Milkcrate Athletics Files Trademark Suit Against Nike Over LeBron James’s Milkcrate-Themed Shoes

The humble milkcrate has a special place in the urban landscape. Nailed to a telephone pole, the milkcrate becomes a basketball hoop. Filled with vinyl records, the milkcrate becomes an essential component of a DJ rig.

Sturdy, useful, and poorly kept track of, milkcrates were routinely stolen from shopping center sidewalks before supermarkets wised up and stopped storing them outside.

Now Aaron LaCanfora, AKA DJ Aaron LaCrate, owner of a clothing company named Milkcrate Athletics (pictured), is accusing Nike of stealing his Milkcrate trademark.

LaCrate, an enterprising sort who has DJed for Lily Allen and peddles his own brand of Baltimore club music under the name B-More Gutter Music, has been operating an urban clothing line called Milkcrate Athletics since the 1990s, advertising the line with a logo of a milkcrate full of records.

Since 2007 or so, Nike has been manufacturing a line of shoes endorsed by superstar LeBron James featuring images of milkcrates and milkcrate-inspired details and soles (see Milkcrate Digest for images). Some of the shoes bear the legend “Milk Crate Technology.” Nike has also manufactured “Crate”-branded clothing, like these LeBron Crate Men’s Basketball Shorts. According to Nike, the milkcrate-related branding was inspired by James’s formative years playing basketball on a milkcrate hoop.

LaCrate’s trademark suit against Nike, filed today in the U.S. District Court for the Southern District of New York and made available on The Trademark Blog, asserts claims of trademark infringement and Lanham Act false designation of origin against Nike, arguing that Nike’s LeBron Milkcrate shoes and apparel are confusingly similar to Milkcrate Athletics shoes and apparel (in addition to his clothing line, LaCrate released a limited-edition Milkcrate shoe with Vans in 2006).

Does LaCrate have a LaCase? His federal trademark registration seems solid (he registered “Milkcrate” in connection with “clothing” in 2001 and in connection with “basketball sneakers” in 2009). However, as always, the fundamental question in trademark infringement analysis is whether there is a likelihood of confusion. Applying the factors set out in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) (factors include the strength of the plaintiff’s mark, the degree of similarity between the parties’ respective marks, and the existence of actual confusion), I think Nike has the advantage. The marks are similar and used on somewhat similar products, but the marks themselves just don’t look that much like each other. Nike’s products don’t use a drawing of a milkcrate, as LaCrate’s do; they use photographs of milkcrates or stylized criss-cross patterns, which suggests Nike is not using the milkcrate as a mark, but rather as a design element. When it does employ some variant of the word “milkcrate” as a mark, Nike generally uses the words “Milk Crate” or “Crate” rather than “Milkcrate,” suggesting the company has consciously attempted to avoid confusion with the Milkcrate trademark. If LaCrate’s suit makes it past summary judgment, LaCrate and Milkcrate will need to present the court with strong evidence of actual consumer confusion, usually obtained through consumer surveys, to persuade the court that an infringement has taken place.

If “Milkcrate” was a famous mark, LaCrate would have an easier time with a “dilution-by-blurring” claim under the Trademark Dilution Revision Act (“TDRA”) (see this post regarding Starbucks Corp. v. Wolfe’s Borough Coffee Inc., a recent Second Circuit case, for an example of TDRA analysis). I don’t think, though, that there is much of an argument to be made that Milkcrate is presently a famous mark.

In an interesting footnote for electronic music fans, LaCrate’s attorney in this matter, Gary Adelman, was one of the founders of the label Liquid Sky.