If the shoe doesn’t fit … Supreme Court steps into trademark validity case

Description

Abstract: Trademark holders who file an infringement suit risk running into an unwelcome consequence: a counterclaim that the trademark in question is invalid. Athletic shoe giant Nike met this risk by issuing a “Covenant Not to Sue” a rival seller, and then moved to dismiss its own claims with prejudice and its rival’s counterclaim as moot. This article discusses the Supreme Court conclusion, which found the case moot, but cautioned that granting covenants not to sue might prove a risky long-term strategy for a trademark holder. Already, LLC v. Nike, Inc., No. 11-982, Jan. 9, 2013 (U.S. Supreme Court)