Nike, Inc. v. USAPE LLC

Background

Nike sued USAPE LLC, referred to in the opinion as BAPE, over BAPE’s sale of footwear. Nike alleged that BAPE’s BAPE STA, BAPE STA Mid, COURT STA, COURT STA High, SK8 STA, and other footwear used Nike’s registered trade dress or confusingly similar designs. Nike’s asserted marks concern the trade dress of the Air Force 1, Air Jordan 1, and Dunk sneakers, as well as an Air Force 1 midsole design.

Nike brought claims under the Lanham Act for trademark infringement, false designation of origin, and unfair competition. It also asserted common-law trademark infringement and unfair competition, trademark infringement under New York General Business Law § 133, and dilution under New York General Business Law § 360-L. Nike alleged that BAPE’s designs were likely to confuse consumers about the source of the products or about an affiliation with or approval by Nike, and that the designs were likely to weaken the distinctiveness of Nike’s marks.

The complaint alleged that Nike had contacted BAPE in 2009 about BAPE’s alleged copying of Nike’s Air Force 1 design. Nike further alleged that BAPE later increased its U.S. sales and presence, including after reintroducing the BAPE STA design in 2021. The opinion treated the complaint’s factual allegations as true for purposes of deciding the motion.

Motion and Parties’ Arguments

BAPE moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim. BAPE argued that Nike had not identified the specific elements of its product-design trade dress, explained which elements were distinctive, or explained how they were distinctive. BAPE also argued that Nike could not cure that problem merely by relying on the descriptions in its trademark registrations, which BAPE characterized as too vague.

Nike responded that its trade dress was registered and that the registration certificates supplied the required initial evidence that the marks were valid and protectable. Nike argued that the heightened requirement to describe the elements of trade dress applies to unregistered trade dress, not registered trade dress. Nike also relied on the written descriptions and diagrams in its registrations.

Court’s Analysis

The court explained that a plaintiff asserting trade-dress infringement generally must show that the trade dress is legally protectable and that the defendant’s design is likely to confuse consumers. For unregistered trade dress, a plaintiff ordinarily must describe the design’s character and scope, show that it is not functional, and show that it has acquired distinctiveness or secondary meaning.

The court held that registered trade dress receives a rebuttable presumption of validity and protectability. Because the Patent and Trademark Office had already considered the registered designs’ elements, distinctiveness, and functionality, Nike did not need to make the same detailed showing in its complaint that would be required for unregistered trade dress. At the pleading stage, Nike’s registration certificates satisfied the protectability part of the infringement analysis.

The court also held that, even if more detail were required, Nike’s registrations adequately described the scope of the asserted trade dress. The registrations included written descriptions and diagrams identifying the claimed features. The diagrams used broken and solid lines to distinguish the parts being claimed from parts not being claimed. The court cited, as an example, a description covering the shoe’s exterior stitching, material panels, wavy panel around the eyelets, vertical ridge pattern on the sole, and the relative position of those elements.

The court declined to follow two decisions to the extent they required owners of registered marks to plead additional facts establishing protectability. It also noted that a prior related case involving Nike had denied a similar motion to dismiss based on the argument that Nike had not precisely described its registered sneaker trade dress.

Disposition

The court denied BAPE’s motion to dismiss. The Clerk of Court was directed to terminate the motion. The opinion did not decide whether BAPE’s footwear infringed Nike’s marks or whether consumers were actually likely to be confused; it decided only that Nike’s claims could proceed past the motion-to-dismiss stage. Judge Paul G. Gardephe signed the order.