Opinion

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF LOUISIANA

TOTAL90, LLC CIVIL ACTION

VERSUS NO. 25-2325

NIKE, INC. SECTION: D (3)

ORDER AND REASONS

Before the Court is an Ex Parte Motion for Temporary Restraining Order and

Preliminary Injunction filed by Plaintiff Total90, LLC (“Total90”).1 Defendant Nike,

Inc. (“Nike”) has filed a Response in Opposition to the Motion.2 The Court held a

telephone status conference with all parties on Tuesday, November 18, 2025, and, at

the request of Plaintiff and without objection, the Court permitted Plaintiff to file a

Reply. Plaintiff did so.3 After careful consideration of the parties’ briefing, the record,

and the applicable law, the Court DENIES the Motion for Temporary Restraining

Order.

I. FACTUAL AND PROCEDURAL BACKGROUND4

Plaintiff Total90, LLC, is a Louisiana limited liability company and, since

February 24, 2022, owns United States Trademark Registration Nos. 7,516,774 and

7,496,089, which trademark the phrase TOTAL90® for apparel, footwear, and digital

entertainment services that relate to the sport of soccer.5 Plaintiff claims that Nike,

Inc., which formerly held a trademark for “Total 90” that had been used since 2000

1 R. Doc. 2.

2 R. Doc. 4.

3 R. Doc. 10.

4 The factual background is taken from Plaintiff’s Motion and Defendant’s Response, which does not

afford them the benefit of truth.

5 R. Doc. 1 at pp. 4-5.

but was canceled on April 19, 2019, abandoned the mark and then infringed upon

Plaintiff’s use of the mark.6

Plaintiff Total90 filed suit in this Court on November 14, 2025, asserting the

following causes of action against Defendant Nike, Inc:

1. Federal Trademark Infringement under 15 U.S.C. §1114

2. Federal Unfair Competition and False Designation of Origin under 15

U.S.C. §1125(a)

3. Violation of the Louisiana Unfair Trade Practices and Consumer Protection

Act under La. R.S. §51:1405

4. Louisiana Trademark Infringement under La. R.S. §51:222

Total90 then filed the instant Motion on the same day, seeking a temporary

restraining order that enjoins Defendant from

1. Using the mark “TOTAL 90” or any confusingly similar designation in

connection with the advertising, distribution, or sale of goods or services;

2. Manufacturing, promoting, or selling any goods bearing the infringing mark;

3. Passing off any goods as those of Plaintiff; and

4. Engaging in any conduct likely to cause confusion as to the source of

Plaintiff’s products.7

Plaintiff requests the TRO based on its claim under 15 U.S.C. §1114 for use of a

“confusingly similar mark.”8 Plaintiff argues that reverse confusion has occurred

because Defendant’s saturation of the market with “Total 90” shoes has caused

confusion among consumers to assume that Plaintiff’s products are related to Nike.

Plaintiff contends that the damage to goodwill constitutes irreparable harm per se

6 R. Doc. 1 at p. 6.

7 R. Doc. 2 at p. 6.

8 See id. at pp. 3-4. In its Motion, Plaintiff does not address any other of the claims mentioned in its

Complaint.

under the Lanham Act.9 Lastly, Plaintiff argues that both the balance of equities and

the public interest favor injunctive relief in favor of Total90.10

Defendant Nike responds that Plaintiff Total90 has failed to meet each prong

of a temporary restraining order analysis. Nike contends that it, not Plaintiff, is the

senior user of the mark “Total 90” and that it has not “abandoned” its trademark,

even though it did not renew its U.S. registration for the mark in 2019 when it was

canceled.11 Furthermore, Nike argues that Plaintiff has not addressed whether Nike’s

use of “Total 90” is likely to cause confusion.12 Defendant further alleges that Plaintiff

had notice for over a year that Nike intended to release a new soccer cleat with “Total

90” branding and that the presumption of irreparable injury under the Lanham Act

did not apply as a result.13 Nike also responds that Plaintiff has failed to address how

injunctive relief would affect Nike, as required by the balance of equities prong, and

that Plaintiff has also failed to demonstrate that the issuance of a TRO will not impair

the public interest.14

In its Reply, Plaintiff reiterates that it believes Nike had abandoned the mark

and addresses the digits of confusion analysis, stating that they favor Plaintiff.15

Additionally, Plaintiff contends that the balance of equities favor injunctive relief

because they are the senior user and, as such, have statutory rights in the mark.16

