161 F. Supp. 3d 619
N.D. Ill.2016Background
- Plaintiff Daniel Poneman began using the unregistered mark “SwagAir” in 2010 to brand his scouting/promotional activities and placed the mark on 296 t‑shirts distributed at two local showcases in 2010–2011.
- Poneman’s operations were regional, primarily social‑media based, and he did not sell apparel broadly or register the mark.
- Nike designed and began selling a “SWAG AIR” t‑shirt (with prominent Nike name and swoosh) in March 2013 after conducting trademark and internet searches that did not reveal commercial prior use of Poneman’s mark.
- Poneman sued Nike and Foot Locker (Dec. 2013) for federal trademark infringement (15 U.S.C. § 1125(a)), common‑law trademark infringement, and two Illinois consumer/deceptive trade practice claims.
- Defendants moved for summary judgment; the district court granted summary judgment to defendants on the federal and two state claims and dismissed the remaining state claim without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether defendants’ use of “SWAG AIR” is likely to cause confusion (including reverse confusion) under 15 U.S.C. § 1125(a) | Poneman argued Nike’s “SWAG AIR” shirts would cause reverse confusion and devalue his senior unregistered mark | Nike argued the marks and marketplace context are distinguishable (prominent Nike branding, different channels, limited prior use by Poneman) and that no actual confusion or intent to palm off exists | Court: No likelihood of confusion; summary judgment for defendants |
| Whether Poneman’s unregistered mark is protectable | Poneman relied on his prior (senior) use beginning 2010 and promotional distribution of shirts | Defendants emphasized Poneman’s limited commercial use, lack of registration, weak market presence, and limited apparel sales | Court: Did not reach protectability because no likelihood of confusion was shown |
| Whether common‑law trademark and Illinois Deceptive Trade Practices claims survive | Poneman argued state claims mirror federal likelihood‑of‑confusion analysis | Defendants argued the same deficiencies that defeat federal claim also preclude state claims | Court: Granted summary judgment for defendants on both state claims (failure to show likelihood of confusion) |
| Whether to retain supplemental jurisdiction over Illinois Consumer Fraud Act claim | Poneman sought to proceed on consumer fraud theory | Defendants sought dismissal or severance; argued federal claims resolved | Court: Declined supplemental jurisdiction and dismissed the consumer fraud claim without prejudice |
Key Cases Cited
- Fortres Grand Corp. v. Warner Bros. Entm’t Inc., 763 F.3d 696 (7th Cir. 2014) (defines reverse confusion and its harms)
- Sorensen v. WD‑40 Co., 792 F.3d 712 (7th Cir. 2015) (sets out multi‑factor likelihood‑of‑confusion framework and marketplace context rule)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001) (standards for resolving likelihood of confusion on summary judgment)
- AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir. 2008) (consideration of sponsorship/endorsement in similarity analysis)
- Zazu Designs v. L’Oreal, S.A., 979 F.2d 499 (7th Cir. 1992) (unregistered plan to use a mark creates no rights; marketplace use controls)
- Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992) (intent factor often irrelevant in reverse confusion cases)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir. 2001) (factors for area and manner of use)
- Groce v. Eli Lilly & Co., 193 F.3d 496 (7th Cir. 1999) (declining supplemental jurisdiction principles)
- Cocroft v. HSBC Bank USA, N.A., 796 F.3d 680 (7th Cir. 2015) (elements of Illinois Consumer Fraud Act claim)