Opinion

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF LOUISIANA

TOTAL90, LLC CIVIL ACTION

VERSUS NO. 25-2325

NIKE, INC. SECTION: D(3)

REASONS FOR ORDER

Before the Court is a Motion for Preliminary Injunction filed by

Plaintiff/Counter-Defendant Total90, LLC (“T90”).1 Defendant/Counter-Plaintiff

Nike, Inc. (“Nike”) has filed a Response in Opposition.2 Plaintiff has filed a Reply.3

On January 8, 2026, the Court held an evidentiary hearing and oral argument on the

motion.4 Following the hearing, the Court ordered supplemental briefing.5 Each

party filed a memorandum.6 After careful consideration of the parties’ briefing, oral

arguments, the evidence presented, the record, and the applicable law, the Court

DENIED the Motion for Preliminary Injunction during a telephone status conference

and advised that written reasons for the Order would follow.7 These written Reasons

for Order follow.

1 R. Doc. 2. While the Motion is styled as Plaintiff’s Motion for Temporary Restraining Order and

Preliminary Injunction, the Court has already ruled on the motion as it relates to a Temporary

Restraining Order. See R. Doc. 21.

2 R. Doc. 4.

3 R. Doc. 10.

4 R. Doc. 41.

5 R. Doc. 40.

6 R. Docs. 42 and 43.

7 See R. Doc. 50.

I. FACTUAL AND PROCEDURAL BACKGROUND8

This case arises out of a dispute over the trademark “Total 90.”9 In 2000, Nike,

a global purveyor of athletic goods, introduced its brand “Total 90,” which consisted

of a line of soccer products, including cleats and jerseys.10 Throughout the 2000s, Nike

released a series of products in the Total 90 line of products, for which it possessed

the trademark “Total 90.” Nike, however, allowed its registration of its “Total 90”

trademark to lapse in April 2019. A little less than three years later, in February

2022, Total90, LLC filed trademark applications for the phrase “Total90” which

registration was issued in September 2024.11

Total90, LLC, (“Plaintiff”) filed suit against Nike, Inc. (“Defendant”) on

November 14, 2025 alleging that Defendant continued to use the Total 90 trademark

in interstate commerce in connection with the sale of Nike shoes.12 That same day,

the Plaintiff filed a Motion for Temporary Restraining Order and Preliminary

Injunction.13 In that motion, the Plaintiff argues that it is likely to succeed on the

merits since it holds valid federal registrations for the trademark which the

Defendant abandoned and the Defendant’s reintroduction of use in 2025 cannot

revive the Defendant’s rights.14 Addressing the irreparable harm prong necessary for

an injunction, the Plaintiff contends that “without a TRO, Nike’s marketing blitz will

8 The Court detailed the factual and procedural background of the case in its Order and Reasons on

the Motion for Temporary Restraining Order (R. Doc. 21), which it incorporates here by reference.

9 R. Doc. 1

10 The parties stipulated to this timeline during the hearing on the present motion. See R. Doc. 39 at

pp. 5-6.

11 R. Doc. 1.

12 Id.

13 R. Doc. 2.

14 Id.

continue diverting customers, eroding brand equity, and destroying Plaintiff’s

reputation built over six years,” which harms are not compensable by money damages

alone.15 The Plaintiff summarily argued that the balance of equities and public

interest factors also weighed in its favor.16 After considering the briefing by the

parties as well as the exhibits provided, the Court denied the Motion for Temporary

Restraining Order.17 Plaintiff’s Motion for Preliminary Injunction was thereafter set

for a hearing.

That hearing was held on January 8, 2026.18 Plaintiff called Coach Hugh

Bartlett, CEO and Founder of Total90, LLC, to testify, and the Defendant called Agra

Diapari, Senior Director of Footwear Product Management of Nike Sportswear Icons,

at Nike, Inc.19 Both parties entered physical exhibits into evidence. Following the

hearing, the Court requested supplemental briefing on two issues: under the Lanham

Act as applied to this case, (1) what type of use constitutes “use in commerce” and (2)

how much use constitutes “continuous use.”20 The parties timely filed supplemental

memoranda.21

The Plaintiff contends that it holds valid United States Trademark

Registrations for the mark “Total90,” “covering apparel, footwear, and digital

entertainment services related to soccer” and began using the mark in commerce in

15 Id.

16 Id.

17 R. Doc. 21.

18 R. Doc. 41.

19 See R. Docs. 39, 41.

20 R. Doc. 40.

21 R. Docs. 42 and 43.

January 2022.22 It claims that the Defendant, which had previously owned

registrations for the “Total 90” mark, abandoned its registration in 2019 and then

reintroduced products using the mark in March 2025.23 The Plaintiff argues that

“Nike’s relaunch has caused actual marketplace confusion, reverse confusion, and

dilution of Plaintiff’s mark” and constitutes trademark infringement, false

designation of origin, as well as violations of state laws, including the Louisiana

