TTABlog Test: Is FOOTWARE Merely Descriptive of Footwear with Integrated Technology?

San Antonio Shoe, Inc. opposed Nike's application to register the proposed mark FOOTWARE for goods and service in classes 9, 38, and 42, all related to sensor and communication software, hardware, and services. Nike did not deny that "the FOOTWARE platform may be incorporated into a shoe," but it pointed out that the identification of goods and services makes no mention of shoes or footwear. How do you think this came out? San Antonio Shoe, Inc. v. Nike, Inc., Opposition No. 91263731 February 12, 2024 [not precedential] (Opinion by Judge Karen S. Kuhlke).

San Antonio argued that "[a]n ordinary consumer will understand that: (i) 'FOOT' refers to a product worn on the foot; (ii) 'WARE' refers to the advanced hardware and software technologies embedded in the product," and therefore "'footware' is merely descriptive for foot[-]worn wearable technology." Excerpts from third-party websites submitted by San Antonio included examples of consumer exposure to wearable technology in shoes and use of FOOTWARE in connection therewith.

The Board found that WARE is at least merely descriptive of computer software and hardware goods and services. The addition of FOOT "informs the consumer of a feature (or specification) of the computer software, hardware and services, that they are used in connection with footwear, the phonetic equivalent of footware."

This case presents the unusual situation where the double entendre engendered by the suffix “WARE” unambiguously informs the consumer the computer software and hardware, and computer services, the “Platform,” are for use in connection with footwear. In both meanings FOOTWARE or FOOTWEAR the term merely describes a feature of the computer goods and services.

The Board concluded that the combination of FOOT + WARE does not result in a separate distinctive meaning.

As to Nike's argument regarding the identification of goods and services, the Board observed that "[i]f the refusal of registration applies to any of the goods or services within the class, registration is refused as to the entire class." Nike admitted that its FOOTWARE platform may be incorporated in a shoe. That was enough for Section 2(e)(1) purposes:

[T]he fact that the “Platform” could be used with other networked devices and FOOTWARE may have a different meaning in a different context is not controlling. (citation omitted). Applicant’s identification of goods is broadly worded and encompasses “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices,” “electronic devices and downloadable computer software that allow users to remotely interact with other smart devices,” “telecommunications services, namely, transmission of data by means of telecommunications networks, wireless communications networks and the Internet,” and “cloud computing featuring software for connecting operating and managing networked devices via wireless or wired networks,” used in connection with footwear.

The Board concluded that FOOTWARE "merely describes a feature, function and purpose of the computer goods and services, namely, that they may be used with footwear or shoes." And so, the Board sustained the opposition.

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TTABlogger comment: If the shoe foots, ware it.

Text Copyright John L. Welch 2024.