IP Law Daily, TRADEMARK—N.D.N.Y.: Nike dodges “LEGENDS ARE FOREVER” infringement claims, (Oct 2, 2014)

By Greg Hammond, J.D.

A souvenir shop near the National Baseball Hall of Fame in Cooperstown, New York failed to prove that athletic apparel and footwear giant Nike, Inc. infringed on its trademark, “Legends Are Forever.” In granting Nike’s motion for summary judgment, the federal district court in Albany, New York determined that Nike’s use of the registered phrase in sample t-shirts, and its use of “Legends Live Forever” in a line of t-shirts, did not present a likelihood of consumer confusion (Legends Are Forever, Inc. v. Nike, Inc., September 30, 2014, Kahn, L.).

Background. Legends Are Forever, Inc. is a baseball-themed souvenir shop located in Cooperstown, New York, a tourist destination that is home to the National Baseball Hall of Fame. The store sells Major League Baseball apparel, souvenirs, and autographed baseball memorabilia. Jeff Foster, the owner of the souvenir shop, registered the “Legends Are Forever” phrase in 2009. However, in 2011, Nike aired a six-minute film with basketball player Kobe Bryant, who states—in part—“legends are forever,” and ten “salesman samples” of t-shirts containing the phrase were created, but never sold. Instead, Nike selected the phrase “legends live forever” for a t-shirt style called “Black Mamba Shirt.” The souvenir shop filed suit against Nike, alleging trademark infringement and dilution, and Nike moved for summary judgment.

No likelihood of confusion. Claims for trademark infringement are analyzed under a two-pronged test: (1) whether the mark is valid and “entitled to protection,” and (2) whether there is a likelihood of consumer confusion as to origin or sponsorship of Nike’s services. Nike argued that even if the “Legends Are Forever” mark is protectable, the shop failed to prove any likelihood of confusion.

The court held that no likelihood of confusion exists, finding that the totality of the eight Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) factors weighed heavily in favor of Nike. Specifically, the court found that: (1) at most, the shop’s asserted mark is a relatively weak suggestive mark that lacks secondary meaning; (2) the marks are only superficially similar, because the design, color, typeface, and theme of the shirts are different, and the NIKE swoosh clearly identifies Nike’s shirt with its business, not the plaintiff’s; (3) any overlap between the two companies’ client bases is marginal; (4) there is no evidence that the souvenir shop seeks to grow its business to compete for Nike’s consumer base; (5) there is no evidence of actual confusion among the shop’s customers; (6) there is no evidence that Nike intended to capitalize off of the souvenir shop’s reputation; (7) there is no evidence that the shop’s t-shirts are of higher quality than Nike’s; and (8) there is no evidence that the shop’s customers would confuse Nike’s Black Mamba shirts with the shop’s t-shirts.

The court also granted Nike summary judgment over the trademark dilution claim, finding that there is no evidence that the shop’s “Legends Are Forever” mark is famous.

The case number is 3:12-CV-1495 (LEK/DEP).

Attorneys: Timothy A. Benedict, City of Rome Corporation Counsel, for Legends Are Forever, Inc. Christian C. Casini (Osborn, Reed Law Firm) and Jennifer B. Furey (Goulston, Storrs Law Firm) for Nike, Inc.

Companies: Legends Are Forever, Inc.; Nike, Inc.

Cases: Trademark NewYorkNews