Unfair Trade Practices Act and state trademark infringement.24 The Plaintiff

maintains that all four factors for a preliminary injunction are met because (1) it is

substantially likely to succeed on its claim of trademark infringement based on

reverse confusion, (2) the “loss of control over one’s trademark and the resulting

injury to goodwill constitute irreparable harm per se under the Lanham Act,” (3) the

balance of equities strongly favors Total90, and (4) “[p]reventing consumer confusion

and protecting legitimate trademark rights serves the public interest.”25

The Defendant counters that the Plaintiff has not established any of the factors

necessary for the issuance of a preliminary injunction.26 First, the Defendant argues

that Plaintiff has failed to show a likelihood of success on the merits.27 The Defendant

supports this argument by explaining that the Plaintiff has the burden of showing

that it is the “senior user” of the mark and that the Plaintiff has failed to carry that

burden.28 The Defendant advises that the Plaintiff’s motion “overlooks U.S.

22 R. Doc. 2 at p. 2.

23 Id.

24 Id.

25 Id. at pp. 3-5.

26 R. Doc. 4.

27 Id.

28 Id.

trademark law’s fundamental axiom: that it is priority of use, not registration, that

gives an entity rights to a trademark.”29 While the Defendant acknowledges that it

let the Total 90 trademark lapse in the U.S., it contests the Plaintiff’s assertion that

it “abandoned” its trademark, arguing that the trademark is abandoned only: “(i)

when its use has been discontinued with intent not to resume such use; or (ii) when

conduct of the owner ‘causes the mark to become the generic name for the goods or

services.’”30 In further support of its argument that the Plaintiff has failed to show a

likelihood of success on the merits, the Defendant claims that the Plaintiff has not

acknowledged or addressed the Fifth Circuit standard to establish a likelihood of

confusion, nor has the Plaintiff met its burden in this regard, as the Plaintiff “comes

to this Court with only the conclusory statement that the instant matter is a ‘classic

reverse confusion scenario.’”31 The Defendant emphasizes that the Plaintiff has not

demonstrated a substantial threat of irreparable injury, as the Trademark

Modernization Act’s presumption of irreparable harm does not apply because a

substantial likelihood of success on the merits has not been shown.32 Further, the

Defendant contends that the presumption of irreparable harm is rebutted by

Plaintiff’s “unreasonable fifteen-month delay in seeking emergency injunctive

relief.”33 Additionally, the Defendant notes that the Plaintiff has demonstrated that

29 Id. Defendant further contends that Plaintiff’s “fraudulently obtained registration will be proven

invalid and is now subject to a cancellation proceeding” before the Trademark Appeal Board.

30 R. Doc. 4, quoting 15 U.S.C. § 1127.

31 R.Doc. 4.

32 Id. at p. 16.

33 Id. Defendant further maintains that, during that time period, “Plaintiff spent nine months

unsuccessfully trying to extract a windfall from Nike, before finally following through on its threat to

file the instant motion.”

it believes that monetary damages would compensate for any injury from the

Defendant’s alleged infringement, obviating the need for an injunction.34

Next, the Defendant contends that the Plaintiff has also failed to show that the

balance of equities weighs in favor of an injunction as the Plaintiff has not

demonstrated that its interest would outweigh the damage that an injunction would

cause Defendant.35 As to the fourth preliminary injunction factor, the Defendant

argues that “[i]t would not be in the public interest to grant a motion that would

endorse Plaintiff’s attempt to manipulate and exploit the judicial system for this

improper purpose” and because the Plaintiff has failed to show that an injunction

would protect “legitimate trademark interests.”36 Lastly, the Defendant contends

that, should the Court grant a preliminary injunction, that the Plaintiff be required

to post a bond of no less than $20 million due to the material hardships that the

Defendant claims it would suffer from a wrongly-entered injunction.37

The Plaintiff replies that this case presents a “straightforward abandonment

analysis under the Lanham Act” and the evidence the Defendant presents

“demonstrates only past fame, not ongoing use in commerce.”38 Furthermore, it

contends that “[o]nce a mark is abandoned, priority passes to the first bona fide

adopter,” in this case, being Plaintiff.39 Addressing the likelihood of confusion factors

for the first time, the Plaintiff states that “the relevant factors strongly favor Plaintiff

34 Id. at pp. 18-19.

35 Id. at pp. 19-20.

36 Id. at p. 22.

37 Id. at p. 23.

38 R. Doc. 10 at p. 2.

39 Id. at p. 3. Plaintiff does not cite any authority for this statement.

and reinforce the likelihood of reverse confusion” because “channels of trade and

purchasing demographics materially intersect, as both parties sell athletic products

online and through general retail outlets to similar consumers.”40

Regarding actual confusion, the Plaintiff claims that there has been actual

confusion but that “[t]he absence of extensive actual confusion at this early stage is

unsurprising where the junior user’s marketing is new and dominant.”41 Plaintiff

contends that it will suffer irreparable harm should the Court not enjoin the

Defendant because the Defendant’s use of the mark threatens to displace the Plaintiff

from the market and that the earlier settlement discussions between itself and the

