Off the Field, but Not Out of the Game: TOTAL 90 and the Plays That Could Change the Match 

Some brands never fully fade, especially in industries in which nostalgia and cultural memory keep the brand alive long after a product line takes a step back. Nike’s TOTAL 90 line is one such example, remembered from its earlier era and the T90 boot worn by legendary footballers, Wayne Rooney, Roberto Carlos, Luis Figo, and “El Niño.” The USPTO canceled Nike’s TOTAL 90 registration in 2019 because Nike did not file a Declaration of Continued Use by the deadline. Three years later, Louisiana LLC, Total90, approached the opportunity like a loose ball – free for the taking – and attempted to lace up the brand for itself, filing applications for the mark TOTAL90 for soccer-related goods/services, including shoes and soccer bibs and podcasts in the field of professional soccer.

Earlier this month, Nike stepped back on the field and filed a consolidated Petition for Cancellation of Total90’s registrations. Nike claims that, despite allowing the registration to lapse, Nike has not abandoned use of the TOTAL 90 mark and has retained its common law rights. To prevail, Nike will need to demonstrate genuine use or documented intent to resume use. There is more than one (evidentiary) play available to Nike that could help them keep the ball and win the match, e.g.:

• evidence of continued use by the senior user (Nike);
• evidence of intent to resume use (e.g., internal plans, licenses or other agreements that include the brand); and
• evidence of remaining consumer association and goodwill – while not evidence of use, this can be used to support arguments of brand origin and likely consumer confusion.

While the match has only just started, this dispute offers important lessons and reminders for both brand owners and budding brand owners:

1. Paused or dormant brands are not always dead brands. Brand owners should take care to clear marks beyond the USPTO Register through comprehensive searches.
2. Quieter marks and legacy marks may attract risk.
3. AI tools may be able to help brand owners by (a) scanning the Internet for use of identical/similar marks in the marketplace – useful for both those trying to confirm if a mark is available or is in use/still in use, (b) monitoring for new filings for identical/similar marks (to protect against infringement and dilution), and (c) organizing proof of use across websites and social platforms to document continued use and intention to resume use.

A canceled registration or a quiet period is not always the final whistle, but these can make a brand vulnerable. Maintaining genuine use evidence or evidence of clear intent to resume use keeps your options open – whether you plan a revival, a pivot, or to ultimately let the brand go. In an environment where opportunistic filings and AI-accelerated branding continue to gain momentum, early detection and action are key.