Known for taking frequent action to police unauthorized uses of its trademark, adidas has initiated a trademark opposition with automaker Tesla, according to Law360. The German sportswear giant initiated an opposition proceeding with the U.S. Trademark Trial and Appeals Board (“TTAB”) – a body within the U.S. Patent and Trademark Office (“USPTO”) responsible for hearing and deciding certain kinds of trademark cases, including opposition and appeals – to block the automaker from federally registering the logo for its Model 3 sedan. The logo in contention is three horizontal stripes that are similarly styled to the “E” in Tesla’s primary logo.
In the United States, before a trademark may be registered with the USPTO (and can therefore obtain nationwide protection for the trademark holder), numerous requirements must be satisfied. The mark must be published in the Official Gazette – a weekly publication of the USPTO – to give others a chance to file an opposition. Thus, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or request to extend the time to oppose. The trademark application will only then proceed to the next stage of the registration process if either the opposition filed is unsuccessful or there is no opposition filed at all.
The sportswear giant’s move to attempt to stop Tesla from receiving federal trademark protection for its horizontal three-stripe logo comes on the heels of Tesla’s attempt to register its new trademarks in class 25, which covers “articles of clothing, namely, t-shirts, shirts, jackets, gloves, scarves, hats; headgear, namely, sports hats, caps, sun visors; hats for infants, babies, toddlers and children; infant and toddler one-piece clothing; infant wear.” While Tesla has this mark on its cars in the past, adidas has been prompted to move due to the fact that the “deceptive” marks are being put on apparel, therefore entering its established wheelhouse of apparel.
(The trademark proceeding also comes on the heels of an array of recent trademark infringement-related lawsuits filed by adidas, including suits against Shoe Branding Europe, football club FC Barcelona, Italian fashion brand Bally, fellow footwear brand ECCO, Skechers, Marc Jacobs, and Forever 21, among others).
According to adidas’ Notice of Opposition in the matter at hand, which it filed with the TTAB last week, the California-based car company’s new marks – described as “identical, or closely related, to the goods for which adidas has used and registered the 3-Stripes Mark” - are “likely to cause confusion, or to cause mistake, or to deceive as to the source, origin or sponsorship of [Tesla’s] goods.” It is worth noting that this confusion/similarity is one of the core inquiries in determining whether or not a mark should be registered with the USPTO.
The sportswear company further alleges the Tesla marks “will erode the association of the 3-Stripes Mark with adidas, lessen the capacity of the 3-Stripes Mark to identify adidas as the source of goods and services to customers and potential customers who would expect the 3-Stripes mark to identify genuine and authorized [adidas products], blur the distinctive quality of the adidas 3-Stripes Mark and otherwise cause dilution of the famous adidas 3-Stripes mark.”
The complaint goes insofar as to allege that adidas believes not only did Tesla have full knowledge of its prior use, registration and “fame” of adidas’ 3-Stripe mark, but that both the confusion and dilution associated with Tesla’s goods will “damage adidas in the advertising and sale of its goods.”
Adidas - which describes itself as “one of the world’s leading designers and producers of athletic footwear, apparel, sporting equipment and accessories” - has been using its iconic 3-Stripes Mark since 1952. Such use comes with a plethora of federally registered trademarks that apply to an array of classes of goods/services.
The company also contends that not only the 3-Stripe Mark on products that have been distributed to more than 300 retailers nationwide, but that it has been displayed in connection with adidas’ “sponsorship of sporting events of major league sports teams, collegiate sports teams, and via endorsements and collaborations with athletes, celebrities, artists, designers and other famous-brand owners.”
These allegations are cited in support of adidas' notion that it has maintained a “high level of brand visibility by its sponsorship of worldwide athletic events… [collaborations] with other high profile brands” and celebrity sponsorships.
UPDATE (2/8/2017): Per Law360's Bill Donahue, Tesla has since withdrawn the two trademark applications at issue.