Court Severs Athletic Shoe Companies as defendants in Trademark Case

Apr 10, 2004

A federal judge in the Northern District of Illinois has granted a request by And 1 International to separate it from competitor Reebok International, Ltd. as a defendant in a trademark infringement case. Both companies, as well as Crossover Promotions, Crossova Productions, Crossover Sportsgear, Inc, and Crossover City Hoops, are defending themselves against SB Designs, which claims that the defendants infringed upon its CROSSOVER KING trademark.
In addition, the court, sue sponte, transferred the And 1 case to the Eastern District of Pennsylvania in the “interest of justice.”
On December 19, 1994, the plaintiff applied for trademark registration for its CROSSOVER KING trademark, which consists of the image of a basketball player in the action of a crossover dribble with a moving ball image and the trade name “CROSSOVER KING,” underscoring the logo.
The CROSSOVER KING trademark was registered on February 24, 1998. A little over three years later, the plaintiff registered the CROSSOVER KING Work mark.
SB Designs, which markets basketball apparel affixed with the CROSSOVER KING trademark through the internet, magazine advertising, street marketing, trade shows and sponsorship of sports-related events, began approaching Reebok in June of 1997. The company continued its dialogue with Reebok over the next 18 months, speaking, in particular, with Henry Que Gaskins, Reebok Brand Manager of Allen Iverson Apparel.
While the dialogue continued, the plaintiff never signed Reebok’s Idea Submissions Guideline Form, which Reebok said was a prerequisite before it would consider the plaintiff’s idea.
In March of 1999, SB Designs allegedly discovered various internet sites that promoted Iverson, Reebok and the I3 Apparel line using its trademark. In September 2000, SB Designs discovered Iverson’s Crossover Promotions website, which is allegedly sponsored by Reebok.
The plaintiff “alleges that Crossover Promotions is actively attempting to position and promote Iverson as the so-called ‘Crossover King,’ and that numerous websites have promoted Iverson and sold Reebok merchandise in conjunction with the use of the phrase ‘Crossover King,’” wrote the court
And 1 entered the dispute because the plaintiff claimed it discovered an And 1 Egroups website that allegedly used SB Design’s CROSSOVER KING Trademark name “to draw people to its site. Plaintiffs allege that And 1 has used the CROSSOVER KING trademark to promote And 1 mixtapes and mixtape tours, as well, and that And 1 has produced at least one line of basketball shoes and a t-shirt that infringe SB Designs’ CROSSOVER KING trademark,” wrote the court.
There were also additional allegations against the other named defendants, leading the plaintiff to seek damages and injunctive relief under the Lanham Act, 15 U.S.C. § 1125, and the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.
On June 3, 2003, And 1 filed a declaratory judgment action in the Eastern District of Pennsylvania. The Basketball Marketing Company, Inc., d/b/a AND 1 v. SB Designs, Inc., 03 C 3452 (E.D.Pa.). And 1 also sought cancellation of SB Designs’ CROSSOVER KING Trademark and word mark. SB Designs answered the complaint in that case, and discovery was scheduled to conclude April 4, 2004.
In its review, the court noted that the plaintiff’s complaint “alleges multiple acts of infringement committed by And 1 that do not involve the same transaction, occurrence, or series of transactions or occurrences as the alleged acts of infringement committed by the other defendants.” It went on to grant the defendant’s motion to sever.
Next, it turned to the question of whether the plaintiff’s claim should be transferred. The court noted the “interest of justice” phrase, which allows it to transfer a case if, for example, there is a likelihood of “a speedy trial and feasibility of consolidation.” Quoting statistics that showed the other district offered speedier times to trial, the court granted the transfer. SB Designs et al. v. Reebok et al., No. 03 C 3672
N.D. Ill., 3/1/04
Attorneys of Record: (for plaintiffs) Christopher V. Langone, Jeffrey Naffziger, Craig Rein Frisch, Langone Law Firm, Chicago, IL. (for defendants) Charles A. Laff, Brian J. Lum, Michael Best & Fredrich LLC, Chicago, IL.; Camille M. Miller, Cozen & O’Connor, Philadelphia, PA. Lori S. Nugent, Cozen O’Connor, Chicago, IL. Theodore William Pannkoke, Cozen & O’Conner, Chicago, IL.


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