United States District Court, M.D. North Carolina
MEMORANDUM OPINION AND ORDER
Catherine C. Eagles, United States District Judge.
plaintiff Fleet Feet, Inc., has used two trademarks,
“Change Everything” and “Running Changes
Everything, ” for a number of years in connection with
selling running shoes and other athletic apparel and with
organizing running and walking races, training, and related
events. This summer, the defendants Nike, Inc., Nike USA,
Inc., and Nike Retail Services, Inc. (“Nike”),
began to use the phrase “Sport Changes
Everything” in a large-scale and ubiquitous advertising
campaign expected to last through the holidays and into the
New Year. Because Fleet Feet has demonstrated a likelihood of
success on the merits of its trademark infringement claims
and met the other requirements for a preliminary injunction,
Fleet Feet's motion will be granted.
obtain a preliminary injunction, a party must show that: (1)
it is likely to succeed on the merits, (2) it is likely to
suffer irreparable harm if the injunctive relief is denied,
(3) the balance of equities tips in its favor, and (4)
injunctive relief would be in the public interest. Winter
v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).
“Satisfying these four factors is a high bar, as it
should be.” SAS Inst., Inc. v. World Programming
Ltd., 874 F.3d 370, 385 (4th Cir. 2017), cert.
denied, 139 S.Ct. 67 (2018).
a likelihood of success on the merits of its trademark
infringement claims, Fleet Feet must make a strong case that
Nike is infringing Fleet Feet's marks.This requires
proof that Fleet Feet owns a valid, protectable trademark and
that Nike's use of the mark is likely to cause confusion
among consumers. Lone Star Steakhouse & Saloon,
Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir.
Feet offers significant evidence that it owns valid marks:
the United States Patent and Trademark Office (USPTO) has
recognized the validity of the “Change
Everything” mark by registering it on the Principal
Register, which is prima facie evidence of the validity of
that mark, and Fleet Feet has used both marks for several
years in connection with retail and online sales, training,
and races. The evidence of reverse confusion-which occurs
when the junior user's advertising and promotion
overcomes the senior user's reputation in the market such
that customers are likely to be confused into thinking that
the senior user's goods are those of the junior user, 4
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:10 (5th ed. 2019)-is substantial,
as Nike is spending millions of dollars to intensely promote
the “Sport Changes Everything” campaign.
challenges validity, contending that both “Change
Everything” and “Running Changes
Everything” are in common use and cannot be trademarked
and that Fleet Feet does not use either phrase “as a
trademark.” It also challenges Fleet Feet's
evidence of confusion and asserts the affirmative defense of
fair use, which if shown would ultimately defeat any
Court, having reviewed the motions, the supporting documents,
all matters of record,  and the briefing, makes the following
findings of fact and conclusions of law for the purpose of
this Order only.
Fleet Feet, through franchised, company-owned, and online
stores, sells running and fitness merchandise, including
footwear, apparel, accessories, and general fitness products,
as well as training programs and related services. Doc. 10 at
¶ 9. As part of this business, Fleet Feet and its
franchisees organize races, running groups, and training
events. Doc. 10-3. Its primary focus is running gear, which
is used by athletes from many sports as part of a fitness
regimen. Doc. 47 at ¶ 6.
Fleet Feet has 182 stores, including franchises, nationwide.
Doc. 10 at ¶ 8.
Since Sept. 1, 2014, Fleet Feet has spent approximately $1,
900, 000 on advertising and marketing its brand, not
including what franchised stores may have spent; $800, 000 on
advertising and marketing by its company-owned locations; and
$1, 350, 000 on digital media advertising by its online
store. Id. at ¶ 20. The record does not reflect
how much of that spending was dedicated to or used the
“Change Everything” mark or the “Running
Changes Everything” mark.
Sept. 1, 2014, to Aug. 31, 2019, Fleet Feet's franchisees
and affiliates earned more than $940, 000, 000 in revenue,
resulting in more than $25, 000, 000 in royalties and license
fees paid to Fleet Feet. Id. at ¶ 21.
is in the business of designing, developing, marketing, and
selling athletic footwear, apparel, equipment, accessories,
and services. Doc. 15-1 at 2. It is the largest seller of
athletic footwear and apparel in the world. Id.
