Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1062684

Filing date: 06/17/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Notice of Opposition

Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information

Name PUMA SE

Granted to Dateof previous ex-tension

07/19/2020

Address PUMA WAY 191074 HERZOGENAURACH, 0GERMANY

Attorney informa-tion

ANNE E. NAFFZIGERLEYDIG, VOIT & MAYER, LTD.1981 N. BROADWAY, SUITE 375WALNUT CREEK, CA 94596UNITED STATESanaffziger@leydig.com, kmigliorini@leydig.com925-482-0103

Applicant Information

Application No 88350648 Publication date 01/21/2020

Opposition FilingDate

06/17/2020 Opposition Peri-od Ends

07/19/2020

Applicant Nike, Inc.One Bowerman DriveBeaverton, OR 97005UNITED STATES

Goods/Services Affected by Opposition

Class 009. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Computer hardware modules for receiving,processing, and transmitting data in Internet of things electronic devices; electronic devices anddownloadable computer software that allow users to remotelyinteract with other smart devices formonitoring and controlling automated systems; downloadable computer software and firmware usedto allow electronic devices to share data and communicate with each other; downloadable softwaredrivers for electronic devices that allow computer hardware and electronic devices to communicatewith each other; downloadable computer software for network and device security, namely, softwarethat ensures secure receipt, processing, transmissionand storage of data in the internet of things;downloadable computer software for use and interoperability of application program interfaces thatare used by electronic devices, systems, and interchanges that exchange data via communicationsnetworks and the internet and that connect with private and public computer networks for data stor-age and exchange services

Class 038. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Telecommunications services, namely,

transmission of data by means of telecommunications networks, wireless communications networksand the Internet

Class 042. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Application service provider featuring ap-plication programming interface (API) software for integration of third-party applications to allow an in-teractive user experience; Cloud computing featuring software for connecting, operating and man-aging networked devices via wireless or wired networks; cloud computing featuring software for con-necting, operating and managing networked devices in the internet of things; cloud computing featur-ing software for use in the collection, management, monitoring, storage and analysis of data; cloudcomputing featuring software for managing machine-to-machine applications and machine-to-machine networks; providing temporary use of non-downloadable cloud-based software for con-necting, operating, and managing networkedpayment terminals, entertainment devices, smartphones,lighting systems, HVAC systems, in the internet of things (IoT)

Grounds for Opposition

The mark is merely descriptive Trademark Act Section 2(e)(1)

Attachments Notice of Opposition.pdf(666116 bytes )Opposition - Exhibit A.pdf(2943543 bytes )Opposition - Exhibit B.pdf(2062834 bytes )Opposition - Exhibit C.pdf(123067 bytes )Opposition - Exhibit D.pdf(114691 bytes )

Signature /Anne E. Naffziger/

Name ANNE E. NAFFZIGER

Date 06/17/2020

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

TRADEMARK TRIAL AND APPEAL BOARD

In re Opposition of:

PUMA SE

Opposer,

v.

NIKE, INC.

Applicant.

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Opposition No. _____________

Serial No. 88/350,648

NOTICE OF OPPOSITION

Opposer, PUMA SE, a Societas Europae existing under the Laws of the European Union

respectively under the Laws of Germany, located and doing business at PUMA Way 1, 91074

Herzogenaurach, Germany (hereinafter “Opposer” or “PUMA”), brings this Opposition against

Application Serial No. 88/350,648 for the mark FOOTWARE covering goods and services in

International Classes 9, 38, and 42 (hereinafter “Applicant’s Mark” or Applicant’s Mark

FOOTWARE), filed by Nike, Inc. (hereinafter “Applicant” or “Nike”), an Oregon corporation

located at One Bowerman Drive, Beaverton, Oregon 97005. Opposer believes it will be damaged

by registration of Applicant’s Mark and hereby timely opposes same.

As grounds for the opposition, Opposer alleges as follows.

A. PUMA’S MANUFACTURING AND SALE OF FOOTWEAR AND

FOOTWEAR INCORPORATING SOFTWARE TECHNOLOGY

1. Opposer is a well-known manufacturer and seller of a variety of products,

including footwear, clothing, apparel, athletic clothing, headwear, and related goods, as well as

sporting equipment, sports bags and related goods.

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2. Opposer owns 145 live U.S. Trademark registrations, applications and

International Registration designations in the U.S. for marks covering a variety of goods,

including “footwear”.

3. Opposer has continuously offered and advertised its products, including footwear

and related goods, in the United States for over 60 years.

4. Opposer’s footwear is an integral part of its business and Opposer is known in the

United States and across the world as a leading developer of footwear products, including leisure

and lifestyle, training and gym, running, basketball, motorsport, golf, soccer, and children’s

shoes, as well as slides and sandals, seen at https://us.puma.com/en/us/men/shoes,

https://us.puma.com/en/us/women/shoes, https://us.puma.com/en/us/kids/boys/shoes and

https://us.puma.com/en/us/kids/girls/shoes, and with examples as follows.

