Emphasizing Under Armour’s well-known and distinctive brand, a federal judge in Maryland has ruled for the Baltimore-based apparel company in a trademark and cybersquatting lawsuit. The case involves the sale of “Life’s Armour” vitamins and supplements.
In an opinion issued on May 21, Judge Stephanie Gallagher found that Exclusive Innovations, Inc., which also promotes “stylish fitness apparel” under “Life’s Armour,” has unlawfully infringed and diluted Under Armour’s trademarks. The Wyoming-based company declined to offer a defense, leading to a default judgment.
Over the years, Under Armour has secured numerous trademarks, including one for “Inner Armour.” Since the mid-2000s, an Under Armour licensee has used “Inner Armour” in selling sports-related dietary and nutritional supplements.
In 2017, Exclusive Innovations registered the domain name https://lifesarmour.com/ and began to sell vitamins and supplements and promote fitness apparel. It did so with logos and imagery resembling those of Under Armour:
Judge Gallagher detailed the infringing qualities of Life’s Armour’s presentation. She highlighted the similar shield and font to Under Armour. Exclusive Innovations, the judge observed, also markets Life’s Armour products in ways comparable to Under Armour’s ad campaigns. Both feature “athletic-looking individuals wearing fitness attire and engaging in high-intensity physical activities.” Judge Gallagher determined there is a likelihood of consumer confusion as to the source of the Life’s Armour website and products. The U.S. Patent and Trademark Office reached the same conclusion when it refused to register Life’s Armour.
Judge Gallagher further found Exclusive Innovations responsible for online exploitation of Under Armour’s marks—better known as cybersquatting. The judge determined that Exclusive Innovations “acted in bad faith” by, among other moves, registering a domain name that “is confusingly similar to Under Armour’s trademarks.”
Under Armour also prevailed in its trademark dilution claim. Whereas infringement focuses on consumer confusion, dilution centers on damage to an established mark, such as the mark losing its distinctiveness. Judge Gallagher concluded that Under Armour’s mark is at risk of dilution. She asserted that Under Armour and Life’s Armour “both use the British spelling of the word ‘armour’ and a similar-looking wide-set, all capitalized font.” The judge also drew attention to Under Armour’s “exceedingly distinctive” marks and well-known associations to Tom Brady, Steph Curry, Misty Copeland and other “world-class famous athlete” endorsers.
Professor Alexandra Roberts, a trademark law expert at UNH Franklin Pierce School of Law and author of Athlete Trademarks: Names, Nicknames, & Catchphrases, questions whether a finding of dilution was appropriate. She stressed that Judge Gallagher focused her dilution analysis on blurring, which occurs when a famous mark loses its distinctiveness because another uses an identical or very similar mark, often for an unrelated good or service.
Famous examples of blurring are Buick aspirin, Tiffany hot dogs and Kodak pianos. Roberts, who practiced intellectual property law at Ropes & Gray, explained that “where consumers once associated the famous mark with exactly one source and set of goods—Tiffany with jewelry only—they might now briefly, thanks to the diluter’s use, associate the famous mark with two different products or producers—Tiffany with jewelry and Tiffany with hot dogs.”
Normally, Roberts noted, a dilution claim succeeds when the marks are identical or extremely close and when the other use is for an unrelated good/service. She pointed out that a court found “Charbucks,” a coffee product, wasn’t similar enough to Starbucks to trigger blurring. It’s therefore possible, Roberts reasoned, that Exclusive Innovations could have argued that Life’s Armour, a similar line of products to those sold by an Under Armour licensee, didn’t rise to blurring. But because Exclusive Innovations defaulted, “it forfeited the opportunity to brief the court on this issue.”
Although Judge Gallagher issued a permanent injunction against Exclusive Innovations, the Life’s Armour website remains up as of this writing. Exclusive Innovations can appeal to the U.S. Court of Appeals to the Fourth Circuit, though the company’s lack of participation in the case suggests that is unlikely.