Nike's consolidated gross profit in fiscal year 2019 was
$17, 474, 000, 000, a 10% increase over the previous year,
id. at 6, and it spends many millions of dollars on
“demand creation expense, ” id., which
the Court infers means the money was spent on various forms
focuses primarily on six product categories: running,
Basketball, the Jordan Brand, soccer, training, and
sportswear/ lifestyle products. Id. at 2. It also
makes products for children and for other sports.
Id. Nike's product lines include but are not
limited to Fleet Feet's specialty.
Fleet Feet sells shoes and other athletic wear made by
several different companies, including Nike. See
Doc. 10-2. Nike sells its products both directly, through
Nike-owned retail stores and online, and through businesses
like Fleet Feet. Doc. 15-1 at 2-3. Nike's relationship
with Fleet Feet is longstanding. Fleet Feet is thus both
Nike's customer and Nike's competitor.
Feet's Trademarks at Issue
Fleet Feet has trademark rights in two phrases, “Change
Everything” and “Running Changes Everything,
” when used in connection with retail sporting goods
stores, organizing running and walking race training events,
or athletic shirts. Its rights to “Change
Everything” arise from use under the common law,
see infra at ¶¶ 10-12, and from
registration on the Principal Register on October 13, 2015.
See infra at ¶ 14; Doc. 7-1. Its rights to
“Running Changes Everything” arise from use under
the common law. See infra at ¶¶ 18-20.
“Change Everything” Mark
Fleet Feet began using the phrase “Change
Everything” (CE) in June 2013 for its retail stores and
for race and training events and in August 2014 for
apparel.Fleet Feet has used it continuously
Fleet Feet uses “Change Everything” in a variety
of ways, including on athletic shirts given away or sold as
part of races or for training events,  in online and
in-store advertising,  on promotional items such as referral
cards and materials for industry conferences,
on in-store displays. It is generally displayed alone,
rather than textually in a sentence; for example, the phrase
may be centered and without other adjacent text on T-shirts,
or used as a banner headline on the website. See
supra notes 6-10. Occasionally, CE is used in a more
textual way. See, e.g., Doc. 38-13 at 2; Doc. 38-15
Fleet Feet generally uses an all-caps, non-italicized block
font, similar to its company name. On T-shirts, in stores,
online, and in social media, the CE mark is typically
displayed next to, or on the other side of the T-shirt from,
another Fleet Feet mark, such as the company name or
“flame” symbol. Fleet Feet has not generally
featured stories about individuals in using this mark, but
where it has, it has generally used photographs rather than
video. See, e.g., Doc. 38-15 (“latest
news” posting on Fleet Feet website of running program
participants' successful completion of 5K race, featuring
RCE and CE marks). Fleet Feet and its licensees do use video
advertisements online to promote their training programs; the
three examples provided have some 15, 400 views total. Doc.
10 at ¶¶ 40-42.
August 2014, Fleet Feet applied to the USPTO to register
“Change Everything” as a trademark for three
categories of use, called International Classes: retail
sporting goods stores (Class 35), organizing running and
walking race training events (Class 41), and athletic apparel
(Class 25). See Doc. 38-23 at 17.
October 13, 2015, the USPTO placed the “Change
Everything” mark on the Principal Register for Classes
35 and 41, retail sporting goods stores and organizing
running and walking race training events, Doc. 7-1, and on
the Supplemental Register for Class 25, athletic apparel.
Doc. 7-2. The mark “consists of standard characters
without claim to any particular font, style, size, or
color.” Docs. 7-1, 7-2.
Sept. 17, 2019, Fleet Feet applied to register its CE mark
for athletic apparel (Class 25) on the Principal Register and
sought other changes not raised as relevant here. Doc. 7-3 at
3-4. In response, the USPTO, inter alia, approved
the mark on the Principal Register for Class 25, Doc. 48-10
at 5-8, 11, which gives notice of and opportunity to object
to the potential change to the public and which precedes
Nike has filed with the USPTO petitions for cancellation of
the CE mark in all three classes. Docs. 38-22, 38-23;
see Doc. 44-1. Fleet Feet has since asked that the
Principal Register entry for CE in Class 25 be limited to
shirts, rather than all apparel. Doc. 48-12.
the moment, the CE mark is on the Supplemental Register for
athletic apparel and on the Principal Register for retail
sporting goods stores and organizing running and walking race
training events. See supra ¶ 14.