Defendant “do not negate irreparable harm; they demonstrate diligence and an effort

to avoid litigation.”42 Lastly, the Plaintiff reiterates that the balance of equities favors

it because “faces immediate loss of control over its brand identity and significant

marketplace displacement” and that an injunction would advance the public interest

by preventing consumer confusion and preserving the integrity of the trademark

system.43

II. LEGAL STANDARD

“A preliminary injunction is an extraordinary remedy.”44 To secure a

preliminary injunction, the movant must establish:

(1) a substantial likelihood of success on the merits,

40 Id.

41 Id.

42 Id. at p. 4. Plaintiff also contends that the Court should disregard any argument or information

regarding the earlier settlement discussions between the parties for a number of reasons, including

that “the record reflects nothing more than ordinary compromise negotiations.”

43 Id. at pp. 4-5.

44 Atchafalaya Basinkeeper v. United States Army Corps of Eng'rs, 894 F.3d 692, 696 (5th Cir. 2018).

(2) a substantial threat of irreparable injury if the injunction is not

issued,

(3) that the threatened injury if the injunction is denied outweighs any

harm that will result if the injunction is granted, and

(4) that the grant of an injunction will not disserve the public interest.45

The party requesting an injunction “bear[s] the burden of showing that they satisfy

each of these elements.”46 Because a preliminary injunction is an extraordinary

remedy, a court should not grant one “unless the party seeking it has ‘clearly carried

the burden of persuasion’ on all four requirements.”47 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.”48

The Court proceeds to an analysis of each of the elements of a preliminary

injunction.

III. ANALYSIS

1. Substantial Likelihood of Success on the Merits

To determine whether the Plaintiff has demonstrated a substantial likelihood

of success on the merits of its trademark infringement claim, the Court must first

establish if the Plaintiff has demonstrated a substantial likelihood of proving that it

is the senior user of the mark. The Plaintiff must then show a likelihood of confusion

45 Janvey v. Alguire, 647 F.3d 585, 595 (5th Cir. 2011) (quoting Byrum v. Landreth, 566 F.3d 442, 445

(5th Cir. 2009)).

46 Perez v. City of San Antonio, No. 23-50746, 2025 WL 3559986, at *17 (5th Cir. Dec. 12, 2025).

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

Lake Charles Diesel, Inc. v. Gen. Motors Corp., 328 F.3d 192, 195–96 (5th Cir.2003)).

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

between its mark and that of the Defendant.49 Finally, the Plaintiff must show that

the likelihood of confusion will actually cause it irreparable injury for which there is

no adequate legal remedy.50 In its analysis of likelihood of success on the merits for

the purpose of a preliminary injunction, the Court will first analyze the mark users’

relative seniority and then address the claim of infringement.

a. The Senior User of the Mark

The Plaintiff argues that it is the senior user of the mark because it owns the

trademark registrations for “Total90” covering apparel, footwear, and digital

entertainment services related to soccer.51 While acknowledging that the Defendant

previously owned the trademark, the Plaintiff contends that it is the senior user of

the mark because the Defendant’s “Total 90” mark was canceled for nonuse in 2019

and had not been used again by the Defendant until 2025.52 The Plaintiff states that

Defendant cannot identify any “bona fide sales, shipments, advertising campaigns,

retail distribution or inventory” of Total 90 goods in the decade preceding the 2024

relaunch of Total 90 products.53 The Plaintiff contends that, because the Defendant

abandoned the mark, priority of use of the mark would pass to the first bona fide

49 Union Nat. Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, Tex., 909 F.2d 839, 844

(5th Cir. 1990) (“A party seeking an injunction for trademark infringement must clear several hurdles

in order to prevail. First, he must prove that the name he seeks to protect is eligible for protection. He

must then prove he is the senior user. Having proven these elements he must then show a likelihood

of confusion between his mark and that of the defendant. Finally, because he's asking for the equitable

remedy of an injunction, he must show that the likelihood of confusion will actually cause him

irreparable injury for which there is no adequate legal remedy.”).

50 Id.

51 R. Doc. 2 at ¶ 1.

52 Id. at p. 4.

53 R. Doc. 10 at p. 2.

adopter, namely, Plaintiff.54 Defendant Nike disagrees with Plaintiff Total90’s

characterization of the facts. The Defendant argues that it never abandoned the mark

and that it has continuously used the “Total 90” mark for “almost three decades,”

having “never intended to stop using the mark.”55 As such, the Defendant claims that

it “has longstanding priority in TOTAL 90 over Plaintiff” and that “Plaintiff cannot

establish ownership of a legally protectable mark.”56

“Ownership of trademarks is established by use, not by registration.”57 “The

first one to use a mark is generally held to be the ‘senior’ user.”58 The senior user of

a mark “is entitled to enjoin other ‘junior’ users from using the mark, or one that is

deceptively similar to it.”59 However, the senior user “may not enjoin others from

using the mark if the likelihood of confusion between his product and the infringer’s

is minimal or non-existent.”60

Under the Lanham Act, a mark is considered to be abandoned either “(1)

[w]hen its use has been discontinued with intent not to resume such use” or “(2)

[w]hen any course of conduct of the owner, including acts of omission as well as

commission, 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.”61

54 Id. at p. 3.

55 R. Doc. 4 at pp. 12-13.

56 Id. at p. 13.

57 Id. at 842; see also 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:1.50 (5th ed. 2026)

(“it is not registration, but only actual use of a designation as a mark that creates rights and priority

over others.”).

