Image: Thom Browne

A magistrate judge in New York does not think that adidas’ stripe-centric lawsuit against Thom Browne should be tossed out of court, despite the American fashion brand’s arguments to the contrary. On the heels of Thom Browne filing a motion to get adidas’ trademark infringement, unfair competition, and trademark dilution complaint suit dismissed, a magistrate judge for the U.S. District Court for the Southern District of New York stated in a report and recommendation dated March 23 that for the most part, Thom Browne’s motion should be denied and adidas’ headline-making lawsuit should move forward.

Setting the stage in his report and recommendation to Judge Alison Nathan, Magistrate Judge Robert Lehrburger states that “Adidas is internationally known and symbolized by its famous three-stripe mark,” with the general public in the U.S. having “come to associate adidas with the mark” for which it owns 24 federal trademark registrations issued by the United States Patent and Trademark Office (“USPTO”) for use on “athletic footwear,” “footwear,” “sports and leisure wear,” and “clothing,” among other things. 

Meanwhile, Thom Browne is “a clothing and accessories designer known especially for its cropped men’s suits and jackets and avant-garde womenswear.” Since 2004, Thom Browne “has attached as a detail to its clothing what it refers to as a white- red-white-blue-white ‘five stripe ribbon’ design,” and more recently, “has expanded its fashion line to include sportswear and athletic-styled footwear that adidas alleges bears confusingly similar imitations of its three-stripe mark.” In furtherance of its “encroachment into [adidas] core market category,” as adidas has characterized it, Thom Browne has filed trademark applications to register “a striped design mark on apparel,” prompting adidas to initiate an opposition, aiming to prevent registration of Thom Browne’s applications.

Against that background, Magistrate Judge Lehrburger states that the parties have engaged in “sporadic settlement discussions and an unsuccessful mediation” since the summer of 2018, with adidas ultimately filing this suit against Thom Browne in June 2021, arguing, among other things, that Browne is 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].” 

Adidas Thom Browne
Thom Browne garments and footwear

In response to adidas’ complaint, Browne filed a motion to dismiss, primarily arguing that the sportswear titan’s complaint does not provide it with “sufficient notice of the claims against it because the complaint does not specify which of the accused products infringe which trademark registrations and which products dilute which trademarks,” adidas “lacks standing to assert its claims because it does not own the registrations,” and the court cannot sustain an opposition pending before the USPTO’s Trademark Trial and Appeal Board (“TTAB”).  

Reflecting on these arguments, the magistrate judge largely sided with adidas, finding that the German giant sufficiently pled its trademark infringement, unfair competition, and trademark dilution claims, and that it has standing to bring such claims against Thom Browne, while siding with Thom Browne with regards to whether the court has jurisdiction over the opposition that adidas initiated with the TTAB.

Primarily, Magistrate Judge Lehrburger addresses Thom Browne’s claim that adidas’ complaint falls short of the requisite pleading standard, as it does not specify which of the 24 trademark registrations that adidas cites in its complaint (all of which extend to its famed three-stripe mark) are being infringed upon and does not “sufficiently define the ‘parameters of the design’ that comprises its asserted ‘three-stripe mark.’” From Thom Browne’s perspective, as the brand argues in its motion to dismiss, the 24 different trademark registrations have “such significant variation that they cannot constitute a single three-stripe mark,” and thus, adidas’ complaint “lacks sufficient specificity to provide fair notice of [the plaintiffs’] claims.” 

Unpersuaded by Thom Browne’s arguments, Lehrburger states that adidas is “required to allege sufficient facts establishing they own a protectible mark, which they have done.” Specifically, adidas’ complaint “provides fair notice of [its] claims, alleges facts sufficient to establish each required claim element, and adequately identifies the protected mark and the products that allegedly infringe on that mark.”  

The magistrate judge also asserts that adidas need not alleged more than this simply because it “consistently refers to its three-stripe mark as a unitary mark,” Citing the decision of U.S. District Court for the District of Oregon in Adidas America, Inc. v. Forever 21, Inc., Lehrburger says that “at least one federal court has already rejected the notion that adidas’ pleading of multiple registrations and a unitary three-stripe mark requires a more definite statement.” 

As for likelihood of confusion, Lehrburger finds that adidas “readily provides allegations sufficient to establish likelihood of confusion” in its complaint, including “several indicia of likelihood of confusion, such as strength of the three-stripe mark, similarity of the parties’ marks, similarity of products, and Thom Browne’s knowing and intentional encroachment and use of confusingly similar marks.” 

Adidas Thom Browne
Examples of adidas’ uses of its 3-stripe marks

Keeping adidas’ trademark infringement and unfair competition claims in place, the Magistrate Judge similarly holds that adidas has sufficiently made its case for trademark dilution, as “Thom Browne’s challenge to the sufficiency of adidas’ dilution claims is essentially the same as its challenge to the infringement and unfair competition claims, (i.e., that the complaint does not specify which of Thom Browne’s product executions dilutes which trademark).” And this argument “fails for the reasons explained above in the context of infringement and unfair competition,” according to the judge. 

In yet another preliminary win for adidas, the magistrate judge determined that Thom Browne “provides little to no support for” its argument that adidas’ complaint should be dismissed because it does not have standing to bring the claims that it has asserted. “Just as with its bid to dismiss the complaint for lack of definitiveness,” Lehrburger says that Thom Browne’s standing argument “already has been rebuffed in federal court.” In Adidas America, Inc. v. Athletic Propulsion Labs, LLC, the defendant argued – as Thom Browne does here – that adidas America, Inc. lacked standing to sue for trademark infringement because it was “merely a non-exclusive licensee of the trademarks whose value is held by adidas AG.”

The court rejected that argument as it determined that adidas America had standing to sue under the Lanham Act because it “had a commercial interest in the three-stripe mark.” The same holds true here for Adidas America, Inc., per Lehrburger. 

Finally, in a win for Thom Browne, the Magistrate Judge sides with the fashion brand in its argument that the complaint “improperly requests the court to sustain the pending TTAB opposition proceeding that adidas filed against Thom Browne’s application for a striped design mark” on the basis that the court does not have jurisdiction to sustain or overrule the pending TTAB opposition. As such, Lehrburger asserts that adidas’ request that the court sustain its opposition should be stricken. 

The court may or may not adopt the magistrate judge’s recommendations. 

The case is adidas America, Inc., et. al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).