“Running Changes Everything” Mark
February 2009, Fleet Feet used the phrase “Running
Changes Everything” (RCE) in a print advertisement,
Doc. 7-11 at 2-3, and the following month, in an
advertisement in the magazine Runner's World.
Doc. 10-6 at 5. Since then, Fleet Feet has consistently used
RCE across multiple media and in a way that stands out to the
consumer. See infra at ¶¶ 19-20.
Specifically, Fleet Feet uses “Running Changes
Everything” in its print advertising and materials
for industry conferences,  gift card holders,
its website and social media,  its Fleet
Feet-branded T-shirts and van,  its brick-and-mortar
stores,  and at training events and
races. The phrase is typically displayed alone,
rather than used textually in a sentence. For example, it is
used as a banner headline superimposed over photographs on
the website, centered and without other adjacent text on
T-shirts, and on a large sign over a store display. See
supra notes 16-24. Occasionally, RCE is used in a more
textual way. See, e.g., Doc. 38-10 at 3, Doc. 38-11
at 2, Doc. 38-12 at 2.
with the “Change Everything” mark, see
supra at ¶ 12, Fleet Feet generally uses an
all-caps, non-italicized block font, similar to its company
name, for the “Running Changes Everything” mark,
though it also uses an all-caps handwriting font on some
T-shirt designs and its website. On T-shirts, in stores,
online, and in social media, the RCE mark is typically
displayed next to (or on the other side of the T-shirt from)
another Fleet Feet mark, such as the company name or
“flame” symbol. As noted supra at
¶ 12, Fleet Feet has not often featured stories about
individuals in using these marks, but where it has, it has
generally used photographs rather than video.
Fleet Feet has offered no evidence that it uses either mark
on its product labels or hangtags, and the Court infers and
finds that it does not.
July 10, 2019, Fleet Feet applied to register its trademark
for “Running Changes Everything” on the Principal
Register for Class 35 (retail sporting goods); the claimed
mark “consist(s) of standard characters, without claim
to any particular font style, size, or color.” Doc. 7-4
at 5. Fleet Feet asserted that RCE had acquired
distinctiveness, i.e., secondary meaning,  based on five
or more years' use. Doc. 7-4 at 2-3 (first used Mar. 28,
Aug. 8, 2019, Fleet Feet applied to register “Running
Changes Everything” on the Principal Register for
Classes 25 (apparel) and 41 (training events). Doc. 7-5 at
2-6. As with its July 2019 application, supra ¶
22, it did not claim a particular font style and asserted the
phrase had acquired distinctiveness since its first use on
March 28, 2012. Id.
July 30, 2019, the USPTO issued a “nonfinal office
action” for Fleet Feet's “Running Changes
Everything” application for retail sporting goods
(Class 35), stating that “the mark appears to be
inherently distinctive and is eligible for registration on
the Principal Register without proof of acquired
distinctiveness.” Doc. 15-2 at 2-3. The USPTO gave
Fleet Feet the option to withdraw the claim of acquired
distinctiveness. Id. According to Fleet Feet's
counsel at oral argument, Fleet Feet did so, but the Court
did not locate record support for that assertion.
After this notice, Fleet Feet submitted another application
for the Principal Register for Class 35 for a different
use-by and for franchisees-without claiming acquired
distinctiveness. Doc. 7-6 at 3-4; Doc. 48-5 at 6-7.
Oct. 23, 2019, the USPTO approved Fleet Feet's RCE mark
on the Principal Register for Classes 25, 35, and 41. Docs.
48-6, 48-7, 48-8. As noted supra at ¶ 15,
publication gives notice to the public, and approval does not
Use of “Sport Changes Everything”
May 2019, Nike began to design an advertising campaign around
the phrase “Sport Changes Everything.” Doc. 37 at
None of the people on the Nike creative team who developed
the “Sport Changes Everything” campaign worked
with Fleet Feet or were familiar with Fleet Feet's
“Change Everything” and “Running Changes
Everything” marks. Doc. 35 at ¶¶ 3-4; Doc. 37
at ¶¶ 3-4. But numerous Nike employees in its
running sales group were familiar with and knew about Fleet
Feet's use of CE and RCE as marks. See, e.g.,
Doc. 36 at ¶ 9; Doc. 7 at ¶¶ 40-42; Doc. 7-13;
Doc. 22 at ¶ 41; Doc. 10 at ¶ 32; Doc. 10-17. Nike
has presented no evidence as to whether it did or did not do
a trademark search before beginning to use the SCE phrase.
