount of consumers were to link Nike’s use of the phrase with Under Armour, actual association would be proved in Under Armour’s favor.
However, proving Nike’s intent in using the “I will” phrase will be a tough task because it requires digging into the company’s mindset for why it decided to use the phrase. If Nike sought to benefit on the goodwill established through Under Armour’s use of “I will”, it will be enjoined under dilution through blurring. However, if this element proves difficult to establish, as long as Under Armour sufficiently shows the other five elements weigh in its favor, it would still likely succeed on its blurring claim due to the fact that none of the six factors are dispositive.
By filing its trademark infringement lawsuit against Nike, Under Armour followed the advice of its own slogan and proclaimed it will protect its trademarks at all costs. Assuming Under Armour also included a dilution claim, it effectively protected its house with double sided protection against Nike, and other potential infringers.