“Puma is abusing trademark law by preventing competitors from using the term ‘nitro’ to describe nitro-infused shoes. – Brooks in his July 2022 statement
sauce: complaint / https://us.puma.com/us/en/pd/deviate-nitro-mens-running-Shoes/194449.html?dwvar_194449_color=13
Brooks Sports, the sports apparel company sued by Puma SE and Puma North America, Inc. in Indiana for patent and trademark infringement, won a motion January 20 to move the case to a new district court. .
Judge Richard L. Young of the United States District Court for the Southern District of Indiana ruled Friday that the case will be transferred to the Western District of Washington. Brooks Sports is headquartered in Seattle, Washington.
Brooks argued that moving the case closer to the base was convenient for both parties, not just the witnesses. He cited Puma’s lack of presence.
PUMA filed a complaint in July 2022, alleging that Brooks was using the PUMA NITRO trademark to benefit from PUMA’s reputation and infringing one of its design patents.
Migration
A plaintiff’s choice as to where to file a lawsuit is usually respected, but the judge ruled that the plaintiff’s choice was seldom honored due to a lack of physical or business presence in Indiana.Puma Indiana There is only one physical location in the state and no offices.
In addition, Brooks’ counterclaim that the Puma patent at issue is invalid bolstered its argument to move the case to Washington.
“Brooks is headquartered in Seattle, and the allegedly infringing product and marketing campaign were developed and designed in Seattle. ,” Young wrote.
Traveling to Washington would be more convenient for witnesses, according to the Indiana judge.
Puma Witnesses primarily come from our offices in Massachusetts, but also from Germany. Puma tried to argue that the flight from Massachusetts to Indiana was shorter, but Young dismissed this argument after stating that witnesses would have to travel either way.
Finally, Judge Young cited a high number of district court cases (nearly 10,000 more than Washington’s western district) and fewer judges as factors that further pushed the move to Washington.
“Taken together, the public interest factor strongly favors Washington’s move to the Western District,” Young wrote.
Claim of Infringement
Puma’s complaint against Brooks alleges patent infringement, trademark infringement and unfair competition.
Puma alleged that Brooks infringed its patent, US Design Patent No. D897,075, when Brooks launched its “Aurora BL” running shoe. Puma said the entire sole of the shoe infringes on Puma’s patent.
The German company claimed that Brooks Sports contacted one of its manufacturers to copy the design and manufacture of one of Puma’s shoes.
Source: Puma Complaint
Additionally, Puma alleged that Brooks had infringed the NITRO trademark, which the company claims has been used by Brooks in promotional materials since 2021. How to promote your brand.
Source: Puma Complaint
The allegations above contribute to Puma’s belief that Brooks Sports is causing confusion in the market “by creating a false and misleading impression” that Brooks Sports shoes originate from or are associated with Puma. doing.
In its July 2022 complaint, Puma wrote that Brooks “has caused, and likely continues to cause, significant harm to Puma and the public,” and accordingly issued a complaint related to the shoes in question. He asked the court to restore Brook Sports’ profits.
counterclaim
Brooks filed several counterclaims, including that Puma’s design patent was invalid.
Additionally, Brooks argued that Puma has no binding right to the word “nitro” in its footwear. Puma said the word “nitro” cannot be trademarked.
On the Brooks Running website, the company details their nitrogen injection technology.
Brooks is seeking judgment against Puma on both its trademark and patent claims, thus barring its unfair competition claims.
In July 2022, after the initial complaint was filed by Puma, Brooks issued a press statement stating, “Puma prevents competitors from using the term ‘nitro’ to describe nitro-infused shoes. By trying to do so, you are abusing trademark law.”
In September 2022, Brooks settled a trademark infringement lawsuit involving Skechers’ ‘5’ trademark.
Brooks is represented by Jeffrey Potter of Patterson Belknap Webb & Tyler LLP. Puma is represented by Quarles & Brady LLP.
