Nike’s trademark lawsuit against Customs By Ilene, Inc., dba Drip Creationz isn’t the only customization-centric lawsuit it filed this week. Also on Monday, Nike named Jeffrey Waskowiak and KickRich LLC in a similar – but unrelated – lawsuit, charging them with counterfeiting and trademark dilution in connection with their alleged practice of “reselling Nike and Converse products that have been materially altered from so that brands have never approved or authorized ”, and thus depriving Nike and Converse, owned by Nike, of their ability to“ carefully manage the brands with which to collaborate and to carefully select where, when and at what frequently their brands are used to guide public perception for their iconic brands.
According to the lawsuit they filed in federal court in Oregon on Monday, Nike and Converse claim that Jeffrey Waskowiak – a former Nike employee – and his company KickRich LLC (the “defendants”) are on the verge of manufacturing “made-to-measure” shoes. products which “combine allegedly genuine Nike shoe soles with uppers entirely manufactured by the defendants”, and which include “reproductions of Nike’s famous Swoosh design and other protected commercial clothing” and then sell them for “hundreds or up to several thousand dollars each. ”
Nike and Converse allege that the defendants acquire genuine Nike and Converse shoes, such as the Air Jordan 1 and Air Force 1, as well as the Chuck Taylor All Star from Converse, then, “without [their] authorization, modify them in such a way that [the shoes] are new unauthorized products ”over which Nike and Converse“ have no control ”even though their trademarks“ remain intact ”on“ personalized ”footwear. Although these allegedly “personalized” shoes “may use parts from genuine Nike and Converse shoes”, the plaintiff argues that the genuine parts are “so modified and combined with non-genuine parts or logos of other brands that they are can no longer be considered in a meaningful way. Nike or Converse shoes.
In addition to turning the initially genuine shoes into significantly different products that still carry the Nike and Converse brands, thereby presumably suppressing their ability to successfully invoke the first-sale doctrine as a defense, the plaintiff shoe companies claim that the defendants are doing worse business by offering “personalized” shoes that “mistakenly associate Nike with other brands”. For example, Nike points to the shoes that the defendants promote as “Custom Prime Nike Air Jordan 1”, which it claims “mistakenly associates Nike with Amazon” by mixing an authentic Nike Air Jordan 1 shoe, adding a “Custom leather lined tongue.” made from Amazon Prime bubble wrap “and new metal grommets, then” by applying the Amazon Prime branding in several places on the top right next to the Nike Swoosh design “.
In a fun way, Nike also highlights the combination of the accused Nike sneakers and the US Post Office brand, something Nike itself did this spring, apparently in an unauthorized capacity at first. The Nike sneakers prompted the USPS to issue a statement distancing itself from the “unfortunate situation” in which Nike, “which aggressively protects its own intellectual property, has chosen to leverage another brand for its own benefit.” Despite a first clash, the parties have since announced an official collaboration.
Not finished, Nike and Converse claim that “the counterfeiting and dilution of Waskowiak and KickRich does not end there”, as they “also” manufacture and sell laser cut and digital download “shoe models” that allow customers to others to manufacture counterfeits for several of Nike’s iconic and commercial brands. – Coat protected shoe styles, including the Air Force 1, Dunk and Air Jordan 1. “Nike and Converse allege that the defendants” claim that these models include “all the shapes necessary for each upper, lining, overlays, foams and heel counter” “,” or in other words, “the clients of the defendants buy these models to make their own fake Nike uppers bearing the famous Swoosh design and other protected commercial clothing.
And finally, not to be overlooked, Nike and Converse claim that the defendants have confused the market, among other things, “by advertising their counterfeit products.” [by] including “classic” or “vintage” applicants ‘logos and slogans, ”as well as“ references to Waskowiak’s previous employment, which suggests applicants’ authorization ”. Here Nike and Converse refer to Waskowiak’s nearly 5-year role as a shoe developer for Nike from 2014 to 2019.
As to the alleged damage to Nike and Converse as a result of these “illegal customizations”, the shoe makers claim that the defendants’ products “dilute [their] trademark rights and they confuse, and are likely to confuse, consumers as to the source, origin, affiliation and / or sponsorship of products. Consumers likely to be confused in an initial sales capacity, according to Nike and Converse. Beyond that, however, they interestingly assert that the allegedly counterfeit products “will continue to confuse the marketplace, including, but not limited to, confusion after the sale and confusion in secondary markets. sneakers “ie on the robust resale market. for shoes.
And reflecting some of the language of the Drip Creationz complaint, Nike and Converse here claim that the defendants’ unauthorized “personalizations” interfere with their “prerogative to choose who. [they] collaborates with, what colors [they] press releases, and what message [their] designs convey ”considerations that they claim to be an integral part of [their] branding and quality control on [their] designs. Likewise, Nike and Converse claim that such unauthorized customizations limit their ability to control “their brands, their company’s reputation and the associated goodwill, which they have spent decades building.”
As in the Drip Creationz case, Nike and Converse have presented allegations of trademark infringement, trademark dilution, false designation of origin and unfair competition, and seek damages in an amount to be determined at the lawsuit, as well as an injunction to prohibit the defendants from further infringing their trademarks and / or damaging their company’s reputation, among others.
The case is Nike, Inc. and Converse, Inc. v. Waskowiak and KickRich LLC, 3: 21-cv-01068 (D.Or.)