In a unanimous decision issued in Already, LLC d/b/a/ Yums v. Nike (No. 11-982, January 9, 2013), the Supreme Court held that a plaintiff’s dismissal of a trademark infringement case, combined with a broad covenant not to assert any claims against the accused products or “colorable imitations” thereof, moots the defendant’s counterclaim for trademark invalidity. The decision may encourage plaintiffs to assert infringement claims on questionable trademarks, secure in the knowledge that they can escape strong challenges to validity by abandoning the claims thereafter. However, a concurring opinion by four justices urges courts to be skeptical of such a tactic.

The case began in 2009 with Nike’s claim that Already’s “Sugars” and “Soulja Boys” athletic shoes infringed and diluted Nike’s registered design trademark for its “Air Force 1” shoes. Already counterclaimed for a declaration that the Nike mark was invalid and for cancellation of the registration.