Originally, Brooks used the description “nitrogen injected” in its campaigns, but as from 2022, they promoted it as “Nitro-Infused Softness” with the slogan “Run on Nitro.” PUMA claims this is an infringement.
In the preliminary injunction, the judge dismissed this claim, stating that NITRO lacks distinctiveness and only indicates a feature of the shoe. The court followed this reasoning. As a trademark holder, you cannot prohibit others from using the sign if merely describes a characteristic of a product. However, descriptive use of a third party’s registered trademark must be done appropriately. You cannot suggest a commercial connection with the trademark holder, latch onto the trademark holder’s reputation, or portray them in a bad light.
Brooks’ use of the word NITRO is to indicate that the soles are softer because they are injected with nitrogen (nitro foam). Sometimes the word is combined with a small gas cylinder or the chemical ‘N2’ symbol. Nitrogen injection is the most modern technique and is used by many manufacturers. Brooks always uses the term alongside its own brand, Brooks, and explicitly states that it does not intend to suggest any link with PUMA. Brooks is the market leader, and PUMA is a newcomer in the market. The claim was rejected, and additionally PUMA was ordered to pay part of Brooks’ legal costs.
Even if a trademark is registered, keep in mind that if it is a descriptive mark, the scope of its protection is limited.
