Bauer Bros to Nike: “Don’t tread on me!”
Bauer Bros. LLC v. Nike, Inc., 2011 U.S.Dist. LEXIS 23025 (S.D. Cal. 2011)
Bauer Bros. sued Nike for infringement based on the phrase “Don’t Tread on Me” on various clothing items. Nike counter-claimed that Bauer fraudulently obtained its registration by claiming use on a number of items it hadn’t actually sold with the mark and for claiming Bauer had exclusive right to use the mark while knowing the mark had historical significance and had been used by third-parties. Bauer sought to dismiss the fraud based counter-claims based on failure to specifically plead facts showing fraud.
Because Nike claimed it had done an investigation on the items and named several that it believed were not actually in use, the claim was plead sufficiently.
However, not so the claims about the exclusive right to use the mark. Nike said, rather generically, “Bauer was fully aware of the historical significance and origin of the phrase,” and “Bauer was fully wawre that third parties had used and were using the phrase… on apparel.” First, the Nike faile to offer any authority for the proposition that a trademark with historical signficance is not subject to registration (further more, it didn’t allege with particularity what that historical signficance was). Second, Nike failed to specifically naem any specific person or entity who previously used the prhase on apparel or that the other user had rights superio to Bauer that Bauer knew of.