From this silence and Nike's level of business
sophistication generally and as to trademarks specifically,
the Court infers and finds for purposes of this motion that
Nike did do such a search and was aware of Fleet Feet's
“Change Everything” mark.
“Sport Changes Everything” campaign is directed
towards multiple sports.Usually the SCE phrase is accompanied
by a Nike trademark, such as the Nike “swoosh” or
the Nike name,  but not always. Nike sometimes uses the
SCE phrase in a discrete way similar to its mark “Just
SCE campaign involves placement of the phrase in
advertisements onlineand on television,  in social
media posts (including as hashtags),  in videos
posted on YouTube and other websites,  on
billboards,  in stores,  and at
largeand small-scale sporting events. Doc. 35
at ¶¶ 9-11, 13. Many of these uses include
endorsements by accomplished athletes. See, e.g.,
“Sport Changes Everything” campaign began in July
2019. Doc. 35 at ¶ 6. Nike intends to use it through the
holiday season, id., and the campaign will culminate
at the Super Bowl in early February next year. Doc. 31 at
¶ 6; Doc. 32 at ¶ 5. Nike has already spent over
$16, 000, 000 on the SCE campaign. Doc. 31 at ¶ 16.
SCE campaign began with televised commercials during the July
9, 2019, Major League Baseball All-Star Game and the July
2019 ESPY Awards, and with videos posted on YouTube. Doc. 35
at ¶ 6, Doc. 37-1 at 4 (ESPY Awards); Doc. 7-15
(commercial); Doc. 10-21 (videos). As of Oct. 25, 2019, Nike
had posted 31 videos online as part of this campaign,
featuring stories of individual athletes, which have been
viewed over 18.5 million times. Doc. 46 at ¶¶ 4-5.
At least three of these videos feature running. Id.
at ¶¶ 5-6. In the videos, Nike uses the
“Sport Changes Everything” phrase in a title and
a hashtag viewable on the website while the video plays (e.g.
“Sport Changes Everything: Justin Gallegos, ” and
#SportChangesEverything) and as a still shot, with no other
text on the screen, at the end of the video.
Nike displays the phrase “Sport Changes
Everything” on various social media posts in multiple
fonts akin to handwriting. See Doc. 35-2. Its
in-store displays use one font of all-caps, forward-slanting
handwriting, see Docs. 11-1, 11-2, 11-3, 11-4,
similar to some of Fleet Feet's uses of its RCE mark.
See, e.g., Doc. 7-4 at 10 (Fleet Feet website); Doc.
10-9 at 2-3 (T-shirt); Doc. 46-1 at 3, 6 (T-shirt); see
also Doc. 10-20. Nike's manner of displaying SCE in
stores, on its website, and on apparel is also similar to the
way Fleet Feet uses its “Change Everything” and
“Running Changes Everything” marks.
Media coverage of the SCE campaign has featured running.
See, e.g., Doc. 46-8 (article noting Nike's
revenue goal and associated new product lines, with
photographs of runners including one holding a Nike shoe with
“SCE” written on the sole).
Nike does not claim trademark rights in the phrase
“Sport Changes Everything.” Doc. 35 at
¶¶ 7-8; Doc. 37 at ¶ 7. It is not used on
product labels or hangtags. Doc. 35 at ¶ 8; Doc. 37 at
Feet Learns of Nike's SCE Campaign
Fleet Feet became aware of the Nike “Sport Changes
Everything” campaign shortly after it began and
contacted Nike on Aug. 7, 2019. Doc. 7-18. After Nike's
response, and after Nike's website briefly used the
phrase “Running Changes Everything, ” Fleet
Feet's lawyers sent a cease-and-desist letter to Nike on
Aug. 13, 2019. Doc. 10-18. The parties engaged in discussions
about the SCE campaign. Doc. 36 at ¶ 11; Doc. 53 at
response to Fleet Feet's concerns, Nike made some
adjustments and “reworked” the SCE campaign for
the Chicago and New York City marathons. Doc. 35 at
¶¶ 15-16. While Nike's witnesses did not
explicitly say so, the Court infers that Nike removed the
phrase “Sport Changes Everything” from its
advertising used specifically for these two events.
