Known for vigilantly policing the unauthorized use of its trademark against the likes of Marc Jacobs, Forever 21, and Skechers, among others, adidas has initiated a trademark battle with Spanish soccer team, FC Barcelona. According to the opposition document (no. 91230938) it filed with the U.S. Patent and Trademark Office (“USPTO”) in early November 2016, the German sportswear giant alleges that FC Barcelona’s pending application for registration should be denied, as FC Barcelona’s mark – one that “consists of a square containing seven vertical stripes (the 1st, 3rd, 5th and 7th stripes from the left are blue, and the remaining three stripes are garnet)” – is far too similar to its own three-stripe trademarks.
Not exactly a lawsuit, the matter between the two sporting companies is being handled before the USPTO. Before a trademark may be registered with the USPTO (and enforced by a trademark holder on a nationwide basis as a federally registered mark, as opposed to on a state-by-state basis for common law marks), a number of requirements must be satisfied. For instance, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO.
After the mark is published, 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 a request to extend the time to oppose. If no opposition is filed or if an opposition is unsuccessful, the application enters the next stage of the registration process.
This is where adidas comes in. FC Barcelona filed to register its seven-striped mark in May 2015 and when the USPTO published the mark in the Official Gazette roughly a year later, adidas responded by filing to oppose the registration of the trademark. In its Notice of Opposition, adidas states: “The Three-Stripe adidas trademark [“Three-Stripe Mark”] is well-known and famous and has been for many years. It is particularly well known among professional soccer players, fans and consumers of soccer apparel.”
The sportswear giant continues: “Since introducing the Three-Stripe Mark [in 1952], adidas has spent millions of dollars promoting the mark and products bearing the mark. As a result of adidas’s extensive use and promotion of the Three-Stripe Mark, adidas has built up and now owns extremely valuable goodwill that is symbolized by the mark. The purchasing public has come to associate the Three-Stripe Mark with adidas.”
“Notwithstanding [adidas’] prior rights, and well after the Three-Stripe Mark became famous, [FC Barcelona] filed to register” its own seven-stripe trademark for paper goods, clothing, footwear and headwear, various types of sports equipment, and other goods. Adidas claims that FC Barcelona’s seven-stripe trademark “incorporates parallel stripes in a manner confusingly similar to the Three-Stripe Mark in appearance and overall commercial impression.”
According to adidas, FC Barcelona’s mark “so closely resembles” its own Three-Stripe Mark that the soccer team’s trademark “is likely to cause confusion, deception, or mistake as to the affiliation, connection, or association of [FC Barcelona] with adidas, or the origin, sponsorship, or approval of [its] goods by adidas,” the key issue in a trademark infringement matter. Moreover, adidas claims that if FC Barcelona is permitted to federally register its mark, that will “erode consumers’ exclusive identification of the Three-Stripe Mark with adidas, and otherwise lessen the capacity of the Three-Stripe Mark to identify and distinguish the goods of adidas.”
Finally, adidas noted: “Consumers familiar with the footwear and apparel long associated with adidas’ Three-Stripe Mark are likely to assume that the goods in Class 25 [footwear and apparel] and Class 28 [sporting goods/equipment] offered under FC Barcelona’s trademark originate from the same source, or that they are affiliated, connected, or associated with adidas.” As a result, “any defect, objection, or fault found with FC Barcelona’s products marketed under the FC Barcelona trademark necessarily would reflect on and seriously injure adidas’s reputation.”
As a result, adidas is asking the USPTO to refrain from awarding FC Barcelona federal registration in connection with its seven-stripe trademark.
WHAT ABOUT NIKE?
As in anything sporting or athleisure related, there is an ongoing war between Nike and adidas. In the European football realm, this takes the form of vying for partnership deals. Interestingly, adidas filed its opposition the day after news broke that FC Barcelona had confirmed that it will continue with its Nike partnership, signing a new record-breaking kit deal with the Portland, Oregon-based sportswear giant, which is estimated to be worth up to €155 million ($171 million) a season beginning in 2018 and lasting until 2028. The deal is more lucrative than those of than any other individual club in Europe.
Earlier in the month, London-based club, Chelsea confirmed that it signed a kit deal with Nike, thereby ousting adidas as the team’s uniform supplier. The deal is believed to be worth an estimated £60 million (nearly $75 million) per season for the next 15 years.
Some of adidas’ other major kit partnerships include one with Real Madrid, which sees the German giant paying £106 million ($132 million) a year. Another comes by way of Manchester United, which earns £75 million ($93.5 million) a year from a 10-year adidas deal signed in 2014, following its 13-year relationship with Nike. Adidas also maintains a recently-renewed deal – slated to last until 2030 – with Bayern Munich for a reported £645 million ($805 million).
It seems reasonable to suggest that if FC Barcelona was partnered with adidas – as opposed to Nike – this trademark matter almost certainly would not have escalated to this level.
UPDATED (3/10/2017): While Forever 21 is not balking under the pressure of adidas (as indicated by its recently filed suit against the sportswear giant and alleged trademark bully), FC Barcelona has taken steps to comply with adidas’ trademark-related demands. The football club moved to formally abandon the trademark application at issue (the one adidas took issue with), thereby alleviating any drama between the two in front of the USPTO’s Trademark Trial and Appeal Board.