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Has Brand Jordan Stepped Out of Bounds?

Posted in Branding, Fashion, Guest Bloggers, Mixed Bag of Nuts, Trademarks, TTAB

- Draeke Weseman, Weseman Law Office, PLLC

In 1984, Nike needed an NBA superstar. Magic Johnson and Larry Bird wore Converse brand basketball shoes, as did most of the other major NBA stars. Adding to the pressure, Nike sales were in general decline as Reebok was dominating the broader fitness shoe market with its white aerobic shoes.

Under the gun, Nike decided to gamble on a rookie with the Chicago Bulls named Michael Jordan – and it WAS a gamble. Although Jordan had made the game-winning shot in the 1982 NCAA championship game, he hadn’t made it back to the NCAA Final Four. In the 1984 NBA Draft, he was notoriously drafted third, behind Hakeem “The Dream” Olajuwon (who later humbly endorsed a $34.99 shoe) and, uh, some other guy named Sam Bowie. Jordan was also a young black man, and nobody was sure that his endorsement would carry over to a white audience (for context, the Cosby show premiered on September 20, 1984). Despite these risks, but perhaps in part because of his success at the 1984 Los Angeles Olympics, a bidding war escalated between Nike, Reebok, and Adidas, resulting in a five-year $2.5 million payday, plus royalties, for Jordan (for comparison, Jordan’s rookie NBA contract was $6 million over 7 years) and a new athlete for Nike to live or die by.

The colorful, expensive, Air Jordan I debuted in 1985 and changed the way consumers looked at basketball shoes. David Stern, then NBA commissioner, immediately banned the red and black shoes for violating NBA uniform policy. Jordan played in them anyway, and Nike gladly paid the $5,000 fine per game. Meanwhile, Jordan led the Bulls in points, assists, rebounds, and steals, made the cover of Sports Illustrated, participated in the dunk contest, played in the All-Star Game, led the Bulls to the playoffs, and was awarded Rookie of the Year honors. You most likely know the rest.

Fast-forward thirty years, and the Jordan brand is as strong as ever (some might say too strong). The Jordan brand is ubiquitous in basketball: according to this Forbes article, one out of every two pairs of basketball shoes sold in 2013 were brand Jordan. Continuing to expand the brand, Jordan is now challenging the luxury shoe market to a little game of one-on-one.

Called the Jordan Shine, the newest Jordan brand sneaker takes the original 1985 Air Jordan I silhouette and dresses it up with a woven-leather upper. The shoes will be available in either monochromatic black or red and will retail for $400.

But the move might not be the slam dunk Jordan is hoping for. Standing between Jordan and the luxury-shoe basket could be U.S. Trademark Application Serial No. 77/219,184, for the mark depicted below, for “footwear:”

The mark is described as “a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods.”

The owner of the mark is Bottega Veneta, a Gucci subsidiary, and maker of high-end luxury shoes, like the following:

By applying for trademark protection for the leather weave, Bottega Veneta is making the claim that this design does more than just look nice, it tells consumers that Bottega Veneta made the shoe.

Currently, the Bottega Veneta application is facing opposition from a designer in New York who claims that the design is aesthetically functional (i.e. it just looks nice). But the likelihood of success for that claim is questionable, given the Trademark Trial and Appeal Board’s recent decision in In re Bottega Veneta International S.a.r.l., Serial No. 77219184 (September 30, 2013). Finding that the woven-leather mark is not aesthetically functional, the Board noted:

Our finding that the design is not aesthetically functional is based on a very narrow reading of the proposed mark, and the scope of protection to which it is entitled. . . .

[W]e reiterate that we are finding only that the specific design for which applicant seeks registration is not aesthetically functional. We are not finding that the protection to be accorded this mark would extend to allow applicant to prevent the use, for example, of similar designs with different size leather strips, or to goods having a plain weave set at an angle but also having noticeable plain leather portions.

 (For full coverage of the TTAB case, visit the TTABlog.)

This clarification from the TTAB might be helpful for Jordan, whose shoes seem to have a leather weave set at a different angle, with slightly more plain leather showing at the heel. But what do you think? Has Jordan stepped out of bounds with his new luxury shoe design? Or has Jordan narrowly avoided having his shot at luxury shoes blocked?

Next up: How will Jordan do if these shoes, called the Jordan Future, are matched up against a pair of Louboutins? Does the contrasting red outsole infringe Louboutin’s trademark? Or is the lack of lacquer enough?