In its defense against Puma’s claims, the Berkshire Hathaway-owned performance footwear brand described the litigation as a worldwide campaign to “bully” Brooks into abandoning its use of the word “nitro” when describing its nitrogen-infused midsole technology.
The “nitro” usage is the central point of Puma’s case, but other accusations extend to copying the company’s foam-molding technology.
Since 2019, Brooks has used a supercritical fluid (SCF) foaming process to infuse nitrogen gas into its midsoles to create a lightweight cushioning that it can fine-tune for each model. It refers to the shoes as “nitrogen-infused” or “nitro-infused” in its marketing and advertising materials. It says that none of these shoes is exclusively named or labeled as “nitro.”
Brooks said in its case that Puma launched its own nitrogen-infused midsole running shoe collection in 2020—more than a year after Brooks—before similarly marketing the benefits of the foam tech. The difference, Brooks alleges, is that Puma specifically markets them under the name “Nitro.”
“Puma is wrong,” Brooks’ said in its argument. “Puma has no rights to the word ‘nitro,’ which it uses in a descriptive manner, and it certainly has no rights to prevent Brooks from using ‘nitro’ to describe Brooks’ own nitro-infusion technology.”
Brooks named a pair of running shoes “Nitro” as far back as 1998, and pointed to instances where Adidas, Nike, Under Armour, Saucony, Asics, Skechers and Mizuno all used “Nitro” in the name of a shoe.
When fighting Puma’s claims of trademark infringement, Brooks pointed to the U.S. Trademark and Patent Office’s repeated rejection of Puma’s attempts to trademark the term “nitro” for nitrogen-infused products. The PTO said in its rejections that while “nitro” is a descriptive shorthand term for “nitrogen,” it is not distinctive to the nitrogen-infused products of any company. This prevents the term from being eligible to trademarked when used in connection with these products.
Brooks alleged other instances of Puma’s “bullying” in its defense. For example, Puma has brought emergency motions for injunctions against Brooks in multiple European countries including Germany and the Netherlands based on alleged licenses to “Nitro” that Puma claims to have obtained from non-footwear companies.
No court in any country has granted an injunction against Brooks, and German courts have already twice rejected Puma’s request for an ex parte injunction on the basis that “nitro” is descriptive of Brooks’ and Puma’s technology.
Brooks also claims Puma even tried to freeze its European bank accounts, purportedly in order to make sure it could collect damages. Puma’s damages claim totals 150,000 euros ($147,598).
As for Puma’s design patent infringement allegations, which claim that Brooks’ Aurora BL sneaker infringes on the D897,075 patent (referred to as the D075 patent), the defendant called the accusations meritless.
Brooks called the Aurora BL sneaker design “plainly dissimilar” to that of the patent, saying that “an ordinary observer would not confuse the overall design of the Aurora BL with the overall design of [Puma’s] D075 patent.”
Brooks illustrated some of the differences between its own shoe and the patent, saying that the Aurora BL has a decoupled midsole (highlighted in red below) creating a gap between the front and back of the shoe, without a continuous seam. Conversely, the D075 patent contains a continuous sole that extends from the toe to the heel end of the midsole structure.
As another example, the D075 Patent design claims three “bulbous” regions, whereas the Aurora BL has four regions of different length, size, and orientation, Brooks argued. Moreover, the claimed design has three distinct sections on the bottom of the shoe (seen below) that are not present in the Aurora BL, and the claimed design also has a different curvature in the heel, Brooks pointed out.
And although Puma filed the patent application on Aug. 1, 2018, contents of the patent were not published until it issued on Sept. 29, 2020. By the time the patent went public, Brooks had already designed the Aurora BL sneaker.
Puma still does not sell a footwear style that incorporates the patent.
Brooks also clapped back at Puma for regularly using protected trademarks in its marketing, saying “Puma cannot have it both ways.”
Despite Brooks having a protected “DNA” family of marks that it uses for its midsole cushioning technology, including the DNA Loft, DNA Amp, DNA Flash and BioMoGo DNA, the company says Puma regularly uses the term “DNA” to reference its own products.
“Unlike Puma’s claims to ‘Nitro,’ Brooks has well-established rights in its DNA family, and neither brand uses DNA in a descriptive manner,” court documents said. “Nevertheless, Puma surely recognizes that not all uses of a term or mark create a risk of confusion or constitute trademark infringement. It is impossible to square Puma’s use of Brooks’ protected DNA mark with its claims that Brooks cannot use the descriptive term ‘nitro,’ to explain its nitro-infused midsoles.”
This isn’t the first major trademark infringement suit for Brooks in 2022, with the company recently under fire from Skechers on allegations that it capitalized on a mark similar to the latter’s signature “S” logo. The companies reached an out-of-court settlement in September.