IP Law Daily, PATENT—W.D. Wash.: PUMA's patent claims against Brooks proceed; trademark claims require trademark owner's joinder, (May 15, 2024)

By Saurabh Kashyap B.A., LL.B., LL.M.

Court found substantial similarities between PUMA’s patent and the alleged infringing sneaker but pointed out PUMA's lack of standing as nonexclusive licensee on its trademark claims.

The federal district court in Seattle, Washington, partially granted and partially denied Brooks Sports, Inc.'s motion for judgment on the pleadings in a patent and trademark infringement lawsuit filed by PUMA SE and PUMA North America Inc. (PUMA). The court ruled that PUMA’s design patent infringement claim could proceed due to the apparent substantial similarity between Brooks' Aurora BL running shoe and PUMA's D897,075 patent. The court also mandated the joinder of Lloyd IP, the purported owner of the NITRO trademark, as a necessary party in the trademark claim because PUMA, as a nonexclusive licensee, lacked standing to enforce the NITRO trademark without including Lloyd. Additionally, the court denied PUMA's alternative motion for leave to file an amended complaint, finding the existing claims sufficient to proceed with the litigation (Puma SE v. Brooks Sports, Inc. , No. 2:23-CV-00116-LK (W.D. Wash. May 14, 2024)).

Background. The plaintiff, PUMA, is a major player in the global sportswear market, known for its innovative athletic apparel and footwear. Brooks, the defendant, is another leading company in the athletic footwear and apparel industry, renowned for its high-performance running shoes and technologies.

U.S. Patent No. D897,075 (the ’075 patent), issued in September 2020, is owned by PUMA and protects the ornamental design of a shoe characterized by distinct bulbous regions extending beyond the shoe's periphery. PUMA’s NITRO trademark is used in connection with various types of footwear, including running, training, basketball, soccer, golf, and motorsport shoes.

A PUMA employee noticed Brooks' advertisements allegedly using the NITRO mark at a trade show in Texas in November 2021. Despite attempts to resolve the issue amicably, PUMA filed a lawsuit in the Southern District of Indiana, asserting claims of trademark and design patent infringement and unfair competition. The case was later transferred to the Western District of Washington. Brooks subsequently filed a motion for judgment on the pleadings, challenging the similarity of the shoe designs and PUMA's standing on the trademark claim.

The ’075 patent. Citing Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294 (Fed. Cir. 2010), the court highlighted that design patent infringement is determined by the "ordinary observer" test, which assesses whether the accused design is substantially similar to the patented design in the eyes of an ordinary observer. Furthermore, the court referenced Lights Out Prods., LLC v. Triller, Inc., No. 2:22-CV-00416-MCS-MAA, 2022 WL 2159278, to emphasize that detailed factual comparisons between the accused design, the patented design, and prior art are typically inappropriate at the pleading stage.

PUMA argued that the overall appearance of the Aurora BL shoe is substantially similar to the design claimed in the ’075 patent, thereby misleading an ordinary observer into believing the designs are the same. Brooks countered by highlighting several differences between the Aurora BL shoe and the patented design, such as the number and shape of bulbous protrusions, the seam design, and the overall midsole structure. Brooks asserted that these differences rendered the designs dissimilar, negating any infringement claim. The court, however, found that despite the differences pointed out by Brooks, the overall visual similarity between the two designs was sufficient to make the infringement claim plausible at the pleading stage.

The NITRO mark. Regarding the NITRO trademark, Brooks argued that PUMA, as a nonexclusive licensee, lacked standing to enforce the trademark without joining Lloyd IP, the purported owner of the mark. Referencing Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213 (9th Cir. 2008), the court emphasized that only the owner of a trademark, or an exclusive licensee, has the standing to sue for infringement.

The court further noted that failing to include Lloyd IP, the owner of the NITRO mark, could risk double or inconsistent obligations for Brooks. Consequently, the court ordered the joinder of Lloyd IP as a necessary party under Rule 19 of the Federal Rules of Civil Procedure. The court also highlighted that the license agreement between PUMA and Lloyd IP contained a foreign choice-of-law provision, which could further complicate the matter if not appropriately addressed.

Conclusion. Finally, the court denied Brooks' motion to dismiss PUMA's design patent infringement claim, finding that the claim was plausible enough to proceed. However, it granted Brooks' request to join Lloyd IP as a necessary party, given the potential impact on trademark rights and the risk of inconsistent obligations. The court also vacated the current scheduling order, instructing the parties to propose a modified schedule, considering the need to include Lloyd IP in the proceedings.

The Case is No. 2:23-CV-00116-LK.

Judge: King, L.

Attorneys: Johanna M. Wilbert (Quarles & Brady LLP) for Puma SE. Aron Fischer (Patterson Belknap Webb & Tyler LLP) for Brooks Sports Inc.

Companies: Puma SE; Brooks Sports Inc.

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