Nike filed suit on Jan. 8 against a French sportswear company, Dragon Bleu, and its U.S. distributor, DBV Distribution, that have been using the Venum brand name on mixed martial arts clothing. The dispute, which is due to be heard in the Federal Court of Oregon, calls into question the brands' right to use the same or similarly sounding registered names for different categories of sports products.
Nike has been using the Venom trademark on softball bats, athletic apparel and equipment since 2002, although it had obtained its registration in the U.S. in 2005 for use in ski and snowboard clothing. It is now challenging Dragon Bleu's argument that it has been using a similar name, Venum, often with the image of a snake's head, in other types of clothing. Dragon Bleu has been selling them in the U.S. and the rest of the world through the www.venumfight.com and www.dragonblue.com websites.
Dragon Bleu requested a registration of the Venum name in the U.S. in 2008 for use in ski and snowboard clothing, but its application was rejected by the U.S. Trademark Office. It subsequently demanded again its registration for martial arts and other types of sports that were not covered by Nike's initial registration. It also filed trademark applications for Venum in Brazil, Chile, Paraguay and Peru, and it apparently wants to use the name for other types of apparel and equipment.
Nike has not taken action so far, admitting that the Venom trademark has been registered and used by other companies for different types of products such as bicycles, billiard cues and rifle scopes, but it is now reacting to a suit filed by Dragon Bleu in France against Nike last Nov. 21, challenging its use of the Hypervenom name on a new line of football boots introduced in Europe last May.
Arguing that Dragon Bleu's use of Venum in martial arts can coexist with Nike's Hypervenom in football without any risk of confusion, Nike says that the French company “cannot have it both ways.” Nike is asking for injunctive relief and compensation for the defendant's enhanced profits, damages and legal costs.