Background
Nike originally launched its “Total 90” line of soccer footwear and apparel in the early 2000s, making it one of the company’s signature football-boot brands. The company let its U.S. trademark registration for the mark lapse in 2019 — a move that, under trademark law, creates a presumption of abandonment unless the owner can show it never stopped using the mark commercially.
In February 2022, Hugh Bartlett, a Louisiana youth soccer coach and engineer, registered “TOTAL90” with the USPTO, apparently moving into the gap left by the lapsed Nike registration. Ahead of the 2026 FIFA World Cup, Nike revived the Total 90 line, selling shoes and apparel under the brand again. Bartlett’s company, Total90 LLC, sued Nike in the Eastern District of Louisiana for trademark infringement and sought a preliminary injunction to stop Nike from using the mark while the case is litigated. Nike countersued, alleging Bartlett filed the registration in bad faith and that the suit amounts to extortion.
Judge Wendy Vitter had already denied a temporary restraining order in November 2025. The court then considered whether the fuller record warranted a preliminary injunction.
The Court’s Holding
The court denied the preliminary injunction. The central issue was whether Nike had abandoned the Total 90 mark — the legal predicate for Bartlett’s registration being valid over Nike’s prior rights. Under the Lanham Act, trademark abandonment occurs when a mark’s owner discontinues use of it with an intent not to resume use (15 U.S.C. § 1127). A lapsed registration is evidence of abandonment, but it is not conclusive.
Nike demonstrated that even after its registration lapsed in 2019, it continued to advertise and sell Total 90-branded products. The company argued that the registration lapse was administrative, not a signal of intent to abandon the brand. The court found that Total90 LLC failed to show, by a preponderance of the evidence, that Nike had abandoned the mark within the meaning of the Lanham Act. Without a valid showing of abandonment, Bartlett’s subsequent registration did not give Total90 LLC superior rights to the mark.
Because the plaintiff could not establish a substantial likelihood of success on the merits of its trademark infringement claim, the court declined to issue the injunction — one of the four traditional factors required for preliminary injunctive relief.
Key Takeaways
- Lapsed registration ≠ abandoned mark. Under the Lanham Act, trademark rights derive from use in commerce, not registration. A company that lets a federal registration lapse but continues selling products under the mark can argue it never abandoned its common-law rights.
- Intent to resume use is the key question. The two-prong abandonment test — non-use plus intent not to resume — is fact-intensive. Continued sales are strong evidence of intent to maintain the mark.
- Registration gaps create litigation risk. Nike’s lapsed registration opened the door to this lawsuit, even if Nike ultimately prevails. Companies that allow registrations to expire while continuing commercial use should expect challenges.
- Bad faith registration carries its own risks. Nike’s counterclaims allege Bartlett registered “TOTAL90” knowing it was Nike’s mark — a pattern courts take seriously. Registering a mark to extract payments from a prior user can constitute fraud on the USPTO and grounds for cancellation.
Why It Matters
Brand revivals — dormant trademarks brought back to life, often around major cultural moments like the World Cup — are a recurring trademark battleground. Companies regularly let registrations lapse on secondary brands, only to revive them later, and opportunistic filers sometimes step in during the gap. This case is a clean example of the resulting conflict.
The ruling reinforces a basic trademark principle that matters far beyond Nike: the trademark registration system is not the source of trademark rights. Use in commerce is. A company that drops its registration paperwork but keeps selling products generally retains its common-law rights and can assert them against later registrants. For anyone eyeing a lapsed trademark as a registration opportunity, this case is a cautionary note — especially when the prior owner is still actively using the brand in the marketplace.