Adidas is suing Thom Browne in the latest battle that it has waged over its famous three stripes. According to the trademark infringement and dilution complaint that it filed in a New York federal court on Monday, as first reported by TFL, adidas claims that “despite Thom Browne’s knowledge of [its] rights in the famous three-stripe mark,” which adidas says that it has been using since as early as 1952, the New York-based fashion brand “has expanded its product offerings far beyond [its] formal wear and business attire speciality,” and is “now offering for sale and selling athletic-style apparel and footwear featuring two, three, or four parallel stripes in a manner that is confusingly similar to adidas’s three-stripe mark.”
In the newly-filed complaint, adidas claims that “for over half a century, [it] extensively and continuously has used and promoted the three-stripe mark in connection with apparel and footwear,” with annual sales of products bearing the three-stripe mark reaching into “the hundreds of millions of dollars within the United States” in recent years. At the same time, and as a result of adidas routinely spending “millions of dollars promoting the mark and products bearing the mark in the United States,” the sportswear company’s three-stripes motif has “achieved widespread fame and tremendous public recognition,” and adidas has come to enjoy the “extremely valuable goodwill that is symbolized by the famous mark.”
Even though adidas’s stripes serve as a “widely recognized” trademark that acts as an “indicator of the origin of adidas’s goods” and have been famous since “long before Thom Browne began distributing, marketing, promoting, offering for sale, or selling” sportswear that bears lookalike stripe marks, adidas alleges that Browne has taken to offering up sportswear that “imitates [its] three-stripe mark in a manner that is likely to cause consumer confusion and deceive the public regarding its source, sponsorship, association, or affiliation,” and thereby, is “irreparably harming adidas’s brand and its extremely valuable [mark].”
While Browne is primarily known for “its tailored and cropped men’s suits and jackets and avant-garde womenswear,” adidas contends that the fashion brand “has, more recently, encroached into direct competition with adidas by offering sportswear and athletic-styled footwear that bear confusingly similar imitations” of adidas’s three-stripe mark. “Exacerbating Thom Browne’s encroachment into adidas’s core market category,” adidas claims that the brand “entered into a partnership with the famous European football (soccer) club FC Barcelona, beginning with the 2018-2019 season and continuing today,” and that the brand has “promoted its goods using images associated with soccer and even several soccer players that are sponsored by adidas, including most notably Lionel Messi.”
With such foregoing expansion efforts in mind, adidas states that Thom Browne went even further by filing trademark applications in the European Union and with the U.S. Patent and Trademark Office to register various stripe designs. In fact, adidas alleges that “the present dispute began in 2018, when [it] opposed a trademark application that Thom Browne filed in the EU” for a striped mark. Shortly after initiating an EU opposition, adidas states that its counsel “began investigating Thom Browne’s product lines in the United States,” and found uses of allegedly infringing “two- and four-stripe” marks. In the summer and fall of 2018, “adidas’s in-house counsel attempted to negotiate a resolution with counsel for Thom Browne” in connection with its use of the striped marks, but such efforts “proved fruitless.”
Fast forward to December 2020 and adidas filed an 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 U.S. trademark applications for red, white, and blue stripe trademarks for use on footwear, filed by Thom Browne earlier that year on the basis that the marks are confusingly similar to its own, pre-existing marks.
In the notice of opposition that it filed in December 2020, counsel for adidas asserted that “notwithstanding [adidas’s] prior rights” in the three-stripe trademark, which it began using “over sixty-five years ago,” Thom Browne filed three intent-to-use trademark applications for a multi-stripe mark of its own. 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.”
“The parties agreed to an extension of time in hopes of resolving this matter amicably,” adidas asserts, and despite attempts at mediation in connection with their ongoing trademark clash, the parties have been unable to settle the matter between themselves. As a result, adidas initiated the case at hand, 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” and to sustain its oppositions. The sportswear giant is also angling for monetary damages, including a disgorgement of all of Browne’s profits from its sales of the allegedly infringing sportswear.
The case at hand is the latest in a long list of lawsuits and other legal challenges that adidas has waged over stripes, which has seen the German titan take on brands ranging from J. Crew and Juicy Couture to Tesla and Forever 21.
UPDATED (June 30, 2021): In a statement in response to adidas’ filing, a spokesman for Thom Browne told WWD, “We believe we are right and we are confident in the outcome of the case, as we have acted honorably for all this time. They consented for 12 years and now they are changing their mind. The court won’t allow that. And consumers won’t as well. It is an attempt to use the law illegally.” The spokesman further asserted that “there have been continuing discussions to resolve the matter amicably,” and noted that “what is important to understand is that Adidas gave its consent to Thom Browne over 10 years ago and in fact suggested that Thom add an additional stripe to reach four on the sleeves or the pants and that this would be OK by Adidas. From that point for over a decade Adidas never said a word to Thom Browne.”
“It is more than reasonable to believe that Adidas, having first expressed concern to Thom Browne over three stripes, made sure to watch what Thom has been doing ever since. Adidas, like all good brands, monitors the market,” per Thom Browne’s rep. With that in mind, “For Adidas to [now] claim it has lost value in its trademarks or that somehow they have lost sales due to Thom Browne’s use of a four-striped design for over 10 years, which Adidas has been more than aware of, is simply nonsense.”
The case is adidas America, Inc., et al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).
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