Nike v. Already, Nike commenced a lawsuit arising out of the alleged trademark and trade dress infringement of its “Air Force 1” shoe. The defendant Already, Inc. d/b/a Yums filed a counter-claim for a declaratory judgment that it did not infringe Nike’s shoe. Several months later, Nike delivered a “Covenant Not to Sue” Yums. The Second Circuit held that because Nike had submitted a covenant not to sue Yums, the court no longer had jurisdiction over Yums’s declaratory judgment action, and dismissed the action. In plain English, this means that a trademark holder, after asserting its rights, can avoid litigation by unilaterally promising not to sue, even where the other party seeks a determination of its rights against the trademark holder. The question before the Court: Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities. The Second Circuit decision: Nike v. Already, Inc. (2nd Circuit) The petition for certiorari: Nike v. Already Petition for Certiorari ]]]]> ]]>
Associate Michael Hassard speaks about how to keep out of trouble in the NFT world.