9 Id. at p. 4.

10 Id. at pp. 4-5.

11 R. Doc. 4 at pp. 10-12.

12 Id. at pp. 14-16.

13 Id. at pp. 17-18.

14 Id. at pp. 20-23.

15 R. Doc. 10 at pp. 2-3.

16 Id. at p. 4.

Lastly, Plaintiff argues that the public interest in preventing consumer confusion

supports injunctive relief in this case.17

II. LEGAL STANDARD

This Court has recognized that temporary restraining orders constitute

extraordinary relief and are rarely issued.18 “A TRO is simply a highly accelerated

and temporary form of preliminary injunctive relief, requiring that movant establish

the same four elements for obtaining a preliminary injunction . . . .”19 To obtain a

temporary restraining order or a preliminary injunction, the movant must show: (1)

there is a substantial likelihood that the movant will prevail on the merits; (2) there

is a substantial threat that irreparable harm will result if the injunction is not

granted; (3) the threatened injury outweighs the threatened harm to the defendant;

and (4) the granting of the injunction will not impair the public interest.20 If a party

fails to meet any of the four requirements, the district court must deny the application

for a temporary restraining order.21 Additionally, the party requesting the temporary

restraining order must provide “security in an amount that the court considers proper

to pay the costs and damages sustained by any party found to have been wrongfully

enjoined or restrained.”22

17 Id. at p. 5.

18 Treen v. Brown, Civ. A. No. 10-3359, 2010 WL 4027714, at *1 (E.D. La. Oct. 13, 2010) (Vance, J.)

(quoting Albright v. City of New Orleans, 46 F. Supp. 2d 523, 532 (E.D. La. 1999)).

19 MMR Constructors, Inc. v. JB Group of LA, LLC, Civ. A. No. 22-00267-BAJ-RLB, 2022 WL 1223919,

at *3 (M.D. La. April 26, 2022) (Jackson, J.) (citing Garza v. Starr Cty., 309 F. Supp. 3d 454, 456 (S.D.

Tex. 2018)).

20 Clark v. Prichard, 812 F.2d 991, 993 (5th Cir. 1987) (citing Canal Authority of the State of Florida

v. Callaway, 489 F.2d 567, 572-73 (5th Cir.1974)).

21 Bluefield Water Ass’n, Inc. v. City of Starkville, Miss, 577 F.3d 250, 253 (5th Cir. 2009).

22 Fed. R. Civ. P. 65(c).

III. ANALYSIS

A. Total90 has satisfied the procedural requirements for obtaining a

TRO.

While Total90’s original Motion for a TRO was ex parte, counsel for Nike has

entered an appearance and filed a response,23 making this temporary restraining

order no longer ex parte. As such, the procedural requirements of Fed. R. Civ P. 65

for ex parte issuance of a TRO no longer apply. Thus, the procedural requirements for

obtaining a TRO have been met.

B. Total90 has not satisfied the substantive requirements for

obtaining a TRO.

1. Likelihood of Success on the Merits

To establish a likelihood of success on the merits, a plaintiff does not need to

prove his case.24 As explained by one of our sister courts, “Even some likelihood of

success can be enough to support the issuance of a preliminary injunction.”25 Total90

focuses its argument on reverse confusion between its trademark and Nike’s release

of “Total 90” shoes.26 Nike responds that Plaintiff has not demonstrate either that it

has a legally protectable mark or that Nike’s use of “Total 90” is likely to cause

confusion.

23 R. Doc. 4.

24 Lakedreams v. Taylor, 932 F.2d 1103, 1109 n.11 (5th Cir. 1991) (citing H & W Industries, Inc. v.

Formosa Plastics Corp., 860 F.2d 172, 179 (5th Cir. 1988)).

25 Association of Taxicab Operators, USA v. City of Dallas, 760 F. Supp. 2d 693, 696 (N.D. Tex. 2010)

(citing Productos Carnic, S.A. v. Cent. Am. Beef and Seafood Trading Co., 621 F.2d 683, 686 (5th Cir.

1980) (“Where the other factors are strong, a showing of some likelihood of success on the merits will

justify temporary injunctive relief.”)). See, MMR Constructors, Inc., Civ. A. No. 22-00267-BAJ-RLB,

2022 WL 1223919 at *4 (“To establish a likelihood of success on the merits, a plaintiff ‘need not show

that success is an absolute certainty. He need only make a showing the probability of her prevailing

is better than fifty percent.’”) (quoting Eng v. Smith, 849 F.2d 80, 82 (2d Cir. 1988)).

