Adidas v. Thom Browne: A Timeline of a Trademark Case Over Stripes, Sportswear

Image: Thom Browne

Law

Adidas v. Thom Browne: A Timeline of a Trademark Case Over Stripes, Sportswear

A federal jury handed Thom Browne a trademark-centric win against adidas after an eight-day trial in New York City in January 2023. The headline-making verdict – which found that Thom Browne, a cult-followed fashion brand best known for its signature shrunken ...

December 11, 2023 - By TFL, Miriam Gemmell

Adidas v. Thom Browne: A Timeline of a Trademark Case Over Stripes, Sportswear

Image : Thom Browne

Case Documentation

Adidas v. Thom Browne: A Timeline of a Trademark Case Over Stripes, Sportswear

A federal jury handed Thom Browne a trademark-centric win against adidas after an eight-day trial in New York City in January 2023. The headline-making verdict – which found that Thom Browne, a cult-followed fashion brand best known for its signature shrunken suiting, did not engage in trademark infringement or dilution by offering up apparel and footwear bearing a four-stripe motif – followed from more than four years of back-and-forth between the parties since 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. 

Setting the stage for the now-completed trademark trial, adidas filed a trademark infringement and dilution suit against Thom Browne with the U.S. District Court for the Southern District of New York in June 2021. The German sportswear giant – which has been using a 3-stripe logo since the 1950s and is notoriously litigious when it comes to others’ use of lookalike marks – alleged that New York-based Browne was engaging in “direct competition with [it] by offering sportswear and athletic-styled footwear that bears confusingly similar imitations” of its three stripes. All the while, counsel for Zegna-owned Thom Browne pushed back against adidas’ claims, arguing that, among other things, the likelihood of consumer confusion is low due to the two companies’ respective positions in the market and with very different price points. 

With the case now in the midst of an appeal before the U.S. Court of Appeals for the Second Circuit, we have put together a brief running timeline of notable filings (complete with links to any corresponding articles) in order to help you to stay abreast of developments …

Dec. 11, 2023: In a response, adidas sought to shift blame back to Thom Browne, asserting that “there is no escaping the fact that it withheld smoking-gun evidence and got caught.” Yet, adidas asserted that Thom Browne is asking the court “to ignore its own egregious misconduct and focus instead on how that egregious misconduct was brought to light,” namely, by “challeng[ing] how adidas found out that Thom Browne withheld smoking-gun evidence.” In its filing, adidas urges the court to deny Thom Browne’s “unjust request and reject Thom Browne’s meritless ‘unclean hands’ argument” and allow for a new trial “based on Thom Browne’s abuses of the litigation process.” (adidas is arguing that Thom Browne previously withheld relevant emails from discovery in “bad faith.”

Dec. 8, 2023: In a bid to block adidas from successfully seeking a new trial in the parties’ ongoing clash, Thom Browne argued in a sur-reply in opposition to adidas’ motion for new trial that the sportswear giant’s actions in connection with the handling of a number of email correspondences constitutes “unclean hands, which bars the equitable relief adidas seeks.” In particular, Thom Browne takes issue with adidas’ alleged violation of a confidentiality agreement that the parties entered into in the United Kingdom that governs the sharing of e-mail content produced in connection with trademark proceedings in the UK. According to Thom Browne, adidas breached this sharing emails produced by Thom Browne in the UK with U.S. counsel and then went further when its U.S. counsel made “multiple misrepresentations, misleading statements, and omissions to this court in the ensuing months after the breach – including multiple statements that adidas US counsel had not reviewed the emails in any fashion.”

Nov. 2, 2023: Thom Browne lodged a motion in opposition to adidas’ bid for a new trial, arguing that, among other things, it “did not (nor, to be clear, did its counsel) make any deliberate attempt to conceal the four e-mails” at issue. And even still, Browne asserts that adidas “does not even come close to meeting the extraordinarily high burden set by the Second Circuit and this district to justify discarding a jury verdict – a remedy that ‘calls for the highest level of judicial restraint’ because ‘interference with a verdict is an extraordinary measure.’” 

Oct. 19, 2023: adidas filed a motion for a new trial, arguing that Thom Browne “intentionally withheld the bad-faith emails during discovery,” including four emails that were sent during the relevant discovery period for the parties’ trial, in which Thom Browne employees “admit to the ultimate liability issue in this case – a likelihood of confusion between the company’s ‘Four Bar’ design and adidas’s Three-Stripe Mark.” 

Aug. 22, 2023: Thom Browne filed a brief urging the court to affirm the judgment of the district court on the basis that: (1) Considered in their entirety, the district court’s jury
instructions were proper and caused no prejudice to adidas; (2) even assuming the single instruction on competition for consumers was improper, adidas has not met its burden to show it was prejudiced; and (3) the district court’s evidentiary rulings were not an abuse of discretion and do not warrant a new trial.

Jun. 13, 2023: Thom Browne filed – and the court granted – a motion for voluntary dismissal of its cross-appeal.

May 24, 2023: adidas filed its principal brief, arguing in favor of a new trial in light of the district court’s “erroneous and harmful jury instructions” and “erroneous and harmful evidentiary rulings.”  

Feb. 22, 2023: Thom Browne filed a notice of cross-appeal to the United States Court of Appeals for the Second Circuit from the order dismissing its counterclaim for invalidity based on aesthetic functionality. 

Feb. 8, 2023: Adidas 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.” 

Jan. 13, 2023: The court entered a final judgment in favor of Thom Browne and dismissed adidas’ complaint in its entirety. 

Jan. 12, 2023: Within a matter of hours of the close of the trial that had been underway before the U.S. District Court for the Southern District of New York, the jury sided with Thom Browne. Despite adidas’s arguments to the contrary, the jury found that Thom Browne did not engage in trademark infringement or dilution by offering up apparel and footwear bearing a four-stripe motif.

May 5, 2022: Thom Browne filed its answer, complete with 18 affirmative defenses – and a counterclaim aimed at getting one of adidas’ 3-stripe trademark registrations canceled. In addition to denying the bulk of the allegations that adidas has made against it in its complaint, Thom Browne set out affirmative defenses, arguing that, among other things, it should be shielded from liability because adidas failed to take action against it – in a timely manner – over its use of a 4-stripe pattern, which has appeared on Thom Browne wares since 2009. 

Apr. 21, 2022: Judge Jed Rakoff adopted a magistrate judge’s report and recommendation, thereby, refusing to grant Thom Browne’s motion to dismiss the case. 

Oct. 6, 2021: In a motion to dismiss and corresponding memo in support, Thom Browne argued that despite asserting claims of federal and common law trademark infringement, unfair competition, and dilution based upon its “purported rights in [its] so-called ‘Three-Stripe Mark,’” adidas fails to sufficient make its case on a number of fronts. Primarily, Thom Browne argues that adidas’ claims are “too vague to provide adequate notice as to the identity of the allegedly infringing products or the factual basis for its trademark infringement, unfair competition and dilution claims.”

June 28, 2021: Adidas filed suit against Thom Browne, setting out claims of trademark infringement and dilution, as well as unfair competition, and is seeking to permanently enjoin Thom Browne from “distributing, marketing, or selling apparel and footwear using or bearing confusingly similar imitations of the adidas Three-Stripe Mark.” 

Dec. 14, 2020: On the heels of initiating an opposition proceeding in 2018 in response to a trademark application that Thom Browne filed in the European Union for a four-striped mark, 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.

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