On the heels of Adidas filing (and subsequently settling) a trademark infringement suit against Forever 21 in 2015, the Los Angeles-based fast fashion retailer has filed its own suit against the German sportswear giant. In its complaint, which Forever 21 filed in the U.S. District Court for the Central District of California late last week, the retailer alleges that it received “a letter dated February 24, 2017, [in which] Adidas’s counsel … threatened to sue Forever 21 over its use of stripes on six items of clothing.”
According to Forever 21’s complaint, it “has fallen victim to Adidas’s threats [of trademark infringement-related litigation] on more than one occasion. Since 2006, Adidas has commenced a pattern of complaining about striped apparel sold by Forever 21, and it has steadfastly increased its threats to encompass virtually any item of clothing with decorative stripes.”
Forever 21 claims that “years ago, Adidas managed to secure federal trademark registrations for use of three, parallel stripes placed in specific locations on certain shoes and clothing. Adidas is well known for aggressively enforcing its perceived trademark rights against others, suing and threatening suit against retailers and manufacturers of footwear and clothing who use three stripes in a manner that Adidas believes is likely to cause confusion.”
Still yet, the fast fashion retailer goes on to note, “Adidas has taken its claims even further—too far—essentially asserting that no item of clothing can have any number of stripes in any location without infringing Adidas’s trademarks. To this end, Adidas has sued clothing and footwear manufacturers who have used two stripes. It has sued those who use four. It has sued over stripe patterns involving multiple widths and colors, and it has sued over garments Adidas is not known for making. It has also threatened to sue many others on similar claims.
Finally, Forever 21 states, “Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 has decided that enough is enough. Forever 21 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”
For the uninitiated, a declaratory judgment is a binding judgment from a court defining the legal relationship between parties and their rights in the matter before the court. It asserts the court’s authoritative opinion regarding the exact nature of the legal matter without requiring the parties to do anything.
Claiming that consumers are not likely to be confused between its fashion-centric wares and Adidas’s garments (the central inquiry in a trademark infringement matter), Forever 21 is seeking a declaration from the court that its use of two stripes in apparel designs does not infringe or dilute Adidas’s three-stripe trademark.
In particular, Forever 21 wants the court to issue a “judgment declaring that (a) the stripes on Forever 21’s Striped Clothing is ornamental and does not serve a source-identifying function, (b) Forever 21’s Striped Clothing does not infringe any trademark rights owned by Adidas, and (c) Forever 21’s sale of the Striped Clothing does not constitute a breach of any contract entered into by Forever 21 and any Adidas entity.” (The “contract” refers to a confidential settlement agreement between the parties in connection with the trademark infringement suit that Adidas filed against Forever 21 in 2015).
While a declaratory judgment in Forever 21’s favor would not provide any further action from the court, it would effectively force Adidas to cease its threats of infringement against Forever 21, as the court will have held that Forever 21 has not infringed its trademarks.
Forever 21’s suit comes on the heels of an array of recent trademark infringement-related lawsuits (and opposition proceedings) initiated by Adidas, including matters against Shoe Branding Europe, football club FC Barcelona, Italian fashion brand Bally, fellow footwear brand ECCO, Skechers, Marc Jacobs, and Elon Musk’s Tesla, among others.
A spokesman for Adidas told TFL on Monday: “While we don’t comment on pending litigation, please note that adidas will continue to vigorously protect our rights and will continue to take action in case of infringements.”
* The case is Forever 21 Inc v. Adidas America Inc. et al, 2:17-cv-01752 (C.D. Cal.).