Nike scores victory for its ‘SNKRS’ app mark
Appeals board finds that Nike's ‘SNKRS’ online brand is distinctive and familiar with consumers | Nike cites more than 10 million orders placed through the app since 2019.
Sportswear giant Nike has convinced an appeals board to overturn a decision by the US Patent and Trademark Office ( USPTO), which originally refused its application to register the ‘ SNKRS’ mark.
The Trademark Trial and Appeals Board ( TTAB) concluded last Friday (July 28) that Nike had provided sufficient evidence to warrant the reversal.
Citing testimony from Ron Faris, vice president and general manager of Nike Virtual Studios, the Board found that the mark was distinctive, rather than generic, and that it had shown enough evidence of use since as early as February 2015.
This included the fact that millions of orders had been placed through the SNKRS online marketplace by 2015, and that as of May 2021, the platform had amassed more than 1.5 million active users and more than 1.15 billion visits.
Faris also said in his testimony that since 2019, more than 10 million orders had been placed through the platform in North America.
“Nike has claimed acquired distinctiveness in the term SNKRS based on its allegation of more than five years of continuous and substantially exclusive use of SNKRS in commerce and other evidence,” the TTAB said.
A question of phonetics
In January 2020, Nike applied to register the mark in two forms—a word mark, featuring only the letters ‘SNKRS’; and a composite mark, featuring the word in bold, stylised letters with the Nike swoosh placed above it.
The applications were for classes 9, 25, 35 and 41 for, respectively, a downloadable app; footwear; online retail services; and for information, news, commentary and incentives.
The USPTO argued in its initial refusal in June 2021 that the perception of ‘SNKRS’ “can be boiled down to” the fact that “SNKRS is the phonetic equivalent of ‘sneakers’ and that "the relevant public will perceive the term SNKRS as the equivalent of that generic term, and SNKRS is also generic.”
But in its appeal, Nike argued that the “sum total” of the USPTO’s evidence was “limited and weak” and therefore insufficient to support the refusals.
That evidence included online examples of the term ‘SNKRS’ used for various goods and services, and several third-party registrations for marks that include the same term.
The USPTO had also argued that ‘SNKR’/‘SNKRS’ is used as an abbreviation for ‘sneaker’/‘sneakers’.
But Nike pointed out that “not a single one of the [examining attorney’s] results mention the term ‘SNKRS’,” and argued that this evidence was “misconstrued”.
Instead, the citations show that Nike “does not use ‘SNKRS’ and ‘sneakers’ interchangeably, but rather makes a clear distinction between its SNKRS trademark and the term ‘sneakers’ when referring to footwear.”
In its bid to prove familiarity with the mark by relevant consumers, Nike provided “more than 20 unsolicited media articles from major publications and websites focused on the sneaker trade and culture, all of which refer to the SNKRS platform using ‘SNKRS’ as a brand name, and use the term ‘sneakers’ when referring to footwear.”
Nike’s applications will now proceed to publication, and if unchallenged, will be registered after 30 days.
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