This November, Total90 LLC sued Nike in the US District Court for the Eastern District of Louisiana. Total90 LLC accuses Nike of trademark infringement for reusing the ‘TOTAL 90’ sign, even though, according to the plaintiff, Nike abandoned the trademark in 2019 by allowing the registration to expire and ceasing its commercial use.
In the 2000s, Nike launched and popularised the TOTAL90 brand for football boots, turning it into an iconic line thanks to its innovative design, designed to offer optimal performance during the 90 minutes of play. Models such as the Total90 Laser set trends among top players such as Ronaldinho, Wayne Rooney and Roberto Carlos. Despite its initial success, Nike allowed the registration to expire in 2019 and, according to the lawsuit, discontinued its effective use.
This is where Total90 LLC comes in. The company adopted the name TOTAL 90 and built a business around it. It initially used the sign on digital products related to football and later on clothing, obtaining two trademark registrations. According to the company, it invested resources, promoted the brand and created its own identity around the sign.
The unexpected twist came in March 2025: Nike decided to reclaim TOTAL 90 and launch new collections, this time for an urban line of trainers, competing directly with Total90 LLC.
For Total90 LLC, this constituted an infringement of its trademark rights. The company argues that, due to Nike’s commercial strength and global recognition, consumers may believe that it is the smaller company, Total90 LLC, that is imitating Nike, creating a phenomenon known as ‘reverse confusion’.
The case raises key questions: What happens when an iconic brand that appeared to be abandoned is adopted in good faith by a third party who registers it and makes it their own? To what extent is a trademark truly ‘dead’ when its owner stops using it? Who has the better claim: the large company trying to reclaim the historic trademark it had stopped using, or the other company—smaller, but legally diligent—that in the meantime registered it and made it part of its business?
In trademark law, when a trademark is not renewed or effectively used for a prolonged and consecutive period—generally five years, three in some countries—it expires or becomes vulnerable to expiry. This means that it is free for a third party to register and use in good faith, as Total90 LLC claims to have done.
However, despite the clarity of the legal requirements that lead to expiry, their practical application in the market is not always straightforward or free from debate.
Some iconic trademarks, even without real and effective use, do not disappear entirely: they remain present thanks to their circulation in collectors’ markets, resale or after-sales services. In Europe, the Ferrari TESTAROSSA case (CJEU, C-720/18) is an example: although it had not manufactured the model since the 1990s, Ferrari avoided revocation by proving residual use — sale of spare parts, certificates of authenticity and licensed miniatures — which the General Court considered sufficient to fulfil the essential function of the trademark: to guarantee commercial origin.
Nike could invoke similar arguments and claim that TOTAL 90 never completely disappeared thanks to its residual notoriety and presence on the secondary market, but it would have to prove that this residual use is attributable to it, not simply independent resale activity.
For its part, Total90 argues that it acted within the law and that the trademark system should protect those who adopt an apparently available sign in good faith and use it, with the corresponding investment. It claims the exclusive right conferred on it by the valid registration of its trademarks, on which it bases its infringement action.
It is a debate between two legitimate rights: that of the new registered owner, who has acted diligently, and that of the historic giant that wants to recover a right that was part of its legacy. If the Court considers that Nike abandoned the trademark, protection should fall to Total90. If, on the other hand, it understands that the notoriety, historical value and residual presence kept the trademark alive, Nike could regain priority.
The TOTAL90 case illustrates the tension between legal certainty and the economic value of iconic brands. The answer is not simple. On the one hand, the trademark system seeks to encourage actual use and prevent inactive signs from being blocked for decades. On the other hand, it also aims to preserve the identity heritage of brands with a recognised legacy and value, even when they are no longer actively marketed.
Once again, trademark law shows us its most vibrant side: trademarks are much more than just the word or logo that is registered; they are living assets, with memory, reputation, emotional and commercial value. When a trademark awakens after years of dormancy, it may find that someone else has already made it their own. We will have to wait for the Court’s decision to find out whether TOTAL 90 was really dead or whether, although weak, it was still beating, waiting for its return.
In short, reviving a trademark without a solid strategy can involve significant risks. To protect your most valuable assets and avoid surprises, it is advisable to maintain residual use and renew the registration even when the trademark is ‘dormant’. It is also advisable to establish active monitoring and, before a revival, analyse the registration and market scenario, plan international protection and ensure adequate coverage. At first glance, this may seem like a high investment, but it is always more cost-effective to prevent than to litigate.
Article by Cristina Margalef.
Base photograph for the AI-generated header image.
Published in ElDerecho.com.