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5. Opposer first manufactured and sold footwear incorporating computer technology

at least as early as 1986.

6. Since that time, Opposer has continued testing, development, manufacturing and sale of

footwear products incorporating software and hardware technology, including its self-lacing shoe as seen

at https://about.puma.com/en/innovation/fit-intelligence, below and in Exhibit A hereto, that

combines PUMA’s footwear with software technology to provide consumers with technology driven self-

lacing capabilities for an optimal fit through software embedded in the shoe and controlled directly on the

shoe or through a connected mobile application that allows for transmission of data.

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7. Opposer’s product seen in Exhibit A hereto combines Opposer’s physical footwear

products with its software technology to create smart technology footwear products.

8. Opposer advertises its footwear products, including its footwear and related

computer hardware and software, using the term “footwear.”

B. THIRD PARTY MANUFACTURING AND SALE OF FOOTWEAR

INCORPORATING SOFTWARE TECHNOLOGY

9. Many third parties are developing, have sold or are selling footwear products

incorporating and pairing with software technology, including the third parties identified in

Paragraphs 10 – 16 herein.

10. Under Armour sells the UA HOVR running shoe that incorporates software that

allows users to connect the UA HOVR running shoe to Under Armour’s MapMyRun mobile

application, seen at https://www.underarmour.com/en-us/technology/ua-connected-shoes-set-up

and as follows.

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11. Altra sold the Turin IQ smart shoe, incorporating the TORIN running shoe

with IQ technology to provide the wearer with live feedback on foot strike, cadence, impact rate

and contact, seen at https://www.amazon.com/ALTRA-Mens-Torin-Road-

Running/dp/B01ICAQW8S and as follows:

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12. Sensoria sells a wearable system compromising microelectronics, software and a

sensor infused smart sock that allows users to connect to a mobile app to measure how far and

fast they have run and compare metrics among over 8,000 models of running shoes, seen at

https://www.sensoriafitness.com/footwear and as follows.

13. RunScribe sells wearable pods to attach to footwear that connects to an online app

and computer dashboard to record every step of the users hike, run or walk, seen at

https://runscribe.com/ and as follows.

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14. Digitsole sells a footwear insole that uses wireless Bluetooth technology to sync

with a user’s smartphone to provide running data, seen at https://www.amazon.com/Digitsole-

INTS001BL4547-Profiler-Smart-

Insole/dp/B01MRGZ7GY/ref=as_li_ss_tl?dchild=1&keywords=digisole&qid=1589520206&sr=

8-1&linkCode=sl1&tag=nanalyze-

20&linkId=680548ec58319bd4dfd8a49b7b5751a0&language=en_US and as follows.

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15. Salted Ltd. sells footwear with software connecting to a mobile app that provides

real time analysis and feedback on a user’s golf swing, seen at http://iofitshoes.com/ and as

follows.

16. Samsung has filed patents relating to footwear and software combined technology

discussed at https://www.forbes.com/sites/simonogus/2019/01/04/samsung-taking-steps-towards-

launching-its-own-smart-shoe/#209ef3614a6c and as follows.

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C. APPLICANT’S MANUFACTURING AND SALE OF FOOTWEAR AND

FOOTWEAR INCORPORATING SOFTWARE TECHNOLOGY

17. Applicant is a well-known manufacturer and seller of a variety of products,

including footwear, clothing, apparel, athletic clothing, headwear, and related goods, as well as

sporting equipment, sports bags and related goods.

18. On information and belief, Applicant owns 135 live U.S. Trademark registrations

and applications for marks covering goods including “footwear”.

19. Applicant’s footwear is an integral part of its business and Applicant is known in

the United States and across the world in connection with its footwear products.

20. Applicant developed and sells footwear with software technology, in connection

with its self-lacing shoe seen at https://www.nike.com/adapt, in Exhibit B and as follows.

Applicant’s ADAPT footwear product includes software technology to provide consumers with

technology driven self-lacing capabilities through software embedded in the shoe and controlled directly

through a connected mobile or smart watch application that allows for transmission of data.

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21. Applicant’s product seen in Exhibit B hereto combines Opposer’s physical

footwear products with its software technology to create smart technology footwear products.

22. On March 21, 2019, Applicant applied for the mark FOOTWARE under Section

1(b) of the Trademark Act, 15 U.S.C. §1051(b), accorded Application No. 88/350,648 for goods

and services in Classes 9, 38, and 42 as follows:

Class 9 - Computer hardware modules for receiving, processing, and transmitting data in

Internet of things electronic devices; electronic devices and downloadable computer

software that allow users to remotely interact with other smart devices for monitoring and

controlling automated systems; downloadable computer software and firmware used to

allow electronic devices to share data and communicate with each other; downloadable

software drivers for electronic devices that allow computer hardware and electronic

devices to communicate with each other; downloadable computer software for network

and device security, namely, software that ensures secure receipt, processing,

transmission and storage of data in the internet of things; downloadable computer

software for use and interoperability of application program interfaces that are used by

electronic devices, systems, and interchanges that exchange data via communications

networks and the internet and that connect with private and public computer networks for

data storage and exchange services;

