- within Intellectual Property topic(s)
- in United States
- within Employment and HR topic(s)
An attempt by Nike to revive its legendary Total 90 soccer line has led to conflict in the United States. The sports giant had lapsed its trademark registration for Total 90 in 2019 and did not realise that the name had been taken by another brand. As a result, the relaunch was threatened with legal action, as Annette Lindeman explains.
Retro and vintage brands have become extremely popular, so the decision by global sports footwear and apparel giant Nike to reintroduce its nostalgic Total 90 brand in the lead-up to the 2026 World Cup makes perfect sense. However, the company did not consider its trademark rights first.
The dangers of lapsing a trademark registration
When Nike allowed its trademark registration for Total 90 to lapse in 2019, Hugh Bartlett, an engineer and youth soccer coach, saw his opportunity and registered TOTAL90 in 2022. His company, Total90 LLC, developed a soccer app and began selling apparel and shoes.
Failed negotiations lead to court
In 2024, Total90 LLC contacted Nike about a potential collaboration. When negotiations failed, Total90 LLC sued for infringement. The company accused Nike of infringing the TOTAL90 trademark and requested a temporary injunction on the use of the trademark and the sale of products bearing the trademark.
The first round was successful for Nike, meaning it did not have to discontinue using the Total 90 brand name. According to the court, there was insufficient evidence of a threat of irreparable harm or a concrete chance of victory in the case, which would justify a temporary injunction. Therefore, for the time being, the sports giant can continue the relaunch of Total 90.
However, this doesn't mean the dispute is over.
1-0 for Nike, but the fight isn't over yet
In the US, common law rights – whereby trademark rights arise through actual use – can also play a significant role. This allows Nike to argue that, despite the registration having expired, it has not waived the underlying rights. However, it will have to prove that its rights to Total 90 have been maintained through use.
Nike strikes back
In addition, Nike has filed a counterclaim requesting the cancellation of the registrations for TOTAL90 by Total90 LLC. Nike is requesting and accusing Total90 LLC of acting in bad faith. If this counterclaim is successful, it could potentially remove the basis for Total90 LLC's infringement case and thus strengthen Nike's position.
Lessons for trademark owners
The Nike case provides a stark reminder to trademark owners to think carefully before allowing a trademark registration to lapse. Even dormant trademarks can become relevant again, given the retro craze. Especially in sectors where brands and nostalgia have commercial value, such as sports and fashion, the minimal investment for renewal is more than worth it to avoid conflict later down the line.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
