The Beaverton, Ore.-based company filed trademarks for the term in the United Kingdom and United States in March 2019. Since then, Puma has fought the mark’s approval in both countries, claiming the term—an amalgamation of “footwear” and words like software and hardware—“is merely descriptive” when applied to the goods and services it is meant to encompass.
The litigation brought the two companies before the High Court of Justice in London for an appeal hearing last week, according to The Fashion Law. The appearance followed a September decision in Nike’s favor.
In the United States, meanwhile, a decision remains far off. A letter from the Trademark Trial and Appeal Board, dated May 14, outlines a calendar that runs to at least next spring.
Nike moved to trademark “footware” more than two years ago. The application covered “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices; electronic devices and downloadable computer software that allow users to remotely interact with other smart devices for monitoring and controlling automated systems; downloadable computer software and firmware used to allow electronic devices to share data and communicate with each other;” and other such hardware- and software-related products and services.
Puma pushed back in both the U.S. and U.K. In the Notice of Opposition it filed in the U.S. last June, the company asserted that consumers “routinely” see the ending “-ware” and “understand the term to be associated with technology, including software and hardware.”
“Just as consumers understand that spyware describes software combined with spying, they will also understand that ‘footware’ describes software combined with foot products, including footwear,” Puma wrote.
Nike has routinely countered these arguments. In the U.K., where the litigation is significantly further along, it pointed to a number of other trademarks that likewise combine a word with the suffix “-ware”—including Puma, which filed to trademark “sportsware” in October 2019.
The Oregon company also pointed to numerous news articles covering footwear technology and the vast number of terms used to describe the subject, including “smart shoes” and “connected footwear.” “Footware,” by comparison, was not used in any of these examples.
Ultimately, the United Kingdom Intellectual Property Office (UKIPO) decided in Nike’s favor. Heather Harrison issued the decision on behalf of the UKIPO on Sept. 2.
“The difficulty I have is that I doubt that the use of ‘footware’ would be considered descriptive of such services,” Harrison wrote. “It seems to me that whilst the average consumer may ultimately deduce that ‘footware’ means software or hardware (or related services) for footwear, specifically footwear with embedded technology, it is not a meaning which is immediately apparent or easily recognisable without some stretch of the imagination.”
Puma has appealed Harrison’s ruling. The case is now before the High Court of Justice in London.
Nike has explored the intersection between footwear and technology for years. Its now-discontinued connected Nike+ basketball and training shoes, for example, launched back in 2012. Lately, however, its in-footwear technology has focused more on self-lacing innovations, as in the Adapt BB. The company has also dived into the world of non-fungible tokens, or NFTs, as they’re more commonly known. Since May 2019, it has filed several patents in the area, including those related to the event-based distribution and video game integration of “cryptographically secured digital assets.”
Puma, meanwhile, introduced its first shoe incorporating computer technology—the RS-Computer—decades ago in 1986. More recently, in January 2019, it previewed a new self-lacing technology it dubbed Fit Intelligence.
Other footwear companies are also pursuing similar avenues. Last fall, as Under Armour revealed plans to sell other elements of its digital business, the Baltimore company reaffirmed that its connected footwear products remained a “crucial element” of its overarching digital strategy. Numerous brands have also explored virtual sneakers, from digitally native startups that have made millions on NFTs to luxury labels like Gucci.