Adidas has filed its latest three-stripe-specific trademark oppositions, and this time, Thom Browne is the sportswear giant’s opponent. On the heels of filing a number of requests this summer to extend the timeline for potential oppositions to the registration of a handful of Thom Browne trademark applications, adidas has lodged an opposition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”), urging the trademark body to put a stop to three pending trademark applications for a red, white, and blue stripe trademark for use on footwear, filed by Thom Browne early this year.
According to the notice of opposition that it filed on December 14, counsel for adidas asserts that “notwithstanding [its] prior rights” in the three-stripe trademark, which it began using “over sixty-five years ago, when [it] first placed three parallel stripes on its athletic shoes,” and “well after [its] three-stripe mark became famous,” Thom Browne filed three intent-to-use trademark applications for a multi-stripe mark of its own. (The 1B filing basis of Thom Browne’s February 2020 applications means that the brand has not yet begun using the trademarks in commerce (or is not claiming use in commerce yet) but has a bona fide intent to do so in the near future).
Given its longstanding and consistent use of a three-stripe trademark on its wares – from sneakers to athletic and fashion apparel, adidas claims that “consumers familiar with footwear, apparel, and related goods” know that such a mark signifies that the goods at issue come from – or are otherwise affiliated with – adidas, making it problematic that the New York-based fashion brand has adopted and is attempting to register similar trademark.
Consumers “are likely to assume that [Thom Browne’s] goods originate from the same source, or that they are affiliated, connected, or associated with [adidas]” when no such affiliation exists, adidas argues in its opposition filing, asserting that such confusion is particularly likely since Thom Browne’s marks – which consist of the placement of three stripes on different parts of footwear, such as on a tab on the rear of the shoe, on the strap of a slide sandal, and on the bottom of the shoe – in a manner that is “confusingly similar to [its own] three-stripe mark in appearance and overall commercial impression,” and Thom Browne’s “goods are identical to the goods” that adidas has “long … offered in connection with the three-stripe mark.”
In addition to giving rise to potential confusion, the registration of Thom Browne’s marks – which consist of a total of “five parallel stripes, with the center stripe in white, the left adjacent stripe in red, the right adjacent stripe in blue, and with the two outermost stripes in white, with the two outermost stripes being narrower than the other three stripes,” according to Browne’s applications – is “likely to dilute the distinctiveness of [adidas] three-stripe mark by eroding consumers’ exclusive identification of the three-stripe mark with adidas, and otherwise lessening the capacity of the three-stripe mark to identify and distinguish the goods of adidas.”
With the foregoing in mind, and in much the same way as it has challenged the marks of the likes of J. Crew (in an opposition is still currently underway), Tesla, and football club FC Barcelona, among a whole slew of other companies, adidas has requested that its “opposition be sustained and that the registration of [the] applications [at issue], serial nos. 88/794,885, 88/794,742, and 88/796,018, be denied.”
The timing of the notoriously-protective adidas’ opposition is hardly without context. The almost two-decades-old Thom Browne brand, which is best known for its signature shrunken suiting, recently revealed its first activewear collection, seemingly in furtherance of an effort to expand outside of its most-immediate tailoring niche, a move that makes a lot of sense in light of the current COVID-centric retail climate.
Interestingly enough, the new filing from adidas also follows from Thom Browne’s partnership with FC Barcelona back in July 2018, which saw the Spanish soccer club enlist Thom Browne to create custom made-to-measure suits for its players to wear during travel for “Champions League and some La Liga away matches,” according to a release, as part of a larger, three-year long deal between the team and the fashion brand. The presence of Browne’s own multi-stripe trademark on the players’ wares suggested that a legal battle might be brewing, but a public-facing spat never came to be. As such, it appears that Browne’s own foray into athleticwear may have been the impetus for adidas to take formal legal action.
Tommy Hilfiger, Too
Meanwhile, it is worth noting that adidas is not the only party seeking to stomp out the potential registration of Thom Browne’s marks. Tommy Hilfiger – which was named as a potential opposer on adidas’ earlier extensions (which have now been consolidated into one single, adidas-specific opposition proceeding), along with K-Swiss – initiated an opposition of its own in connection with the same Thom Browne marks being challenged by adidas, as well as an additional mark, one day after adidas lodged its opposition.
In addition to opposing the same footwear-specific marks as adidas, Tommy Hilfiger Licensing LLC has asked the TTAB to block an application for a similar striped mark albeit for use in connection with a Thom Browne fragrance, on the basis that it maintains rights in “a device comprising red, white, and blue stripes” that predates Browne’s use of its striped marks.
According to Hilfiger’s December 15 opposition, Thom Browne should not be granted registrations for the marks for a number of reasons. For one thing, counsel for Hilfiger asserts that the “marks identified in the applications are design elements of goods,” and thus, ineligible for trademark protection, which exists exclusively for source-identifying devices. More than that, Hilfiger argues that Browne’s applications are “unsupported by any evidence that the marks identified therein have secondary, origin-indicating meaning, as distinguished from their functioning to adorn or ornament goods on which they are placed.”
And still yet, the American fashion brand claims that the “marks identified in the applications are merely descriptive of goods on which they are placed and, as such, are not registrable,” and as a result, the applications should not be subject to registration.
It is not yet clear whether K-Swiss, which was also named as a potential opposer in the parties’ initial request for extensions, will wage an opposition battle of its own.