58 Id.

59 Id. at 842-43.

60 Id. at 843.

61 15 U.S.C. § 1127.

Under the statute, “[n]onuse for 3 consecutive years shall be prima facie evidence of

abandonment,” and “‘[u]se’ of a mark means the bona fide use of such mark made in

the ordinary course of trade, and not made merely to reserve a right in a mark.”62

Such use equates to “use in commerce.”63 “The burden of proof is on the party claiming

abandonment.”64

The Plaintiff’s argument that it is the senior user turns on whether it can

demonstrate that the Defendant abandoned and failed to use the Total 90 mark as

the seniority of users of the mark is determined by their usage of the mark, not

registration of the mark. Plaintiff argues that the presumption of abandonment due

to nonuse for three consecutive years applies to this case and that such period began

in 2019.65 Plaintiff contends that the evidence of usage during this 3-year period to

which the Defendant refers merely consists of “sporadic and token uses,” which is

“not real use” under the Lanham Act.66 The Defendant responds that “token use” as

a legal doctrine in trademark jurisprudence applies “when somebody is trying to

obtain rights to a trademark in the first place” and that, in a discussion of whether

62 Id.

63 Perry v. H. J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 474 (5th Cir. 2021); see also Action Ink, Inc.

v. New York Jets, LLC, No. CV 12-46, 2013 WL 12106878, at *4 (E.D. La. June 20, 2013), adhered to

on denial of reconsideration, No. CV 12-46, 2013 WL 5532781 (E.D. La. Oct. 4, 2013), aff'd sub nom.

Action Ink, Inc. v. New York Jets, L.L.C., 576 F. App'x 321 (5th Cir. 2014) (“‘Use’ for abandonment

purposes is equivalent to ‘use in commerce’ under 15 U.S.C. § 1127.”).

64 Vais Arms, Inc. v. Vais, 383 F.3d 287, 293 (5th Cir. 2004).

65 R. Doc. 39 at p. 65 (“THE COURT: So I want to go back to my question. What are the three years of

nonuse that you are relying on? MR. BRADLEY: Starting in 2019.”).

66 Id. at p. 62.

an entity abandoned a trademark, “even a single instance of use is sufficient against

a claim of abandonment if such use is made in good faith.”67

The Fifth Circuit explicitly adopted such a rule in Perry v. H. J. Heinz Co.

Brands, L.L.C., in which it held that “[a]bandonment generally requires a complete

discontinuance of the trademark’s use and even minor or sporadic good faith uses of

a mark will defeat the defense of abandonment.”68 During the hearing on this motion,

Agra Diapari, Senior Director of Footwear Product Management of Nike Sportswear

Icons, testified that Defendant has never stopped using the Total 90 brand in the

marketplace,69 and his affidavit enumerates several instances of use of the Total 90

mark between 2019, the year in which Plaintiff claims Defendant abandoned the

mark, and the present, including releasing Total 90 soccer balls, a type of Total 90

cleat, and a line of Total 90 clothing.70 The witness further testified that Nike never

stopped using the Total 90 brand in the marketplace since its introduction in 2000.71

The Court found the witness credible, and nothing in the record disputed his

testimony.

Plaintiff relies on the Fifth Circuit’s holding in Exxon Corp. v. Humble

Exploration Co., Inc., that “seemingly similar sporadic and de minimis use could

serve as grounds for registration cancellation” and argues that this sporadic or

“token” usage of the mark does not constitute “use in commerce” under the Lanham

67 Id. at pp. 82-83 (quoting Electro Source, LLC v. Brandess–Kalt–Aetna Group, Inc., 458 F.3d 931, 938

(9th Cir. 2006)).

68 994 F.3d 466, 475.

69 R. Doc. 39 at p. 37

70 R. Doc. 4-2 at ¶¶ 20-24. He further brought as an exhibit a soccer cleat with the Total 90 brand

which was developed and designed by his team in 2023.

71 R. Doc. 39 at p. 39.

Act.72 However, in Perry, the Fifth Circuit distinguished Humble as applicable “in the

context of a trademark maintenance program,” in which a company makes “only

token or sporadic use of its” mark “to reserve rights to the trademark.”73 The slightest

cessation of use does not cause “a trademark to roll free, like a fumbled football, so

that it may be pounced on by any alert opponent.”74 “Intermittent periods of nonuse

or low level use do not result in abandonment if the business is more or less

continuous.”75 The Plaintiff has failed to show that any intermittent period of nonuse

or low level use by the Defendant was coupled with the intent not to resume such use.

