Sportswear company Nike has filed a trademark infringement lawsuit in the US relating to the Venum trademark used on Mixed Martial Arts (MMA) clothing.
Nike is claiming that two companies, DVB Distribution and Dragon Bleu, have infringed its trademark for a brand of sportswear called Venom.
It says the companies had filed complaints against it over its Venom brand despite previously claiming it could exist alongside the Venum trademark Dragon Bleu owns.
In response, it is now seeking the cancellation of the Venum trademark in the US.
Nike says it has used the name Venom since “at least” 2002 for athletic clothing and softball equipment and acquired a trademark for the name (US number 2,969,824) in 2005.
French-based Dragon Bleu has had the name ‘Venum’ trademarked since 2008. DVB distributes its products.
But Nike has accused the pair of “intentionally” attempting to “draw associations” with its brand, through advertising, selling and distributing products in the US.
“Because of Nike’s use and promotion of the mark Venom throughout the US … consumers have come to associate Venom as an … identifier of Nike,” the complaint says.
In the lawsuit, filed at the US District Court for the District of Oregon last month, Nike also says the two companies intend to expand their market beyond MMA gear.
In the complaint, Nike sited an attempt by Dragon Bleu to register ‘Venum’ as a trademark at the US Patent and Trademark Office (USPTO); an attempt that was initially denied.
The application, in 2008, was accepted at various trademark offices in Europe but the USPTO’s rejection stemmed from an already existing trademark application for ski and snowboard equipment under the name Venom.
The application was eventually accepted by the USPTO after Dragon Bleu said confusion was unlikely and that trademarks for different sports were allowed to “co-exist”.
However, Nike said Dragon Bleu had recently opposed its newly launched football boots, which use the trademark “Hypervenom”, claiming the name infringed the “Venum” trademark.
It also referred to a lawsuit that Dragon Bleu filed last year in France seeking a preliminary injunction banning Nike from marketing the product in France and elsewhere in Europe.
The defendants “cannot have it both ways,” said the complaint, adding that the defendants could not allow the trademarks to coexist in the US while claiming infringement in Europe.
Nike is demanding an injunction in the US prohibiting the defendants from selling, offering to sell, distributing or advertising any products that use the “Venum” trademark, as well as damages.
Dragon Bleu did not respond to requests for comment.
Start a subscription to WIPR for £455.
In-house feature articles, the archive and expert comment require a paid subscription. Subscribe now.
Want to give it a try? We are offering a two week free trial to the WIPR website – register and select “Free Trial” to begin access to the full WIPR archive and read the latest news, features and expert comment. Begin your free trial here.
Is your 2 week free trial about to end? Upgrade to a 12 month subscription for £455 now.
If you have already subscribed please login.
If you have any technical issues please email James Lynn on firstname.lastname@example.org.