Adidas is forging ahead with an appeal to the recent outcome of a stripe-centric legal battle against Thom Browne. The German sportswear giant and its American arm lodged a notice of appeal with the U.S. District Court for the Southern District of New York on Wednesday, alerting the court of their “appeal to the United States Court of Appeals for the Second Circuit from the Final Judgment entered in this case on January 13, 2023.” Judge Jed Rakoff asserted tlast month that following an eight-day trial, “a jury found Thom Browne Inc. not liable … [for] trademark infringement and dilution.” Accordingly, the court entered a final judgment and dismissed adidas’ complaint in its entirety.
The win for Thom Browne came more than four years after adidas first initiated an opposition proceeding in 2018 in response to a trademark application that Thom Browne filed in the European Union for a four-striped mark. In December 2020, adidas filed a stateside opposition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, urging the trademark body to put a stop to three pending trademark applications for red, white, and blue stripe trademarks for use on footwear that were filed by the New York-based fashion brand earlier that year. The basis for adidas’ bids: Thom Browne’s marks are confusingly similar to its own pre-existing marks.
Setting the stage for the litigation at hand, adidas filed a trademark infringement and dilution suit against Thom Browne in June 2021. Adidas – which has been using a three-stripe logo since the 1950s and is notoriously litigious when it comes to others’ use of lookalike marks – alleged that Browne was engaging in “direct competition with [it] by offering sportswear and athletic-styled footwear that bears confusingly similar imitations” of its three stripes.
Counsel for Thom Browne pushed back against adidas’ claims, arguing, among other things, that the sportswear titan waited too long to initiate legal action against the high fashion brand. And even if adidas’ case was timely, Browne asserted that consumers were unlikely to be confused over its use of a four-stripe motif on the basis that it and adidas occupy different positions in the market – complete with very different price points – and thus, are not direct competitors.
(The jury was seemingly satisfied by Browne’s lack-of-competition argument. Generally speaking, I was/still am a bit skeptical on this front in light of the enduring pattern of brands, including those in the sportswear space, operating outside of their most immediate market, and the impact that this is having on the price points for things like workout-wear and sneakers. Adidas, for example, has a long history of partnering with fashion brands, collaborating with the likes of Gucci, Balenciaga, and Prada (among others) very recently. Such collabs have skewed the price points at play. Gucci x adidas flared jogging pants – complete with three stripes running down the sides – are currently up for offer on Gucci’s site for $1,400; handbags in that collection are selling for as much as $3,700. That’s a lot more than the $55 striped joggers exclusively being offered up under the adidas name.
The bigger picture here is that the influx of collaborative wares exist in a market where even obvious competitors (take Fendi and Versace, for instance) are not opposed to collaborating), where just about anything can be a collaboration, and where the zone of natural expansion seems to only be getting broader. One of the results is that the already not-so-simple likelihood of confusion test is seemingly becoming more nuanced. But since it is safe to assume that consumers are unlikely to be confused at the initial point of sale (i.e., on the adidas or Gucci e-commerce sites, for instance), the risk here comes in a post-sale capacity, and to be frank, I am not sure what the risk/harm really is.)
Ultimately, the New York federal jury sided with Browne, finding that the brand did not infringe – or dilute – adidas’ three-stripe mark by way of its use of a four-stripe logo on apparel and accessories.
In addition to enabling Browne to carry on using its striped motif, the outcome of the trial is expected to send a message to brands. “The decision is likely to have implications for other fashion and sportswear brands that use or would like to use design elements, such as sequential striped [logos] on their clothing,” Clark Hill’s Jonathan Roffe stated in a note. At the same time, adidas – which dodged a bid by Browne to have one of its three-stripe marks cancelled in connection the case – is not likely to ease-up on its aggressive enforcement efforts over unauthorized uses of stripes in ways that it deems to be infringing.
As for the appeal, it comes as little surprise, with a rep for adidas telling TFL in the wake of the jury verdict last month, “We are disappointed with the verdict and will continue to vigilantly enforce our intellectual property, including filing any appropriate appeals.”
The case is adidas America, Inc., et al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).