The Court further finds that the Plaintiff has not proven that the Defendant’s usage

of the “Total 90” mark was part of a trademark maintenance program, consisting of

only token or sporadic use meant to reserve rights in the mark at issue.

Plaintiff Total90 here has a “heavy burden” in order to demonstrate that

Defendant Nike abandoned the mark and in “the absence of definitive proof of a

trademark maintenance program like the one in Humble,” that burden has not been

met. 76 Based on the record evidence from the Defendant through Diapari’s affidavit

and testimony, along with the exhibits submitted by both parties, the Court finds

that the Plaintiff has not met this burden to demonstrate the Defendant’s

72 Perry, 994 F. 3d at 475 (citing Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96 (5th Cir.

1983)); R. Doc. 42 at p. 2.

73 Id.

74 2 MCCARTHY § 17:14 (5th ed.) (quoting Continental Distilling Corp. v. Old Charter Distillery Co.,

188 F.2d 614, 619, 87 U.S.P.Q. 365 (D.C. Cir. 1950)).

75 Id. (quoting Interstate Brands Corp. v. Way Baking Co., 403 Mich. 479, 483, 270 N.W.2d 103, 105–

06 (1978)).

76 Perry, 994 F.3d at 476.

abandonment of the mark and thus that it, and not the Defendant, is the senior user

of the mark.77

Furthermore, the statutory presumption of abandonment after three

consecutive years of non-use is just that—a presumption. Even if the Court had found

that Plaintiff had made a showing that it was likely to succeed in demonstrating that

the Defendant had not used the mark for three consecutive years, the Defendant

could rebut such a presumption with evidence evincing an intent to resume such

use.78 The record evidence cited above directly rebuts that presumption.79

In sum, Court finds that Plaintiff Total90, LLC, has not carried its burden of

a substantial likelihood of success in showing that it is the senior user of the mark, a

requirement to enjoin other users from using the mark.80 Since the Court has

determined that the Plaintiff has failed to carry its burden to show that it was the

senior user of the mark, the Court need not address whether the Plaintiff carried its

burden of showing a substantial likelihood of confusion between its mark and

Defendant’s mark. However, even if the Plaintiff had shown a substantial likelihood

of success that it was the senior user of the “Total 90” mark, the Court also finds that

the Plaintiff has not met its burden of demonstrating a substantial likelihood of

77 To the extent that Total90 argues that the United States Supreme Court’s decision in Abitron

Austria GmbH v. Hetronic Int’l, Inc. requires courts to consider only domestic use of a mark when

assessing “use in commerce” under the Lanham Act, the Court does not consider any of Nike’s

arguments regarding the usage or maintenance of the “Total 90” mark in foreign jurisdictions in its

decision on the present motion. 600 U.S. 412, 143 S. Ct. 2522, 216 L. Ed. 2d 1013 (2023).

78 See 15 U.S.C. § 1127.

79 See supra n. 60-61.

80 Romac Env't Servs. LLC v. Wildcat Fluids LLC, No. 6:20-CV-00581 LEAD, 2022 WL 421416, at *4

(W.D. La. Feb. 10, 2022) (citing Union Nat. Bank of Tex., Laredo, Tex. v. Union Nat. Bank of Tex.,

Austin, Tex., 909 F.2d 839, 844–45 (5th Cir. 1990)).

success regarding the claim of trademark infringement, which also requires a

showing of confusion.

b. Trademark Infringement

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.’”81 For a party to have a legally protectable trademark, it

must be either inherently distinctive or must acquire distinctiveness through a

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

that the mark[ ] [is] inherently distinctive.’”82 To determine whether a likelihood of

confusion has occurred, a court must consider:

(1) the type of trademark; (2) mark similarity; (3) product similarity; (4)

outlet and purchaser identity; (5) advertising media identity; (6)

defendant's intent; (7) actual confusion; and (8) care exercised by

potential purchasers.83

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 to find

that a likelihood of confusion exists.84 While not required, the seventh digit, actual

confusion, constitutes the “best evidence of a likelihood of confusion.”85

81 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)).

82 Id.

83 Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir. 2009)

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

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

The “type of trademark” “refers to the strength of the senior mark.”86 “Stronger

marks are entitled to greater protection.”87 Two factors are analyzed when

determining the strength of a mark: “(1) the mark's position along the distinctiveness

spectrum, and (2) the standing of the mark in the marketplace.”88 The Court finds

that based on the evidence in the record regarding the usage of the “Total 90” mark

over time, as well as the identification of the mark “Total 90” as “iconic” by witnesses

for both the Plaintiff and the Defendant,89 that the mark is a strong mark and

therefore is entitled to greater protection. Since the Plaintiff failed to carry its burden

to show that it is the senior user, this factor is neutral.

