Nike sued Kool Kiy in November and claimed trademark infringement.
Kool Kiy responded this week and described Nike as a "trademark troll."
The company also filed a countersuit in an effort to get four Nike trademarks canceled.
One of Nike's recent lawsuit victims is fighting back.
Nike sued Kool Kiy for trademark infringement in November. This week the streetwear brand best known for its lightning bolt sneakers issued a fiery rebuttal. Kool Kiy, legally known as By Kiy, described Nike as "dictatorial" and a "trademark troll" that "wants the market for certain types of sneakers all for itself."
The lawsuit is the latest in a series of recent legal battles Nike is waging against small sneaker companies, including people who make small batches of custom shoes, that it claims are infringing on some of its most iconic designs, including Jordans, Dunks, and Air Force 1s. Most of the cases have settled, but Kool Kiy's combative response suggests its lawsuit won't end soon.
In its lawsuit, Nike claimed Kool Kiy and business partners violated Nike's "trade dress" protections for the Air Jordan 1 and Dunk. Trade dress is a type of trademark protection. While trademarks typically protect words and phrases, trade dress protects silhouettes and appearances, such as the shape of a Coca-Cola bottle or the blue Tiffany box, according to the reference book "Sneaker Law."
The Kool Kiy shoes Nike claims infringe on its trademarks are similar to Air Jordans but feature a lightning bolt instead of Nike's swoosh. Nike claims the shoes infringe on its intellectual property.
"The iconic designs represent the originality, authenticity, and creativity that is entwined in the DNA of sneaker culture," Nike's attorneys wrote. "That is why Nike must protect its designs and intellectual property from bad actors who undermine the very DNA of authentic sneaker culture by promoting, copying, and selling Nike's designs as their own.
Nike has registered trade dress protection for 22 of its sneaker silhouettes since 2019, according to an Insider review of US Patent and Trademark Office records. Nike's recent trade dress filings include everything from Jordan silhouettes to Dunks, Air Force 1s, Huaraches, various Air Max designs, and Foamposites.
"What Nike is trying to do is basically protect not just the swoosh, but more the silhouette of the shoe," Briana Enck, an attorney with the firm Ruskin Moscou Faltischek, who's written about Nike's use of trade dress protection, told Insider.
Nike has filed at least eight lawsuits in which it argued for trade dress protection since 2019. Most have settled. None have gone to trial, but the flurry of litigation suggests Nike's lawyers are confident in the company's legal arguments.
Kool Kiy's lawyers see it much differently.
In its response and countersuit, Kool Kiy noted the "flurry of recent trademark applications" and criticized Nike for the recent litigiousness, writing Nike is "trying to further broaden its illegitimate dominion over how others design sneakers."
Kool Kiy's lawyers also described Nike as a "trademark troll."
Nike did not immediately respond to a request for comment about Kool Kiy's response. The company typically does not comment on pending litigation.
Kool Kiy's attorneys argued the company's products feature a lightning-bolt design that "looks nothing like Nike's 'Swoosh.'" They also noted Kool Kiy products are sold in different sales channels than Nike sneakers.
"There is no conceivable way that any reasonable consumer would think he or she is buying a Nike product when the consumer buys a By Kiy product, whether in the primary or secondary sales markets," Kool Kiy's attorneys wrote.
In order to get trade dress protection, the appearance of a product must be distinctive and nonfunctional.
Kool Kiy's attorneys argued Nike is seeking trade dress protection for functional parts of basketball sneakers. and should be canceled.
"Invalid trademarks nonetheless have an unlawful, deforming impact on the competitive and free markets for sneakers by intimidating designers and manufacturers who fear Nike's litigiousness," Kool Kiy's attorneys wrote.
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