Nike finds it unexpectedly difficult to shake "BOOM YO!" trademark lawsuit; Magistrate would let key claims survive dismissal

Posted by Charles Colman

Apologies for having been incommunicado over the past several weeks. Super-hush-hush stuff... sort of... not really.  LAW OF FASHION plans to bring you more frequent fashion law news in the near future, but for the time being, this little nugget will have to suffice.  It's a Magistrate Judge's "Report and Recommendation" coming out of my home state of Ohio, in a case involving the phrase "BOOM YO!" (or, in defendant Nike's case, the allegedly infringing alternative "BOOM!") used in connection with apparel. I won't say any more than that, leaving you with some key quotes from the Magistrate's R&R, and the document itself:

 

"[Concerning the trademark counterfeiting claim...] In the present case, Tovey does not allege that Nike’s use of 'Boom' mimics a design or coloration idiosyncratic to Tovey’s use of 'Boom Yo.' Thus, the question is whether the phrases themselves are 'substantially indistinguishable' to the average consumer irrespective of their style of use. As a matter of law, they are not. The two phrases are undoubtedly similar. Nevertheless, one is clearly a single word and the other two words. Further, Tovey’s use of 'Boom Yo' had no particular idiosyncratic design or coloring. Thus, the average consumer would not find them to be 'substantially indistinguishable' within the meaning of the Lanham Act [so Tovey's counterfeiting claim fails as a matter of law]....

 

[Concerning the trademark infringement claim, however...] In the present case, Tovey cites a number of uses of 'Boom,' both in advertising and on clothing. Regardless of whether Tovey alleges sufficient facts to state a plausible claim for relief on the basis of the advertising described in the complaint, he does allege sufficient facts to state a plausible claim for relief on the basis of Nike’s use of “Boom” on the clothing it sells. Significantly, Tovey uses “Boom” on the front side of his clothing items and 'Yo' on the back side. Neither party alleges that Tovey’s use of “Boom Yo” on clothing is uniformly characterized by a particular style of lettering, colors, or other stylistic markers that distinguish it. Thus, it is plausible that Nike’s various uses of 'Boom' on the front of the clothing it sells creates the possibility of confusion in a consumer exercising ordinary attention when buying sports clothing [so Tovey's trademark infringement claim may proceed past the motion to dismiss stage]....

 

[B]ecause Tovey’s federal claim for unfair competition by false designation of origin survives defendants’ motion to dismiss, Tovey’s cause of action for unfair trade practices pursuant to [the Ohio Deceptive Trade Practices ACT] also survives. For this reason, defendants’ motion to dismiss should be denied with respect to Tovey’s eighth cause of action, common law claim of trademark infringement....

 

[D]efendants’ motion to dismiss should be granted with respect to Tovey’s tenth cause of action, tortious interference with prospective business relationships/common law civil conspiracy, or Tovey should be given an opportunity to amend his claim...."

 

The Magistrate Judge would dismiss certain other secondary claims, while allowing some to survive.  (The District Court Judge has the final say, appeals excepted.)  But don't take my word for it; read the decision yourself (to see the document in a larger font, or to peruse the case docket, visit Scribd.com):

 

 

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