As to mark similarity, “[t]he degree of similarity between marks is determined

by comparing the marks' appearance, sound, and meaning.”90 “Similarity of

appearance is determined on the basis of the total effect of the designation, rather

than on a comparison of individual features” and “courts should give more attention

to the dominant features of a mark.”91 Here, the Court finds that there is a likelihood

of success in showing that the “Total90” and “Total 90” marks are similar based on

this test and thus the Court finds that this digit weighs in favor of a finding of a

likelihood of confusion.

86 Xtreme Lashes, LLC, 576 F.3d at 227.

87 Id.

88 Rex Real Est. I, L.P. v. Rex Real Est. Exch., Inc., 80 F.4th 607, 621 (5th Cir. 2023).

89 The Court notes that the word “iconic” appears sixteen times in the hearing transcript and that each

party’s witness identified the “Total 90” mark as iconic. See R. Doc. 39.

90 Id. at 621–22 (quoting Elvis Presley Enters., Inc., 141 F.3d at 201) (internal quotations omitted).

91 Xtreme Lashes, LLC, 576 F.3d at 228.

The next digit is product similarity. “The greater the similarity between the

products and services, the greater the likelihood of confusion.”92 Here, the products

are relatively similar. Both the Plaintiff and the Defendant produce soccer balls and

other equipment for soccer. While there was no evidence presented that the Plaintiff

produces lifestyle shoes similar to the Defendant’s, the soccer equipment produced is

relatively similar. The Plaintiff, however, uses the mark on a fantasy soccer app, a

product different from any that the Defendant produces.93 The Court finds that this

digit is, at most, neutral regarding the Plaintiff’s ability to make a showing of a

likelihood of confusion on this digit.

As to the digit regarding the identity of retail outlets and of purchasers,

“[d]issimilarities between the retail outlets for and the predominant consumers of

plaintiff's and defendant's goods lessen the possibility of confusion, mistake, or

deception.” 94 Defendant has noted that “Plaintiff did not provide evidence of the same

or similar retail outlets as Nike.”95 The Court agrees. While there is evidence that

both parties’ products appeal to a similar group of consumers interested in the sport

of soccer, which creates “an identity of purchasers,” there is “a substantial difference

in the nature of the parties’ retail outlets.”96 The fact that both parties use the

Internet for sales is insufficient standing alone to support a finding of likelihood of

92 Exxon Corp. v. Texas Motor Exch. of Houston, Inc., 628 F.2d 500, 505 (5th Cir. 1980).

93 See R. Doc. 39 at pp. 10-11.

94 Exxon Corp., 628 F.2d at 505.

95 R. Doc. 39 at pp. 86-87.

96 Exxon Corp., 628 F.2d at 505.

confusion.97 After analyzing the little evidence regarding the identity of retail outlets

and of purchasers, the Court finds that evidence in the record does not support a

showing of a likelihood of confusion.

Next, as to the identity of advertising media, courts in this circuit look to “the

similarity between the parties' advertising campaigns. The greater the similarity in

the campaigns, the greater the likelihood of confusion.”98 There is very little evidence

in the record regarding the identity of advertising media. Plaintiff presented evidence

that it used the mark to sponsor a youth soccer club in Brazil, the Louisiana Fire club

soccer team in New Orleans, and the Louisiana State University men’s club soccer

team.99 Defendant presented evidence regarding its national television

advertisements, social media campaigns, and Internet advertisements.100 Based on

the minimal evidence in the record, the evidence does not reflect a great similarity

between the identity of the advertising media used by the parties. The record

supports that the Defendant has far wider and broader advertising than the Plaintiff.

The Court finds that Plaintiff has not demonstrated a likelihood of confusion as to

this digit.

Regarding the Defendant’s intent, courts look to “whether the defendant

intended to derive benefits from the reputation of the plaintiff”101 Here, the Plaintiff

has provided no such evidence that the Defendant intended to “palm off” its goods as

97 Dallas Cowboys Football Club, Ltd. v. Am.'s Team Props., Inc., 616 F. Supp. 2d 622, 639 (N.D. Tex.

2009) (“‘The Internet’ is simply too broad to assert complete overlap of retail outlets; it is akin to saying

‘stores’ or ‘distributors.’”).

98 Rex, 80 F.4th at 623 (internal quotations omitted) (citation modified).

99 See e.g., R. Doc. 39 at pp. 18-19.

100 See R. Doc. 4-2, Declaration of Agra Diapari.

101 Future Proof Brands, L.L.C., 982 F.3d at 296 (5th Cir. 2020).

the Plaintiff’s goods.102 The Court finds that Plaintiff’s failure to provide any evidence

as to this digit fails to support a finding of a likelihood of confusion.

