Nike Wins First Battle in ‘Total90’ Trademark Litigation

Nike doesn’t own the trademark for “Total90,” which is the name of a line of its soccer shoes, but a federal judge has denied a motion by the mark’s owner—Louisiana-based soccer and apparel company Total90 LLC—to temporarily restrain Nike from selling its Total 90 line.

In a ruling last week, U.S. District Judge Wendy B. Vitter found that Total90 hadn’t provided evidence that it uses “the same or similar retail outlets” as Nike to sell products, or that Nike “intended to saturate the market to overwhelm [Total90’s] identity.”

More from Sportico.com

• Mac Jones Defeats Copyright Claim Over WIN Passage Tweet

• Genius Sports to Bring Semi-Auto Offside Tech to Brazil

• Former D-I Runner Alleges Nike Alphafly 2 Causes Foot Fractures

Another failing in Total90’s motion, Vitter reasoned, was a lack of evidence “of any actual confusion” that consumers believe Total90’s products are related to Nike.

Total90, according to its complaint, developed a fantasy soccer app in 2019 and started selling apparel and footwear in 2022. Total90 sponsors several soccer teams, including one in Rio de Janeiro, and its products have been featured in various media. Total90 has also secured registrations through the U.S. Patent and Trademark Office trademark for Total90, which cover footwear, shoes, soccer bibs, fantasy soccer applications and other goods and services.

In general, trademark registration carries a presumption of ownership and the exclusive right to use a mark.

Nike, meanwhile, has sold variations of the Total 90 line for more than 25 years; it describes the line as “the go-to football shoe for an entire generation of young players.” Nike previously held a registered trademark for “Total 90,” but the registration expired in 2019. Total90 says Nike abandoned the mark in 2019, while Nike argues it permitted the mark to lapse since doing so had “no bearing” on its priority of use and other types of trademark protection.

Nike depicts Total90 as an extortionist. Nike stresses its Total 90 products have been available for years and that in December 2024, Total90 “tried to entice Nike into a collaboration.” When the collaboration didn’t happen, Nike claims Total90 gave an ultimatum: Buy its trademark registration for $2.5 million, or face a motion for a temporary restraining order.

Total90, whose website sells soccer shoes and other soccer goods, argues Nike has infringed on Total90’s trademarks. Total90 says it has “gained a reputation as being a source of high-quality clothing and software” in part through its “distinctive Total90 word mark and logo.”

As Total90 tells it, Nike’s use of “Total 90” is “confusingly similar” to Total90. Unless Nike is stopped, Total90 asserts, Nike’s use “will continue to cause consumer confusion,” with consumers mistakenly believing that Total90 is “affiliated or authorized by Nike.” Total90 contends that “confusion” would “erode” Total90’s “distinct identity and goodwill.”

Vitter found Nike’s arguments more persuasive. She stressed that in the U.S., trademark law focuses on useof a mark rather than registration. Vitter reasoned that Total90 failed to establish it is the senior user, meaning the first user of the mark, since Nike has sold Total 90 shoes for many years. She wrote that Nike did not appear to abandon the mark since it “continued to use the mark even after registration lapsed” in 2019.

Vitter also was unpersuaded that consumers are confused by the similarity of “Total90” and “Total 90”—marks that Total90 maintains are identical in sound, appearance and meaning. She pointed out that Total90 “has not provided evidence of any actual confusion,” and that Total90 and Nike appear to use different retail outlets to sell goods. In addition, the judge questioned why Total90 “waited nearly 11 months to seek emergency temporary injunctive relief” and noted that Total90 sought “monetary payment to give up its registration of the mark.”

The case will continue, as denial of a temporary restraining order is an early development in litigation, though Nike has won the first round.

Best of Sportico.com

• College Athletes as Employees: Answering 25 Key Questions

Sign up for Sportico's Newsletter. For the latest news, follow us on Facebook, Twitter, and Instagram.