26 R. Doc. 2 at pp. 4-5.

To prevail on a claim of trademark infringement under the Lanham Act, the

plaintiff must show that (1) it possesses a legally protectable trademark and (2) [the

defendant’s] use of this trademark ‘creates a likelihood of confusion as to source,

affiliation, or sponsorship.’”27 For a party to have a legally protectable trademark, it

must be either inherently distinctive or must inquire distinctiveness through a

secondary meaning; “[r]egistration of a mark with the PTO is ‘prima facie evidence

that the mark[ ] [is] inherently distinctive.’”28 To determine whether a likelihood of

confusion has occurred, a court must consider

(1) the type of trademark allegedly infringed,

(2) the similarity between the two marks,

(3) the similarity of the products or services,

(4) the identity of the retail outlets and purchasers,

(5) the identity of the advertising media used,

(6) the defendant's intent, and

(7) any evidence of actual confusion.29

These “digits of confusion” are not exhaustive, and “a finding of a likelihood of

confusion does not even require a positive finding on a majority” of these digits is not

necessary to find that a likelihood of confusion exists.30

Plaintiff avers that it has a valid trademark registered with the United States

Patent and Trademark Office (PTO) for TOTAL90®.31 Although registration with the

PTO is prima facie evidence of the mark’s inherent distinctiveness, the Court finds

that Plaintiff has not borne its burden to demonstrate that it is the senior user of the

27 Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 450 (5th Cir. 2017) (quoting Nola

Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015)).

28 Id.

29 Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 194 (5th Cir. 1998).

30 Id.

31 R. Doc. 2 at p. 2.

mark. Because “[o]wnership of trademarks is established by use, not by registration,”

the senior user is determined by examining the use of the trademark.32 Once the

senior user is established, the senior user is entitled to enjoin “the junior users from

using the mark, or one that is deceptively similar to it, subject to limits imposed by

the senior user's market and natural area of expansion.”33

Plaintiff’s argument that it is the senior user hinges on the allegation that

Defendant Nike abandoned the mark. Abandonment occurs when (1) “its use has been

discontinued with intent not to resume such use” or when (2) 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.”34 Defendant has

provided evidence that it has continued to use the mark even after registration

lapsed.35 Plaintiff has not made a showing that (1) Nike abandoned the mark or that

(2) it has become the owner of the mark, as established through use. As a result,

Plaintiff has not met its burden to show a substantial likelihood of success on the

merits of the first prong of the infringement analysis.

Furthermore, Plaintiff has failed to meet its burden regarding the second

prong of the analysis—a likelihood of confusion. The Fifth Circuit requires district

courts to examine the mark based on certain “digits” to determine whether a

likelihood of confusion exists. Plaintiff failed to address these digits in its Motion but

32 Union Nat. Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, Tex., 909 F.2d 839, 842

(5th Cir. 1990).

33 Id. at 842-43.

34 15 U.S.C.

35 See R. Doc. 4 at pp. 6-7; 4-1, Declaration of Nuno Silva; 4-2, Declaration of Agra Diapari.

has done so in its Reply, in which it argued that the marks “Total90” and “Total 90”

are identical in sound, appearance, and meaning and that both parties’ goods are of

a similar nature.36 While not required, the seventh digit, actual confusion, constitutes

the “best evidence of a likelihood of confusion.”37 While Plaintiff has addressed a

number of the digits, the Court finds that it has not carried its burden of showing a

substantial likelihood of success on likelihood of confusion prong of a Lanham Act

trademark infringement analysis.38 Plaintiff has not provided evidence that it uses

the same or similar retail outlets as Defendant or that the Defendant intended to

saturate the market to overwhelm its identity. Additionally, although it argues the

similarity of the mark, Plaintiff has not presented evidence that demonstrates “the

marks in the context that a customer perceives them in the marketplace, which

includes their presentation in advertisements.”39 Further, and most importantly,

Plaintiff has not provided evidence of any actual confusion, which would provide the

best evidence regarding the likelihood of confusion. As a result, the Court finds that

Plaintiff has not demonstrated a likelihood of confusion. Because Plaintiff has failed

to prove a substantial likelihood of success on the merits, a temporary restraining

order will not be issued.

36 R. Doc. 10 at pp. 3-4.

37 Future Proof Brands, L.L.C. v. Molson Coors Beverage Co., 982 F.3d 280, 289 (5th Cir. 2020).

38 The Court does not consider any of the other claims mentioned in the Complaint (R. Doc. 1) because

they are not raised in the Motion for Temporary Restraining Order and Preliminary Injunction or in

Plaintiff’s Reply.

39 Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 485 (5th Cir. 2004) (quoting Elvis Presley

Enters., Inc. v. Capece, 141 F.3d 188, 197 (5th Cir. 1998)).