Id.; Doc. 37 at ¶¶ 10-13. The record does
not reflect how much these adjustments cost Nike or how long
it took to make these adjustments, beyond vague testimony
that it took “numerous hours” and
“significant financial resources, ” Doc. 37 at
¶ 12, and was “very expensive.” Doc. 35 at
¶ 16. Otherwise, Nike continued to use the phrase in a
ubiquitous ad campaign, and it continues to appear in some
running-related online advertisements, videos, and social
Use of the Phrases “Change Everything” and
“Running Changes Everything”
Nike commissioned a “trademark research report”
by a third party using the search terms “changes
everything, ” “changing everything, ”
“ changes, ” and “everything
changes.” See Doc. 38-17. That search,
executed on Oct. 4, 2019, indicated extensive third-party
trademark registrations in other classes including these
phrases, mostly in combination with other words. Doc.
38-17. None of the active registrations contain
only the words “change everything” in any
order. None of the registered marks included
the phrase “running changes everything.” See
generally Doc. 38-17.
Many of the report's registrations are not currently
active: of 230 federal search hits, 129 were canceled,
abandoned, or due to be abandoned. Doc. 48 at ¶¶
4-7. Fourteen of the 103 “alive” registrations
are in Class 35 (which designates “advertising and
business services, ” Doc. 38-17 at 8); four of these
registrations are for retail stores, but none sell athletic
goods or services. Doc. 48 at ¶ 10. Twenty-six of the
“alive” references are for Class 41
(“education and entertainment services, ” Doc.
38-17 at 8), but none pertain to athletic training or racing.
Two are in Class 25 (“clothing and footwear, ”
Doc. 38-17 at 7), but neither is in athletic apparel
generally or athletic shirts specifically. Doc. 48 at ¶
addition to the registrations, the phrase “Change
Everything” has occasionally been used both alone and
in combination with other words for advertising other
athletic products, such as an Adidas “Boost”
sneaker in 2014 (“Boost Changes Everything, ”
where Boost was the name of a material used in the shoe), a
sports cap in 2013 (“First Changes Everything, ”
where the New Era Cap company featured Jackie Robinson as
“the quintessential first”), Gatorade in 2018
(“Everything Changes”), and an ESPN campaign for
the 2010 England World Cup (“One Game Changes
Everything”). Doc. 38 at ¶¶ 2-5. These videos
end with or include prominently a still shot of the quoted
tag line alone and in large, distinct print.
phrase “Change Everything” has also been used
textually at times in writing about athletics and other
product areas. Doc. 38 at ¶¶ 19-22. For instance,
the Beauty Bank Boot Camp website published an article titled
“Home Fitness: How 20 Minutes A Day Can Change
Everything, ” Doc. 38-18; the Drees Performance
Training website published an article titled “Keystone
Habits: Change One Thing, Change Everything, ” Doc.
38-20; and the Play Like A Girl website published an article
called “Why Play? Sport and Physical Activity Can
Change Everything For Girls.” Doc. 38-21. 42. There is
no evidence that anyone uses or has used the phrase
“Running Changes Everything” as a trademark or to
identify goods, and for purposes of this Order the Court
finds it has not been so used.
noted supra, to obtain a preliminary injunction, a
party must show that: (1) it is likely to succeed on the
merits, (2) it is likely to suffer irreparable harm if the
injunctive relief is denied, (3) the balance of equities tips
in its favor, and (4) injunctive relief would be in the
public interest. A preliminary injunction is an
“extraordinary remedy involving the exercise of very
far-reaching power.” Pashby v. Delia, 709 F.3d
307, 319 (4th Cir. 2013). In the appropriate case,
preliminary injunctions “protect the status quo”
and “prevent irreparable harm during the pendency of a
lawsuit ultimately to preserve the court's ability to
render a meaningful judgment on the merits.” In re
Microsoft Corp. Antitrust Litig., 333 F.3d 517, 525 (4th
Cir. 2003), abrogated on other grounds by eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388 (2006).
Likelihood of ...