# Opinion

> District Court, E.D. Louisiana · June 22, 2026

URL: https://www.frixlaw.com/law-library/cases/11349086

## Case

- **Full name:** Total90, LLC v. Nike, Inc.
- **Court:** District Court, E.D. Louisiana
- **Decided:** June 22, 2026
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/11349086

## Opinion text

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.”).
24

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/11349086. Public record. Not legal advice.