2. Substantial Threat of Irreparable Harm

Plaintiff argues that it faces “immediate and irreparable harm” should the

ongoing infringement not be enjoined and contends that the resulting injury to good

will constitutes irreparable harm per se under the Lanham Act.40 Defendant

responds that, although there is a rebuttable presumption of irreparable harm,

Plaintiff has failed to show a likelihood of success on the merits and that any

presumption of irreparable harm has been rebutted by the evidence it has provided

in its opposition.41 Plaintiff replies that Nike has failed to rebut the presumption of

irreparable harm on the Trademark Modernization Act.42

Irreparable harm is an injury that, “cannot be undone through monetary

damages,”43 or for which monetary damages are “especially difficult” to compute.44

The Trademark Modernization Act provides that a plaintiff that seeks an injunction

regarding trademark infringement “shall be entitled to a rebuttable presumption of

irreparable harm upon a finding of a violation identified in this subsection in the case

of a motion for a permanent injunction or upon a finding of likelihood of success on

the merits.”45 However, “a substantial period of delay” demonstrates “that there is no

apparent urgency to the request for injunctive relief.”46

40 R. Doc. 2 at p. 4.

41 R. Doc. 4 at p. 16.

42 R. Doc 10 at p. 4.

43 Deerfield Med. Ctr. v. City of Deerfield Beach, 661 F.2d 328, 338 (5th Cir. 1981) (citations omitted).

44 Mississippi Power & Light Co. v. United Gas Pipe Line Co., 760 F.2d 618, 630 n. 12 (5th Cir. 1985).

45 15 U.S.C. §1116(a).

46 High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1557 (Fed. Cir. 1995).

Evidence provided to the Court Plaintiff first contacted counsel for Defendant

about its registration of “Total90” in December 2024.47 Nearly eleven months later,

and after numerous communications, seemingly in some and clearly in others,

seeking monetary payment to give up its registration of the mark, Plaintiff filed the

present suit and moved for the instant TRO.48 Sister courts in this Circuit have noted

that “[w]hen an emergency exists, people act accordingly.”49 A party suffering

immediate, irreparable harm “would and should seek injunctive relief rather than, or

in addition to, engaging in negotiations.”50 Filing a motion for a temporary

restraining order only after settlement negotiations have soured demonstrates a

delay sufficient to rebut the presumption of irreparable harm for the issuance of a

TRO for infringement under the 15 U.S.C. §1116(a).51 Because Plaintiff waited nearly

eleven months to seek emergency temporary injunctive relief from this Court in the

form of a TRO, the Court finds that the presumption under the Trademark

Modernization Act has been successfully rebutted and that Plaintiff has failed to

demonstrate that it will suffer immediate, irreparable harm should a TRO not issue.

47 R. Doc. 4-3, Declaration of Michael Harris, at ¶2.

48 See R. Doc. 4-7 at p. 3 (“My client holds a federal registration and remains willing to resolve this

matter amicably. We would much prefer to negotiate a mutually beneficial agreement rather than

escalate”) and at p. 11 (“I remain committed to a peaceful and mutually beneficial resolution, as you’ve

suggested is possible, and want to ensure my approach doesn’t inadvertently trade on Nike’s

goodwill”); see also R. Docs. 4-4, 4-8, and 4-9.

49 Massimo Motor Sports LLC v. Shandong Odes Indus. Co., No. 3:21-CV-02180-X, 2021 WL 6135455,

at *2 (N.D. Tex. Dec. 28, 2021).

50 Ronaldo Designer Jewelry, Inc. v. Cox, No. 1:17-CV-2-DMB-DAS, 2017 WL 3879095, at *11 (N.D.

Miss. Sept. 5, 2017).

51 See Gonannies, Inc. v. Goupair.Com, Inc., 464 F. Supp. 2d 603, 609 (N.D. Tex. 2006); see also Boire

v. Pilot Freight Carriers, Inc., 515 F.2d 1185, 1193 (5th Cir. 1975) (finding that a district court did not

abuse its discretion in denying temporary relief after a three-month delay).

IV. CONCLUSION

Because the Court finds that Total90 has not met its burden to prove a

substantial likelihood of success on the merits of its claim and further has not met its

burden to show or a substantial threat of irreparable harm, it need not address

whether Plaintiff has shown that the threatened injury, if the injunction is denied,

outweighs the threatened harm to defendant and that the public interest is not

impaired by the issuance of a TRO.

For the reasons set forth above,

IT IS HEREBY ORDERED that Plaintiffs Motion for a Temporary

Restraining Order®? is DENIED.

New Orleans, Louisiana, November 26, 2025.

(Chand , & Vitae

WENDY B.IVITTER

United States District Judge

52 R. Doc. 2.