Class 38 - Telecommunications services, namely, transmission of data by means of

telecommunications networks, wireless communications networks and the Internet; and

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Class 42 - Application service provider featuring application programming interface

(API) software for integration of third-party applications to allow an interactive user

experience; Cloud computing featuring software for connecting, operating and managing

networked devices via wireless or wired networks; cloud computing featuring software

for connecting, operating and managing networked devices in the internet of things;

cloud computing featuring software for use in the collection, management, monitoring,

storage and analysis of data; cloud computing featuring software for managing machine-

to-machine applications and machine-to-machine networks; providing temporary use of

non-downloadable cloud-based software for connecting, operating, and managing

networked payment terminals, entertainment devices, smartphones, lighting systems,

HVAC systems, in the internet of things (IoT)

23. On information and belief, Applicant does not have a bona fide intent to use the

mark in connection with some or all of the goods and services in identified in the opposed

application, as many of the goods and services identified do not represent goods and services

sold by Applicant in its regular course of business.

24. Applicant’s Mark FOOTWARE is phonetically equivalent to and a misspelling of

the word “footwear”, a generic term for products sold in commerce, namely, footwear.

25. On information and belief, the goods and services covered by Applicant’s Mark

are intended for use in connection with pairing and compatibility with technology, including

software and hardware, with Applicant’s various products, including footwear.

26. On information and belief, Applicant’s computer hardware and software

identified in the opposed application will allow Applicant’s products, including its footwear, to

transmit data for use in connection with Applicant’s related technologies.

27. On information and belief, Nike has not commenced use of Applicant’s Mark in

commerce. To the extent Nike has commenced use of Applicant’s Mark, such use is recent and

minimal in length such that it could not support a claim of acquired distinctiveness in the

opposed mark.

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28. Applicant’s Mark FOOTWARE describes ingredients, characteristics, functions,

features, purposes and uses of Applicant’s intended goods and services.

29. Applicant’s Mark FOOTWARE, when applied to Applicant’s goods and services,

is mereley descriptive pursuant to Section 2(e) of the Trademark Act, 15 U.S.C. §1052(e).

30. Opposer, Applicant and numerous third parties sell products combining footwear,

hardware and/or software technologies.

31. Consumers are accustomed to seeing and purchasing products that combine

products and technology, including products pairing software and/or hardware technologies with

footwear.

32. Consumers understand that the term "FOOT" is associated with feet and products

worn on feet, including footwear.

33. Consumers routinely see the common end-syllable “WARE” and understand the

term to be associated with technology, including software and hardware.

34. The definition of the term “WARE” includes “a specified kind or class of

merchandise or of manufactured article (usually used in combination): silverware; glassware. See

also -ware, defined as “a combining form extracted from software, occurring as the final element

in words that refer to a specified kind or class of software: spyware; shareware.” (See

screenshots from www.dictionary.com attached hereto as Exhibits C and D).

35. Just as consumers understand that spyware describes software combined with

spying, they will also understand that “footware” describes software combined with foot

products, including footwear.

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36. Opposer, Applicant and third party products referred to herein are a kind or class

of software, namely a foot product, or shoe with software, thus making the term “footware”

immediately descriptive to identify the goods at issue.

37. Consumers seeing Applicant’s Mark FOOTWARE will understand that the Mark

is associated with a product combining a footwear product and technology such as software

and/or hardware, as presently seen in the marketplace in connection with Opposer’s product,

third party products and Applicant’s own ADAPT footwear product referred to herein.

38. Opposer and Applicant are competitors in connection with the sale of its products,

including footwear.

39. If Applicant were granted a registration for the mark FOOTWARE, it would

receive exclusive rights over a term that is descriptive and prevent competitors, including

Opposer, from using such a descriptive term in the marketplace.

40. Opposer would be damaged by registration of Applicant’s Mark FOOTWARE, as

registration would impair Opposer’s right to use a descriptive term understood by consumers to

identify footwear products paired with technology, including software and hardware.

41. When applied to Applicant’s goods and services, Applicant’s Mark is merely

descriptive in violation of Section 2(e) of the Trademark Act, 15 U.S.C. §1052(e).

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WHEREFORE, by its undersigned attorneys, Opposer respectfully requests that this

Notice of Opposition be sustained and that registration of Application Serial No. 88/350,648 be

refused.

Respectfully submitted,

Date: June 17, 2020 By:____________________________

Anne E. Naffziger

Michelle L. Zimmermann

Kyle A. Migliorini

LEYDIG, VOIT & MAYER LTD.

1981 N. Broadway, Suite 375

Walnut Creek, CA 94596

(925) 482-0103

Attorneys for Opposer

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CERTIFICATE OF ELECTRONIC FILING

I hereby certify that this NOTICE OF OPPOSITION AND EXHIBITS A – D THERETO

was filed electronically with the Trademark Trial and Appeal Board on June 17, 2020.

______________________________

Anne E. Naffziger