Regarding the actual confusion digit, the Plaintiff’s Founder and CEO Bartlett

testified that “last night a bunch of parents came up to me and asked if I was working

with Nike. I kind of chuckled and said, ‘Actually, we are in the middle of a lawsuit

right now.’”103 He further testified that the parents mentioned that they were

confused because “[t]hey were in a store and they saw soccer balls and jerseys with

Total 90 on them and just assumed we were working together.”104 The Defendant

argues, however, that while “evidence of actual confusion is one of the best types of

confusion, it is very clear that that rule applies only if the evidence of actual confusion

is relatively significant.”105 The Court agrees with the Defendant. This isolated

incident, which lacks corroborating evidence, is not enough of a showing to

demonstrate that actual confusion has occurred and that a likelihood of confusion

exists.106 While the anecdotal evidence from Bartlett’s testimony is relevant—and not

disputed by any other evidence— its “weight is lessened” by a high volume of business

transacted by the parties in the soccer space.107 Had Nike had truly “swamped” the

102 Amicus Commc'ns, L.P. v. Hewlett-Packard Co., No. CIV.A.SA-98CA1176PMA, 1999 WL 495921,

at *15 (W.D. Tex. June 11, 1999) (examining whether a defendant undertook the use of a mark “with

the plan to ‘palm off’ [the defendant’s] goods as those of plaintiff's”).

103 R. Doc. 39 at pp. 19-20.

104 R. Doc. 39 at pp. 19-20.

105 Id. at p. 88.

106 See Holiday Inns, Inc. v. Holiday Out In Am., 481 F.2d 445, 449 (5th Cir. 1973); Amicus Commc'ns,

L.P. v. Hewlett-Packard Co., No. CIV.A.SA-98CA1176PMA, 1999 WL 495921, at *16 (W.D. Tex. June

11, 1999) (holding that actual confusion, while not required, is the best evidence of a likelihood of

confusion “…only if the evidence of actual confusion is relatively significant”).

107 Rex, 80 F.4th at 627 (citing Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass'n, 651 F.2d 311,

319 (5th Cir. 1981) (“In determining the likelihood of confusion, however, a court must consider all of

the evidence, including countervailing circumstances which lessen the impact of asserted instances of

confusion.”)).

market in which the Plaintiff was selling its goods, more incidents of actual confusion

would have occurred and thus should have, or would more likely have, been entered

into evidence during the hearing.108 The Court cannot speculate on that. Relying on

the record evidence, the Plaintiff has not shown significant actual confusion.

Lastly, as to the degree of care exercised by potential purchasers, courts look

“to both the kind of goods or services offered and the kind of purchasers.”109 “Where

items are relatively inexpensive, a buyer may take less care in selecting the item,

thereby increasing the risk of confusion ... However, a high price tag alone does not

negate other [digits of confusion], especially if the goods or marks are similar.”110

Here, while the goods are relatively similar, Nike’s products bearing the “Total 90”

mark are not inexpensive and also contain other marks, including the Nike swoosh

logo.111 Additionally, consumers interested in soccer are likely to be selective about

their equipment and goods purchased, especially when the price is not cheap.

Therefore, the Court finds that the Plaintiff has not shown a likelihood of success

regarding this digit.

While the Plaintiff has shown a likelihood of success on some of the digits and

has failed to show as such on others, the Court, having weighed the digits of confusion

as required by binding Fifth Circuit jurisprudence, finds that the Plaintiff has failed

108 Id.

109 Id.

110 Id. (quoting Streamline, 851 F.3d at 458).

111 See R. Doc. 39 at p. 87 (“The Nike Total 90 product comes in a Nike box. There is a beautiful Nike

Swoosh on the side of it. I have another just demonstrative product of a Nike Total 90 shirt. Again, it's

Nike hangtags and there's a Nike Swoosh on that.”); see also Cohn v. Petsmart, Inc., 281 F.3d 837, 842

(9th Cir. 2002) (“The emphasis on these housemarks ‘has the potential to reduce or eliminate likelihood

of confusion.’”) (quoting 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:47 (4th ed.1997)).

to show a substantial likelihood of success on its trademark infringement claim.

Further, and importantly, the Plaintiff failed to carry its burden to show actual

confusion, which constitutes the “best evidence of a likelihood of confusion.”112 Even

if the Plaintiff had demonstrated that it was the senior user of the mark—which it

did not—the Plaintiff has failed to meet its burden of demonstrating a substantial

likelihood of success on its claim of trademark infringement, and thus the Court must

deny its request for a preliminary injunction. Having found that the Plaintiff has not

met its burden as to the first prong of a preliminary injunction analysis, the Court

need go no further; however, the Court finds it appropriate to address the second

preliminary injunction factor: a substantial threat of irreparable harm.

2. Substantial Threat of Irreparable Harm

The Plaintiff argues that it would suffer irreparable harm should a preliminary

injunction not be issued due to the World Cup being played in the United States113

this summer. The Plaintiff contends that because the “World Cup is going to be a

huge event this coming summer and it's going to take over the United States,” it

would suffer irreparable harm should Nike continue to sell products in their Total 90

product line.114 Defendant Nike responds that “[t]here is no evidence of irreparable

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

113 The Court takes judicial notice of the fact that the 2026 FIFA World Cup will feature matches in

Canada and Mexico, in addition to those taking place in the United States. See FIFA,

https://perma.cc/S4WK-2QPL.

