Nike’s Total 90 Trademark Revival Runs Into Reverse Confusion Claim

Nike is defending its revived Total 90 soccer line against trademark infringement claims brought by a smaller company that obtained federal registration for the mark after Nike’s earlier registration lapsed. Central to the dispute is whether Nike’s longstanding but allegedly limited recent use of the mark preserves its common-law rights despite the lapse of its federal registration.

The court denied the plaintiff’s motion for a temporary restraining order (TRO) and, following a preliminary injunction hearing in January 2026, ordered both parties to submit supplemental briefing on critical issues of trademark use and abandonment. Although the case remains unresolved, it highlights the risks associated with letting legacy marks lapse, as well as the evidentiary challenges involved in proving continuous use.

Case Background

Nike launched its iconic Total 90 soccer cleat line in 2000 but allowed its federal registration for “TOTAL 90” to lapse in 2019 as primary use declined. In 2022, Hugh Bartlett, a New Orleans–based engineer and youth soccer coach, obtained a federal registration for the nearly identical mark “TOTAL 90” through Total90 LLC. The registration was based on use beginning in 2019 for a fantasy soccer app and later expanded into apparel and footwear.

Seeking to capitalize on nostalgia ahead of the 2026 World Cup, Nike began relaunching retro Total 90 products in 2025. In December 2024, Bartlett allegedly contacted Nike to propose a collaboration. Negotiations continued for nearly a year but soured when, according to Nike, Bartlett demanded $2.5 million to assign the registration or face litigation.

Total90 LLC then filed suit in November 2025, asserting claims for trademark infringement, unfair competition, and reverse confusion under the Lanham Act. Total90 argued that Nike abandoned the mark after its registration lapsed and that Nike’s high-profile relaunch was overwhelming Total90’s smaller brand presence. Nike responded that it remained the senior user and that, despite letting the registration lapse, it had never abandoned the mark, as evidenced by product sales, promotional activity, and licensing arrangements involving the Total 90 name.

On November 26, 2025, Chief Judge Wendy B. Vitter denied Total90’s motion for a temporary restraining order, finding insufficient evidence of likelihood of success or irreparable harm. After a subsequent preliminary injunction hearing, the court ordered supplemental briefing focused on whether Nike’s activities between 2019 and 2024 constitute bona fide trademark use sufficient to avoid abandonment. Shortly after submitting supplemental briefing, Nike filed its answer, which included counterclaims seeking cancellation of Total90’s federal registrations. Among other allegations, Nike asserts that Total90 committed fraud on the USPTO by declaring that it was unaware of any prior users with superior rights despite Nike’s historical use of the mark. If Nike prevails on this counterclaim, Total90’s registrations could be canceled and Total90 would be barred from relying on the presumptions of validity and exclusivity that normally accompany federal registration.

Key Takeaways for Trademark Practitioners and Brand Owners

Although the court has yet to rule on the motion for preliminary injunction, this case already offers several key insights for trademark practitioners and brand owners.

1. Abandonment Is Not Automatic Upon Lapsed Registration

One issue in the case is whether Nike abandoned its rights to the “TOTAL 90” mark by failing to renew. Under 15 U.S.C. § 1127, a mark is abandoned when “its use has been discontinued with intent not to resume,” or when the owner “causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.” Nonuse for three consecutive years creates a rebuttable presumption of abandonment, but the burden is on the challenger to prove both discontinuance and intent.

Mere failure to renew a registration does not constitute abandonment. Courts routinely recognize that the lapse of a federal registration does not extinguish common-law rights where bona fide use continues. As Judge Vitter noted in denying the TRO, trademark rights flow from use, not registration. However, the supplemental briefing demonstrates that the type and extent of use matters greatly. Brand owners must maintain more than token or sporadic use and should document ongoing commercial activities to defend against abandonment claims.

The takeaway for brand owners is that even minimal ongoing use of dormant marks should be carefully documented and must constitute genuine commercial activity rather than mere warehousing. But only sporadic can increase vulnerability, especially if a third party later adopts and registers the mark in good faith.

2. Senior Common-Law Rights Can Trump Junior Registration—But Must Be Proven

Even when a junior party holds a later federal registration, a senior common-law user’s prior rights can prevail based on first use in commerce. The registration’s presumptions of exclusivity under §§ 1057(b) and 1115(a) are rebuttable by evidence of earlier use. However, as this case illustrates, asserting senior common-law rights requires substantial proof. The senior user must demonstrate not only prior use but also continuous use without abandonment. Generic assertions of “ongoing use” unsupported by sales data, inventory records, or testimony from knowledgeable witnesses may be insufficient, particularly when the senior user allowed its registration to lapse.

Nike’s counterclaims seeking cancellation of Total90’s registrations reflect the offensive potential of priority disputes. Rather than simply defending against infringement claims, senior users can affirmatively attack junior registrations through cancellation proceedings based on lack of priority or fraud.

3. Documentation Is Key to Proving Continuous Use

The evidentiary difficulties Nike faced at the preliminary injunction hearing (specifically, the inability to provide concrete sales figures or testimony from personnel with direct knowledge of the relevant time period) illustrate the importance of maintaining detailed records of trademark use. Brand owners should:

• Maintain comprehensive sales records, invoicing, and shipping documentation for all products bearing dormant or legacy marks

• Document promotional activities, such as online marketing, social media posts, and advertising campaigns

• Preserve licensing agreements and monitor licensee use

• Conduct periodic audits to verify ongoing use and identify marks at risk of abandonment

• Create contemporaneous business records reflecting intent to continue using marks, even during periods of reduced activity

4. Trademark Office Declarations Carry Serious Consequences

Nike’s fraud counterclaims highlight the risks associated with trademark application declarations. Applicants must exercise good faith and reasonable diligence in investigating potential prior users before declaring to the USPTO that they are unaware of any other party with superior rights. Although applicants are not required to conduct exhaustive searches, actual knowledge of a well-known prior user creates a duty to disclose.

The potential consequences of fraudulent declarations are significant and include cancellation of the registration, loss of all presumptions of validity and exclusivity, monetary penalties, and attorneys’ fees. Thus, brand owners should err on the side of disclosure when aware of potential conflicts.

5. Portfolio Management and Revival Risks

Nike’s experience offers a practical lesson for brands reviving legacy marks. Even well-known names benefit from consistent portfolio maintenance, including timely § 8 and § 9 filings. Docketing systems and periodic audits of dormant marks help reduce the risk that nostalgic brands are picked up by opportunistic registrants.

For smaller companies, acquiring a lapsed registration can create leverage, but enforcing it against a senior user with substantial historical goodwill carries real risk, including challenges based on prior use or allegations of bad-faith adoption.

Conclusion

As the case proceeds, the court’s analysis will likely focus on whether Nike’s activities between 2019 and 2024 constitute bona fide trademark use sufficient to overcome the presumption of abandonment. The outcome may provide guidance on how courts distinguish between legitimate minimal use and impermissible token use when legacy brands fall dormant.

Regardless of the ultimate result, the dispute reinforces a fundamental principle of trademark law: rights depend on use, and even brands as recognizable as Nike must demonstrate continuous, documented commercial activity to preserve their claims to a mark.

Alec McNiff is an Associate at a global law firm and licensed to practice law in California. He earned his J.D. from University of Michigan Law School and holds a business degree from University of Southern California. (Twitter: @Alec_McNiff). This content is for general information only, not legal advice.