The owner of the trademark “I<3” is suing Adidas for “willfully, maliciously, and oppressively” using “///<3” along with the letters “NYC” in its August 2018 Bodega-inspired advertising campaign for its popular Ultra Boost sneakers. According to the complaint filed on Monday in a New York federal court, Paul Ingrisano argues that adidas “knowingly disregarded” his rights in the mark and the harm that would result from its unauthorized use of it.
Mr. Ingrisano claims that adidas has “directly or indirectly, without [his] consent,” developed and started using the symbol “///<3” together with the initials “NYC” in its advertising campaign for athletic apparel and the Ultra Boost running shoes. The Brooklyn-based artist and entrepreneur alleges that adidas’ infringing uses include everything from social media posts and billboards to promotion trucks in New York City.
Entitled the Ultra Boost “Bodega Pack,” the footwear at issue consists of colorful Primeknit uppers inspired by New York City convenience stores, and was advertised by way of a “/// <3 NYC” – which translates to adidas loves NYC – ad campaign.
While sneaker sites were quick to celebrate and spotlight the campaign, Ingrisano is not amused. Adidas’ use of “///<3” in connection with “NYC” is particularly confusing, he declares, as he regularly “combines his trademark with the names of cities and other geographic locations, including, without limitation, the initials ‘NYC.’” More than that, the products/services on which they are using the mark – “promotion and sale of athletic apparel” and footwear – are the same, thereby, leading to heightened risk of confusion, per Ingrisano, which is significant, as the likelihood that consumers will be confused as to the source of the allegedly infringing products (adidas’ in this case) is central to a trademark infringement claim.
As a result, Ingrisano is seeking injunctive relief, which would serve to prohibit adidas from using “///<3” or any other confusingly similar trademark that is confusingly similar to promote athletic apparel, as well as monetary damages.
This is hardly the first time that adidas and Ingrisano have faced off, though. It turns out, Reebok, a wholly owned subsidiary of Adidas, went up against the artist in 2013 when it sought to oppose his trademark application for registration for the “I<3” mark. Reebok argued to the U.S. Patent and Trademark Office’s appeal board that Ingrisano’s mark was too similar to its own previously registered “I3” mark, and thus, should not be registered.
The parties untilmately settled the dispute in March 2014 with Ingrisano agreeing to exclude “special purpose basketball apparel” from the goods/services included in his registration in exchange for Rebook’s agreement to withdraw the opposition. Ingrisano’s mark was ultimately registered in June 2014 and covered a sweeping array of apparel and footwear, just not “special purpose basketball apparel.”
Given adidas’ penchant for stripe-related litigation, the brand may have met its match in Ingrisano.
A rep for adidas was not immediately available for comment.
*The case is Ingrisano v. Adidas International, Inc., 1:19-cv-03419 (EDNY).