IP Law Daily, TRADEMARK—E.D. La.: Plaintiff fails to show likelihood of success in establishing Nike abandoned TOTAL 90 mark for soccer gear even though federal trademark registration lapsed, (Jun 23, 2026)

By Robert Margolis, J.D.

Trademark rights are based on use, not registration, and Nike provided evidence it used the mark during the period after its registration lapsed, such that plaintiff could not establish itself as senior user for purposes of its infringement claim.

Plaintiff Total90, LLC, could not establish a likelihood of success on the merits of showing itself to be the senior user of the mark TOTAL90 as necessary to support its infringement claims even though it received registration of the mark for soccer gear more then five years after Nike, Inc. let its registration for the trademark TOTAL 90, also for soccer products, lapse, the federal district court in New Orleans has held. The court cited evidence that Nike continued using its TOTAL 90 mark between 2019 and 2024 in more than a de minimis fashion, such that it could not be deemed to have abandoned the mark. The court thus denied Total 90’s motion for a preliminary injunction against Nike’s continued use of its mark, which Total90 claims infringes its mark. Though the failure to show seniority was alone fatal to the motion, the court nonetheless also addressed the likelihood-of-confusion factors and found Total90 was not likely to succeed in establishing this element of its infringement claim (Total90, LLC v. Nike, Inc., No. 2:25-cv-02325-WBV-EJD (E.D. La. Jun. 22, 2026)).

In 2000, Nike introduced its “Total 90” brand, consisting of soccer products, such as cleats and jerseys. It registered the TOTAL 90 trademark and sold products under that mark throughout the 2000s. However, Nike allowed the registration to lapse in April 2019.

Total90 introduced its own line of soccer gear and filed a trademark application for TOTAL90 in February 2022. The registration was issued in September 2024. Total90 then sued Nike in November 2025, alleging Nike’s continued use of the TOTAL 90 mark in connection with the sale of products infringed the TOTAL90 mark. Total90 also sought a preliminary injunction. After an evidentiary hearing, the court issued its ruling denying the motion.

No abandonment. Total90 argued that because Nike’s registration was cancelled in 2019 for nonuse, and it has not been used subsequently, Total90 is the senior user of the mark. But Nike presented unrebutted evidence that it never abandoned the mark and has continuously used it even after the registration had lapsed. At the hearing, Nike’s Senior Director of Footwear Product Management of Nike Sportswear Icons testified that Nike has never stopped using the Total 90 brand in the marketplace, citing releases of Total 90 soccer balls, cleats, and clothing after the registration had lapsed.

The court started its analysis from the premise that trademark ownership is established by use, not registration, and the first user of a mark is generally considered to be the senior user who is entitled to enforce its rights to use the mark as against junior users. Since there was no question Nike began using the mark in 2000, Total90 had to show that Nike had abandoned the mark when the registration lapsed. Abandonment is established when there is use of a mark is discontinued without the intent to resume use. Use must be “the bona fide use” of the mark in commerce, not just token efforts merely to reserve a right in the mark. The above described testimony evidenced more than uses merely to preserve the right to maintain the mark, but rather bona fide use in commerce. The court cited Fifth Circuit precedent holding even a single instance of use in commerce is sufficient to complete a claim of abandonment, Perry v. H.J. Heinz Co., 994 F.3d 466, 475 (5th Cir. 2021), and noted the evidence showed much more use than that.

Likelihood of confusion. Though Total90’s inability to show a likelihood of success establishing itself as the senior user was alone sufficient to defeat the injunction motion, the court addressed the likelihood-of-confusion factors (“digits of confusion”) and found Total90 was not likely to succeed here as well.

The court first found TOTAL 90 to be a strong mark based on its extensive use by Nike in the 2000s, including testimony from witnesses from both sides calling the mark “iconic.” Because Nike was the senior user, not Total90, this factor was deemed neutral.

The clear similarity of the TOTAL90 and TOTAL 90 marks weighed in favor of likelihood of confusion.

The product similarity factor also was deemed neutral. While both parties produce soccer equipment, Total 90 does not produce “lifestyle shoes” like Nike, and uses its mark on a fantasy soccer app, a product different than any of Nike’s.

Though the parties’ products appeal to similar customers, Total90 presented insufficient evidence to establish an identity of retail outlets with Nike. That both sides sell products over the internet is insufficient, given Nike’s substantial reach into brick and mortar retail outlets, the court held. This factor thus weighed against a likelihood of confusion.

The court deemed actual confusion one of the most important indicators of likelihood of confusion, and Total90’s Founder and CEO testified of an incident when several parents asked him if Total90 were affiliated with Nike. But that single incident was not enough for this factor to weigh in Total90’s favor, the court held. The weight of this “isolated incident” is “lessened” by the high volume of business the parties transact, the court noted.

The remaining digits were deemed either neutral or weighing against Total90, such that the totality of the digits weighed against a finding of likelihood of confusion.

No irreparable harm. Finally, the court rejected Total90’s argument it would suffer irreparable harm in the absence of an injunction, given the impending World Cup tournament. The court cited the eleven-month delay between when the alleged infringement began and when Total90 filed suit as undermining any claim of irreparable harm.

The Case is No. 2:25-cv-02325-WBV-EJD.

Judge: Vitter, W.

Attorneys: William J. Vincent (Quantum Counsel LLC) for Total90, LLC. Darleene D. Peters (Irwin Fritchie Urquhart Moore & Daniels LLC) for Nike Inc.

Companies: Total90, LLC; Nike Inc.

Cases: Trademark LouisianaNews