Adidas isn't just battling Nike over intellectual property right now, it is up against Marc Jacobs, as well. In a lawsuit filed last week in Oregon federal court, the German sportswear giant is accusing the New York-based design house's recently shuttered little sister line, Marc by Marc Jacobs of infringing its famed three stripe trademark on garments from its Fall/Winter 2014 collection. According to the lawsuit, Marc Jacobs (by way of Marc by Marc Jacobs) is trying to piggyback on the popularity of Adidas' iconic three-stripe design, which it has been using for over 60 years, with a "confusingly similar" four-stripe design. In addition to federal trademark infringement, Adidas is claiming federal and common law Unfair Competition, Unfair and Deceptive Trade Practices, and Trademark Dilution.
In its rather strongly-worded complaint, Adidas finds Marc by Marc Jacobs' four-stripe designs to be "in blatant disregard of adidas’s rights," as "Marc Jacobs had knowledge of adidas’s Three-Stripe Mark when it began designing, manufacturing, sourcing, distributing, marketing, promoting, offering for sale, and/or selling the Infringing Apparel." Moreover, Adidas claims that Marc Jacobs knew exactly what it was doing, as the brand "intentionally adopted and used confusingly similar imitations of the Three-Stripe Mark knowing that they would mislead and deceive consumers into believing that the apparel was produced, authorized, or licensed by adidas, or that the apparel originated from adidas."
Particularly problematic, according to Adidas is its own frequent practice of collaborating with fashion designers, including Stella McCartney, Jeremy Scott, Raf Simons, Mary Katrantzou, and Yohji Yamamoto, the latter of which is responsible for Adidas's high end Y-3 collection and which stocks at similar retailer outlets as Marc by Marc Jacobs. In Adidas' words: the Marc by Marc Jacobs designs at issue are "similar to, and compete with, apparel sold by adidas, and the parties’ respective apparel is sold through overlapping channels of trade." (think: Saks Fifth Avenue, Bloomingdale's, Luisaviaroma, etc.). Why is this important? Well, this is relevant as the key question in a trademark infringement case is whether consumers are likely to be confused as to the source of the allegedly infringing designs. So, here that means: Will the average consumer think that the four-stripe Marc Jacobs garments are connected or affiliated with, or authorized by, adidas in any way? (Note that the standard is derived from the view point of an ordinary consumer, not a fashion or sportswear expert). If Adidas can show that the average consumer is likely to be confused, then chances are, Adidas will be victorious in its lawsuit.
Not surprisingly, Adidas claims that consumers will, in fact, be confused into thinking that the Marc by Marc Jacobs designs are in some way affiliated with its own brand -- if they have not been confused already. The sportswear brand claims: "Marc Jacobs’s activities are likely to cause confusion before, during, and after the time of purchase because purchasers, prospective purchasers, and others viewing Marc Jacobs’s [four-stripe designs] at the point of sale or on a wearer are likely—due to Marc Jacobs’s use of confusingly similar imitations of the Three-Stripe Mark—to mistakenly attribute the apparel to adidas."
But Adidas doesn't stop there. The sportswear company, which is under fire for poaching three top design execs from Nike late last year, claims it is going to be or has already been damaged because the quality of Marc Jacobs' garments simply aren't up to its standards: "This is particularly damaging with respect to those people who perceive a defect or lack of quality in Marc Jacobs’s products. By causing a likelihood of confusion, mistake, and deception, Marc Jacobs is inflicting irreparable harm on the goodwill symbolized by the Three- Stripe Mark and the reputation for quality that it embodies." Ouch.
In addition to a request for a jury trial, Adidas wants Marc Jacobs to immediately and permanently cease all sales, distribution and marketing of the allegedly infringing garments, deliver the garments to Adidas so they can be destroyed and pay up a wide array of damages, which are likely to be in the millions. Stay tuned, as there is sure to be more to come …