Total90, LLC v. Nike, Inc.

              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