IP News
In the lawsuit, filed at the US District Court for the District of Oregon last month, Nike also says the two companies intend to expand their market beyond MMA gear.
In the complaint, Nike sited an attempt by Dragon Bleu to register ‘Venum’ as a trademark at the US Patent and Trademark Office (USPTO); an attempt that was initially denied.
The application, in 2008, was accepted at various trademark offices in Europe but the USPTO’s rejection stemmed from an already existing trademark application for ski and snowboard equipment under the name Venom.
The application was eventually accepted by the USPTO after Dragon Bleu said confusion was unlikely and that trademarks for different sports were allowed to “co-exist”.
However, Nike said Dragon Bleu had recently opposed its newly launched football boots, which use the trademark “Hypervenom”, claiming the name infringed the “Venum” trademark.
It also referred to a lawsuit that Dragon Bleu filed last year in France seeking a preliminary injunction banning Nike from marketing the product in France and elsewhere in Europe.
The defendants “cannot have it both ways,” said the complaint, adding that the defendants could not allow the trademarks to coexist in the US while claiming infringement in Europe.
Nike is demanding an injunction in the US prohibiting the defendants from selling, offering to sell, distributing or advertising any products that use the “Venum” trademark, as well as damages.