New Balance of Brighton charges Nautica of New York with trying to ride its shoelaces to extra sales by copying its sneaker design and using a big capital N to brand its wares, just like New Balance.
In a lawsuit filed this week in US District Court in Boston, the local company is asking a judge to make Nautica stop doing that, recall all the offending products - and refund the purchasers - pay New Balance all the profits it's made from its sales of the offending products and pay New Balance enough penalties and damages to make it think twice, if not thrice, about ever doing that sort of thing again.
In its complaint, New Balance says Nautica is even trying to interfere with its relationships with other companies and entertainers, such as international rap sensation Lil Yachty.
New Balance says a new Nautica sneaker design violates its design patent for sneaker "shoe uppers" on its 247 model, introduced to great acclaim and sales in 2017 (New Balance notes that the Highsnobiety Web site "published several articles about the 247 around the time of its release" and says it's sold 2 million pairs of the model since its introduction):
And New Balance accuses Nautica of trying to horn in on its N action:
New Balance's current annual global marketing budget is well over $100,000,000 - the vast majority of which is used toward marketing and advertising that incorporates the Block N Mark.
Today, the Block N Mark is used on approximately 96,000,000 pairs of New Balance shoes sold annually in over 68 countries worldwide.
In addition to its use on footwear, New Balance uses its Block N Mark on a variety of related goods. Since at least as early as 1996, New Balance has used the mark on a wide range of apparel.
Marketing oomph like that is hard to miss, the company continues:
Upon information and belief, given the fame of New Balance's Block N Marks, Nautica must have known of New Balance's rights in the marks. Also, given New Balance's global registrations for the Block N Marks, Nautica had at least constructive notice of New Balance's rights in those marks. As a result, Nautica's infringement is intentional. In addition, Nautica intended to dilute the distinctive source identifying quality of the Block N Marks.
And since both companies sell similar products - sneakers, ultimately, are sneakers - the risk of consumer confusion is high, New Balance says. And that's compounded, New Balance charges, with Nautica's messing with New Balance's rep in popular culture. New Balance cites its experience with rapper Lil Yachty:
[I]n 2017 and 2018, Nautica partnered with rapper and designer Lil Yachty. ... ("And after much ado and anticipation, the two entities launched their first collaboration—The Lil Yachty Collection by Nautica—this week."). Among relevant consumers, Lil Yachty is a well-known New Balance supporter, even "name-dropping" the brand in his hit song "Minnesota." ... ("Pausing briefly and staring into the camera, Lil Yachty professed on an episode of Complex's Sneaker Shopping, "Oh my god, I love New Balance."). ...
Nautica’s participation in collaborations increases the likelihood of consumer confusion concerning an affiliation, connection, or association between New Balance and Nautica because consumers are likely to believe that New Balance authorized or licensed Nautica to use its famous Block N Mark on its goods. Had New Balance authorized Nautica to design special-edition products, it might have been a highly successful collaboration—like New Balance’s collaboration with J. Crew. New Balance, however, never authorized or licensed Nautica to use its trademarks.
Complete New Balance complaint (3.6M PDF).