Adidas and Forever 21 have been going back and forth in federal court since August 2015 when adidas filed suit against Forever 21, alleging that the Los Angeles-based fast fashion retailer had infringed its 3-stripe trademark by making and selling garments that bore three stripe graphics. While the parties settled that suit in early 2016, they found themselves on opposite sides of a new lawsuit this past March filed by Forever 21. See below for a timeline of (almost) everything that has happened in the case(s) since then …
March 3, 2017: Forever 21 filed a declaratory judgment action against adidas, asking a federal court in California to declare that it was not infringing adidas’ marks. Forever 21 asserted that it received “a letter dated February 24, 2017, [in which] Adidas’s counsel … threatened to sue Forever 21 over its use of stripes on six items of clothing.”
Forever 21 further claimed that it has repeatedly “fallen victim to Adidas’s threats [of trademark infringement litigation] … Since 2006, Adidas has commenced a pattern of complaining about striped apparel sold by Forever 21, and it has steadfastly increased its threats to encompass virtually any item of clothing with decorative stripes.”
Painting the German sportswear giant as an overly-aggressive enforcer of its 3-stripe marks, Forever 21 asked for a declaration from the court that its use of stripes on apparel designs does not infringe or dilute the German sportswear giant’s three-stripe trademark.
March 7, 2017: Adidas filed a trademark infringement lawsuit against the retailer in federal court in Portland. Interestingly, the complaint was filed under seal, meaning that it is shielded from the view of the public. However, we do know that it is, in fact, a trademark infringement matter.
March 13, 2017: Forever 21 moved to voluntarily dismiss its declaratory judgment suit against Adidas, not because the parties settled but as more of an administrative move. According to the Notice of Voluntary Dismissal Without Prejudice in that case, “On March 7, 2017, following Forever 21’s filing of this action, Adidas filed a related action in the U.S. District Court for the District of Oregon. Forever 21 intends to pursue its request for declaratory judgment as a counterclaim in the Oregon action.”
June 20, 2017: In a motion filed by Forever 21, the fast fashion brand has asked the court to order Adidas to “provide a more definite statement” about its trademark rights. Forever 21 told a federal judge that it cannot defend itself against claims that it infringed Adidas’s “three-stripe mark” because the German sportswear giant’s “expansive view” of its rights means the trademark “literally has no defined boundaries.”
June 30, 2017: Adidas has filed a motion to extend the deadline for when it has to rely to Forever 21's motion to provide a more definite statement.
July 19, 2017: The court has since unsealed the complaint that Adidas filed on March 7. According to Adidas, Forever 21 has offered “repurposed Adidas” products on its website, including women’s athletic pants and shorts, which Adidas alleges are counterfeit products.
The complaint states: “Neither the infringing apparel and footwear nor the counterfeit apparel is manufactured by Adidas, nor [are] either of them connected or affiliated with, or authorized by, Adidas in any way,” the company said in its complaint. “The infringing apparel and footwear and counterfeit apparel imitates Adidas’s three-stripe mark (and, in the case of the counterfeit apparel, the Adidas wordmark and the badge of sport mark) in a manner that is likely to cause consumer confusion and deceive the public regarding their source, sponsorship, or affiliation.”
* This case is Adidas America, Inc. et al v. Forever 21, Inc., 3:17-cv-00377 (D. Or.).