On August 20, 2007, Already, LLC filed an application with the United States Patent and Trademark Office seeking issuance of a design patent on the novel, original, ornamental, and non-obvious design of the athletic shoes that would constitute the "Sweet" shoe line. Already was granted U.S. Patent No. D584,040.
Marketing the "Sweet" shoe models in commerce, Already identified itself with its YUMS registered trademark, tags bearing its corporate signature logo, the letter "Y" sewn onto the shoe side panels, and distinctive point-of-sale packaging.
On July 16, 2009 Nike filed a complaint against Already, claiming that sale of YUMS shoes design violated a trademark Nike filed in December of 2006, alleging Already's YUMS shoe design to be a "colorable imitation."
During a pre-trial conference the judge noted that there was little similarity between the products, aside from the fact they both had shoelaces. Soon thereafter Nike chose not to move forward with the case against Already, unilaterally agreeing not to sue for infringement.
This development came as a disappointment to Already, who maintains that Nike's like drawing of a shoe should not be entitled to trademark protection.Question Presented:
Whether a federal district court is divested of Article III jurisdiction over a party's challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party's then-existing commercial activities.