Already v. Nike: The Supreme Court Finds Covenant Not to Sue Made Competitor’s Claim for Invalidity of Trademark Moot

more+
less-

The U.S. Supreme Court issued its opinion yesterday in the closely-watched case, Already, LLC v. Nike, Inc. In a decision that is almost certain to affect patent owners as well, the Court unanimously affirmed the Second Circuit’s opinion and ended the speculation of commentators that trademark holders might no longer have the ability to dismiss an invalidity challenge by entering into a covenant not to sue. The Court concluded that an appropriately framed, broad covenant not to enforce a trademark against a competitor moots the competitor’s action to have the trademark declared invalid. The Court imposed a high standard, however, holding that the party issuing the covenant bears a “formidable burden” to establish it is “absolutely clear” the allegedly wrongful conduct cannot reasonably be expected to reoccur.

BACKGROUND -

Nike designs and manufactures a popular line of shoes known as “Air Force 1s.” In the summer of 2009, Nike filed a lawsuit alleging Already’s “Sugars” and “Soulja Boys” shoe lines infringed and diluted Nike’s Air Force 1 trademark. Already filed a counterclaim asking the court to declare Nike’s trademark invalid.

Please full alert below for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.
×
Loading...
×