When Nike’s federal trademark registration for TOTAL 90 expired in 2019, a Louisiana company attempted to claim the branding. Total90 LLC obtained its own registrations and later sued Nike, alleging the sportswear company had abandoned the mark. A federal court rejected that argument.
On June 22, the U.S. District Court for the Eastern District of Louisiana denied Total90 LLC’s request for a preliminary injunction against Nike’s renewed use of TOTAL 90. The decision confirmed a fundamental rule in trademark law: a lapsed registration does not automatically make a brand available to others.
To prove abandonment, two conditions must be met: non-use of the mark and intent not to resume use. The court determined Nike had maintained limited use of TOTAL 90 even after its registration lapsed. That activity—though minimal—was sufficient to challenge the claim that Nike had permanently discontinued the brand.
For companies managing trademark portfolios, the case offers a clear takeaway. While a lapsed registration can create risks, the greater danger often lies in failing to document post-lapse activity. Brand owners should keep records of evidence of intent to resume use.
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Those seeking to register an apparently abandoned mark face a tougher battle. Obtaining a registration is only the first step. Proving abandonment requires demonstrating that the prior owner both stopped using the mark and had no intention of bringing it back.
Federal registrations provide important protections, but they rarely capture the full picture. The outcome of disputes often depends on whether use actually ceased, whether the owner intended to resume it, and whether consumers still link the mark to its original source.
Nike’s handling of TOTAL 90 illustrates how trademark conflicts can reemerge long after a registration expires. The court’s ruling relied on evidence of continued use, but the case also revealed how easily assumptions about abandonment can fail. Total90 LLC’s registrations did not ensure success, and its legal effort might have been avoided with more thorough research.
Businesses considering whether to revive an old brand or adopt a name that seems available should take note. Trademark clearance must extend beyond federal records. It demands examining common law use, prior owner activity, and any signs of intent to resume use—even if that activity is irregular or limited.
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The court did not rule on whether residual consumer recognition alone could maintain trademark rights.
Nike likely did not expect a challenge years after TOTAL 90’s registration expired. The case demonstrates how quickly a lapsed mark can create legal trouble if the original owner has not preserved evidence of its connection to the brand.
Total90 LLC’s registrations appeared secure, but the court’s decision proved otherwise. The dispute warns later filers that an unused mark is not necessarily abandoned. For brand owners, it reinforces that trademark rights do not always vanish with a lapsed registration.
Companies should also consider how emerging regulatory frameworks might affect trademark strategies in evolving markets.