114 R. Doc. 39 at p. 67. Further, to the extent that the Plaintiff relies on the current World Cup soccer

games taking place in the U.S. to support irreparable injury, the Court understands the World Cup

more as an opportunity for financial gain rather than irreparable harm. The Court does not mean to

express any disapproval of financial gain. Instead, the Court reiterates that irreparable harm, by its

very definition, cannot be compensated by money.

harm in light of the very lengthy delay” in filing the present suit and motion for

injunctive relief.115

Pursuant to the Lanham Act, “a plaintiff seeking a preliminary injunction

against infringement ‘shall be entitled to a rebuttable presumption of irreparable

harm ... upon a finding of likelihood of success on the merits.’”116 Having found that

the Plaintiff has not demonstrated a substantial likelihood of success on the merits

of its trademark infringement claim, the Court finds that this rebuttable presumption

does not apply because the presumption is contingent on a finding of a likelihood of

success.

Further, the Court finds that the Defendant has rebutted the presumption

under the Lanham Act due to the delay between the alleged infringement and filing

suit in this Court. When seeking a preliminary injunction, the party requesting it

“must generally show reasonable diligence.”117 “[D]elay in seeking a remedy is an

important factor bearing on the need for a preliminary injunction.”118 “[A] substantial

period of delay” demonstrates “that there is no apparent urgency to the request for

injunctive relief.”119 Record evidence demonstrates that Plaintiff first contacted

115 Id. at p. 90.

116 Whirlpool Corp. v. Shenzhen Sanlida Elec. Tech. Co., Ltd., 80 F.4th 536, 546 (5th Cir. 2023) (quoting

15 U.S.C. § 1116)..

117 Benisek v. Lamone, 585 U.S. 155, 159, 138 S. Ct. 1942, 1944, 201 L. Ed. 2d 398 (2018).

118 W. Sur. Co. v. PASI of LA, Inc., 334 F. Supp. 3d 764, 799 (M.D. La. 2018) (quoting Gonannies, Inc.

v. Goupair.Com, Inc., 464 F. Supp. 2d 603, 609 (N.D. Tex. 2006)).

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

1995); see also Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985) (“Preliminary injunctions

are generally granted under the theory that there is an urgent need for speedy action to protect the

plaintiffs' rights. Delay in seeking enforcement of those rights, however, tends to indicate at least a

reduced need for such drastic, speedy action.”); Boire v. Pilot Freight Carriers, Inc., 515 F.2d 1185,

1193 (5th Cir. 1975) (affirming the denial of injunctive relief after plaintiff waited three months to

seek injunctive relief).

counsel for Defendant about its registration of “Total90” in December 2024 after the

Plaintiff registered the mark.120 Nearly eleven months later, and after numerous

communications seeking monetary payment in exchange for abandoning its

registration of the “Total90” mark, the Plaintiff filed the present suit and moved for

the instant preliminary injunction.121 While the Plaintiff has argued that there still

would be irreparable harm should an injunction not be issued due to the immediacy

of the World Cup in the United States and the potential for the “Total90” brand to

grow organically in the next year,122 such potential harm does not ameliorate the fact

that it waited nearly a year to seek injunctive relief from this Court. This fact

significantly undermines the Plaintiff’s argument that such harm is irreparable.

For those reasons, even if it had shown that there was a substantial likelihood

of success on its trademark infringement claim, the Court finds that the Plaintiff has

not met its burden to demonstrate that there is a substantial threat of irreparable

harm should a preliminary injunction not issue in this case. For that additional

reason, the Court must deny the Plaintiff’s motion.

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

121 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. While Plaintiff maintains that the Court should not

consider the pre-suit communications between the parties, the Court finds them relevant in discussing

irreparable harm.

122 R. Doc. 39 at p. 78 (“And let's say we win at the end of all this and we get three, ten million dollars,

whatever it is. That is not the same as growing a brand in the heat of the World Cup. That could be a

much, much larger number that is going to overstep all of the amount that was spent by both parties

if it's done properly, which is what Mr. Bartlett has set up to happen during the World Cup.”).

3 The Remaining Preliminary Injunction Factors

Because the Court has found that the Plaintiff has not borne its burden of

showing (1) a substantial likelihood of success on the merits or (2) a substantial threat

of irreparable harm should an injunction not be issued, the Court need not consider

the remaining injunctions for the granting of a preliminary injunction: whether the

balance of equities weigh in movant’s favor and whether the public interest is

disserved by an injunction. !23

IV. CONCLUSION

For the foregoing reasons, because the movant has failed to carry its burden to

prove each of the elements of a preliminary injunction,

IT IS HEREBY ORDERED that Plaintiff Total90, LLC’s Motion for

Preliminary Injunction is DENIED.

New Orleans, Louisiana, June 22, 2026.

WENDY B. VITTER

United States District Judge

123 See Perez v. City of San Antonio, No. 23-50746, 2025 WL 3559986, at *17 (5th Cir. Dec. 12, 2025)

(The movant bears “the burden of showing that they satisfy each of these elements.”).

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