Oofos, Inc. v. Nyky USA Corp. & Nyky S.R.L.

Background

Oofos, Inc. alleged that Nyky USA Corp. and Nyky S.R.L. used the OOF WEAR, OOFWEAR, and OOF marks in connection with apparel and accessories without authorization. Oofos claimed trademark infringement under federal law, unfair competition and false designation of origin, deceptive trade practices, trademark dilution, and trademark infringement and unfair competition under New York law. Oofos also sought cancellation of Nyky’s U.S. Registration No. 5,964,153 for the OOF mark plus design and an injunction against Nyky’s U.S. Trademark Application Serial No. 79/405,428 for the OOFWEAR mark plus design.

On August 7, 2024, Oofos filed a cancellation petition with the Trademark Trial and Appeal Board (TTAB), an administrative body that handles certain federal trademark-registration disputes. The petition challenged registrations for the OOF mark plus design and the OO mark plus design, based on Oofos’s claimed priority and alleged likelihood of confusion. Nyky did not respond to the petition concerning the OO registration and defaulted in that proceeding. The cancellation proceeding concerning the OOF registration remained ongoing.

After Oofos filed this district-court action on March 20, 2025, Oofos moved to suspend the TTAB proceeding. The TTAB granted that request on September 24, 2025. Nyky then moved under Landis v. North American Co. to stay, or pause, the district-court case while the TTAB proceeding continued.

Legal standard

The court explained that federal courts have inherent authority to control the timing of proceedings on their dockets. In deciding whether to grant a stay, courts in the Second Circuit generally consider whether the stay would simplify the issues and trial, the stage of the proceedings, and possible prejudice to the party opposing the stay. The party seeking a stay must show a clear hardship or inequity from being required to proceed.

Court’s analysis

The court found that all three factors favored a stay. First, a TTAB decision concerning the registrability of the OOF registration would be binding on the same registrability issue in later district-court litigation. The TTAB’s likelihood-of-confusion analysis would also help simplify the infringement issues involving that mark because the likelihood-of-confusion standard is the same in the registration and infringement contexts. Although the TTAB could not resolve every issue in the district-court case, the court concluded that its decision would narrow and inform the remaining disputes.

Second, the district-court action was still at the pleading stage because Nyky’s time to answer had been paused while the stay motion was resolved. By contrast, the TTAB proceeding had been pending for almost a year, discovery was complete, and the proceeding was ready for trial. The court therefore concluded that the district-court case should not block the more advanced TTAB proceeding.

Third, the court found that the balance of prejudice favored a stay. Oofos had alleged that the infringement began in or around 2018 but did not file its TTAB petition until August 2024 and filed this action in March 2025. The court concluded that Oofos could wait for the TTAB decision without undue prejudice. It rejected Oofos’s argument that Nyky’s continued use of the allegedly infringing marks would cause significant harm because immediate injunctive relief was unlikely to be decided from the pleadings alone. The court also concluded that discovery about likelihood of confusion for the same mark would substantially overlap in the two proceedings.

The court gave little weight to Nyky’s separate argument that the case should be stayed because of a proceeding in Italy, explaining that a result there would have, at most, persuasive value and would not simplify the district-court case.

Disposition

The court granted the defendants’ motion to stay. Either party may move to reopen the case after the disposition of TTAB Cancellation No. 92085932 and must attach the TTAB’s resolution to that motion. The clerk was directed to close all pending motions.