Houston-based hip-hop producer accuses Nike of trademark violation

by: SUBMITTED PHOTO - Broderick Robinson claims Nike's use of his trademarked phrase 'I'm On It' on T-shirts made it difficult to continue selling his own line of clothing.A Texas-based entrepreneur is calling foul on Nike.

Broderick Robinson claims the Beaverton-based active wear giant violated his trademark when it began its “I’m On It” line of clothing in 2011 and printed the slogan on T-shirts Robinson feels are identical to designs his I’M ON IT! Clothing company sells.

According to the co-owner of Houston, Texas-based Pink Slip Records LLC, it all started with a song. His label’s 2008 release “I’m On It” enjoyed moderate regional success, and T-shirts first distributed to promote the track proved popular enough to sell. Robinson estimates that from 2009 to 2012, his I’M ON IT! Clothing brand either distributed or sold 20,000 shirts — largely through a promotional agreement he says he had with nearly a dozen Shiekh Shoes stores in Texas, where shirts retailed for $ SUBMITTED PHOTO - Broderick Robinson of Houston, Texas, owns I'M ON IT! Clothing. He says Nike's use of the phrase violated a trademark he's held for the past year.

But last year, he began receiving photos from friends of similar Nike shirts, and many asked whether he’d reached an endorsement or licensing deal with the iconic sportswear manufacturer.

“I honestly did not know Nike was selling our shirts until people asked me, ‘Did you guys sell it to Nike?’” Robinson says.

He claims it was difficult to renegotiate a sales agreement with Shiek Shoes after Nike began widely selling a similar shirt, and in May 2012, he contacted the company to ask that it stop selling the item. He says Nike officials responded within the month, denying they had violated the trademark.

Robinson’s lawyer, intellectual property attorney Steven Mitby of Houston’s AZA law firm, confirmed that they have yet to pursue litigation against Nike. Instead, Mitby says he has put them “on notice” for what he views as the unauthorized use of the label’s song title.

“Nike verbally told my attorney they’d come back with a counter-offer,” Robinson claims. Nike disagrees.

“Nike has explained to Mr. Robinson and his attorney since May 2012 that Nike’s use of the common phrase ‘I’m On It’ does not infringe his rights,” Nike spokesperson Megan Saalfeld told the Beaverton Valley Times. “They have not produced any valid arguments to the contrary.”

Mitby says that the most recent correspondence he received from Nike was dated April 24, and reiterated that the company did not believe it had violated his client’s trademark. But Mitby feels Nike sought to capitalize on the popularity Pink Slip enjoyed in the hip-hop community throughout Texas.

“Broderick is a very reasonable guy,” Mitby says. “He’s looking to have a business solution, not a protracted battle with Nike. To date, they haven’t been willing to engage in any good faith licensing negotiations. Instead, they appear to keep using the name with full knowledge of the fact that the government has given Broderick rights” through approving his trademark application.

“The message is, we don’t want you to use our slogan, but if you do, you’re going to pay for it,” Mitby adds.

Tracks with the title “I’m On It” have also been recorded by rappers 50 Cent, French Montana and Tyga, respectively, as well as by novelty rapper Childish Gambino. But Robinson has had a trademark on the phrase since September SUBMITTED PHOTO - Broderick Robinson founded I'M ON IT! Clothing after the success of a song of the same name, which he co-produced. He claims Nike has used the trademarked phrase without permission.

Trademark lawsuits are notoriously nuanced, and it falls to the plaintiff to prove that use of a trademark can reasonably be expected to cause confusion among consumers, according to a Portland attorney specializing in copyright and trademark law. Robinson would likely need to demonstrate that Nike’s “I’m On It” slogan constituted dilution of his brand, or unfair trade practice.

A complaint similar to Robinson’s was filed in February by Under Armour, a Baltimore, Md.-based sportswear company. Under Armour argued that Nike’s 2013 “I Will” advertising campaign, which uses phrases like “I will complete a 10K” and “I will protect my home court,” imitates Under Armour’s longer-running campaign, which makes use of the two-word declaration. Under Armour has held a trademark on the phrase “I Will” since last year.

Part of Robinson’s claim is that Nike’s use of the phrase has diluted his brand — which may limit his options to pursue litigation.

“I need to sell the shirts to take Nike to court,” Robinson says.

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