February 19, 2014
The Beaverton, Oregon based sports gear maker Nike filed a lawsuit against MMA sportswear brand Venum last month alleging trademark infringement and other violations of trademark law. The lawsuit filed in the U.S. District Court of Oregon claims that Venum’s mark infringes a previously filed Nike-owned trademark, Venom.
Nike sued DBV Distribution, Inc. and Dragon Bleu, Sarl (“Dragon Bleu”), the owner of Venum, in early January stemming from the MMA brand’s use of the “Venum” trademark. The Complaint claims that Nike has owned the “Venom” trademark since 2002. The mark, according to the Beaverton, Oregon company, has been used in connection with athletic apparel and equipment since at least 2002. It has depictions of the purported infringement included in the Complaint including a bat, bat bag and apparel which is associated with Kobe Bryant shirts, shorts and warm-ups. It also includes “Venom” women’s sportswear.
Nike claims that the “unlawful activity” stemmed from Venum selling athletic apparel and equipment on its Venum web site and also http://www.dragonbleu.fr. Nike alleges that Venum “intentionally attempt to draw associations.” One of its arguments is that Venum offered Nike boxing shoes on its Dragon Bleu web site.
The lawsuit filed in Oregon District Court also brings up that the U.S. Trademark Office initially refused registration of the “Venum” mark due to the “Venom” trademark. Dragon Bleu argued that there is no “likelihood of confusion.” At the time, the “Venom” mark was in connection with “ski and snowboard gear” whereas “Venum” related to MMA sportswear thus the assertion was there could be no confusion. To buttress its argument, it cited that other “Venom” marks were allowed which related to sporting goods but were readily distinguishable due to the fact that they were associated with different sports. The Trademark Office agreed and granted it the “Venum” mark.
The legal quarrels may have begun due to Dragon Bleu suing Nike in France in November 2013 seeking a preliminary injunction for an alleged infringement by the swoosh for a soccer boot it called, “Hypervenom.” This was brought up by Nike in its Complaint against Dragon Bleu. Nike claimed that in that lawsuit, Venum argued that the Venum mark and the “Hypervenom” mark were “practically identical and that consumers are likely to be confused by Nike’s use of Hypervenom.’” Nike asserts that its Hypervenum trademark and Venum trademark can “co-exist in Europe without any likelihood of confusion.”
Nike argues that Venum cannot have it both ways in opposing Nike’s Hypervenom soccer boot infringes its brand but then “argue their use of VENUM on apparel and equipment for mixed martial arts and related sports in the United States does not infringe Nike’s VENOM marks in the United States.”
Nike is requesting that the Court ordering the Cancellation of the Venum trademark and destruction of all infringing products.
Venum’s counsel filed its Answer to Nike’s Complaint on February 10, 2013. Notably, Venum admits that it sold authentic Nike products on its Dragon Bleu web site. Aside from this admission, the answer was standard.
As a sidenote, Venum’s counsel previously served as in-house at Adidas. No correlation or insinuation here, just an interesting tidbit.
(H/t: MMA Mania)
While it may be a viable assertion to believe that Nike’s lawsuit is a way to get Venum out of the UFC marketplace just in time for UFC uniforms, I would contend that this is not the reason.
As explained here, it’s likely that Nike would like to market its “Hypervenom” brand of soccer boot. With the World Cup happening this June, it would behoove Nike to market these shoes before, during and immediately after the event in Brazil. If it could broker a settlement with Venum for use of the “Hypervenom” mark in Europe, it’s likely that this lawsuit goes away.
The one big issue question that I had was why did Dragon Bleu sell Nike gear on its web site? If we assume it received this from a Nike supplier one would think Nike would eventually find this out. Knowing that Nike had a filed for the “Venom” mark prior to its filing, and had to respond to an office action regarding the “Venum” mark it should have been put on notice of possible issues. Of course, filing a lawsuit against Nike last November may have drawn Nike’s ire as well.
We shall see whether this lawsuit goes away as quickly as it came. MMA Payout will keep you posted.