Vans has asked a New York federal court to find that MSCHF is disregarding a temporary restraining order and preliminary injunction that prohibit it from continuing to offer up and/or fulfill existing orders for the allegedly infringing Wavy Baby sneakers. In a letter to Judge William Kuntz of the U.S District Court for the Eastern District of New York dated May 12, counsel for Vans alleges that despite the court’s April 29 Decision & Order, granting Vans’ motion for a temporary restraining order and preliminary injunction, MSCHF has “continued to fulfill orders for, and ship, its infringing Wavy Baby shoes in violation of the injunction.” 

“Despite the unambiguous language of the injunction,” Vans alleges that it has learned from “multiple sources that MSCHF has continued to ship the infringing shoes to customers even after the injunction issued and that it has also refused to reverse and/or cancel incomplete orders for the infringing shoes.” Specifically, Vans asserts that it maintains evidence that two MSCHF customers who ordered the Wavy Baby sneakers in April “received notifications from MSCHF’s shipping carrier indicating they had received [their] order information.” Beyond that, Vans claims that it has evidence that one of its own employees who ordered the allegedly infringing shoes on April 18 “received a shipment notification that her order had been picked up by the carrier from a warehouse facility in China operated by MSCHF’s manufacturer/distributor” on May 11, almost two weeks after the injunction was issued. 

“Each of the [these] violations, alone,” serves to violate the court’s order, which “clearly and unambiguously” prohibits MSCHF from “fulfill[ing] any orders for the infringing shoes” and requires it to “‘reverse and/or cancel’ any unfulfilled orders,” counsel for Vans contends. As such, they “merit a finding that MSCHF is in contempt of this court’s order,” per Vans, and also “demonstrate that MSCHF has intentionally and repeatedly flouted the authority of the court.” Beyond that, Vans asserts that it is “highly likely that more similar incidents will come to light through the briefing and hearing of Vans’ contempt motion.” 

With the foregoing in mind, Vans argues that a finding of contempt and appropriate sanctions are “necessary to ensure MSCHF’s compliance with its obligations, and to protect Vans’ intellectual property rights from further irreparable harm.” Such a finding is proper here, counsel for the Southern California-based footwear brand argues, as “(1) the [court’s] order that was violated by [MSCHF] is ‘clear and unambiguous;’ (2) the proof of noncompliance is ‘clear and convincing;’ and (3) [MSCHF] has not ‘diligently attempted to comply [with the order] in a reasonable manner.’”

In addition to an order of contempt, Vans contends that the imposition of sanctions is “necessary to immediately ensure that MSCHF conforms its conduct to the court’s unambiguous instructions,” including “a coercive fine to ensure MSCHF’s future compliance with the court’s order.” On this point, Vans cites the award of “a fine of $25,000 plus a fine of $10,000 for each day the contemnor failed to comply with the court’s order” from U.S District Court for the Southern District of New York in Cherie Amie, Inc. v. Windstar Apparel, Corp. It further contends that “an award of attorneys’ fees for the cost to Vans of bringing MSCHF’s contempt to the Court’s attention should also be granted, as MSCHF had ample notice of the Injunction and nonetheless willfully disregarded its obligations.” 

Judge Kuntz responded to Vans’ letter on May 12 with an order that MSCHF file a response to Vans’ contempt and sanctions request “on or before May 20.”

Vans made headlines last month when it filed suit against Brooklyn-based “art collective” MSCHF, alleging that “in spite of, or perhaps due to, [its] knowledge of Vans’ rights and the substantial value of the Vans trademarks and trade dress, MSCHF embarked on a campaign to piggy-back on Vans’ rights and the goodwill it has developed in its iconic shoes” by offering up a shoe of its own that “blatantly and unmistakably incorporates Vans’ iconic trademarks and trade dress.” In its complaint, Vans claims that by way of the Wavy Baby sneaker, MSCHF is willfully infringing its trademark and trade dress rights in the 40-year-old OLD SKOOL shoe, including the Side Stripe trademark, and also engaging in unfair competition, trademark dilution, and unfair trade practices under New York State law.

MSCHF (unsuccessfully) argued in response to Vans’ quest for a temporary restraining order and preliminary injunction that Vans is not likely to succeed on the merits of its trademark infringement (and dilution) claims because the Wavy Baby sneakers are “an artwork protected by the First Amendment” and “no reasonable consumer would be confused into thinking that Wavy Baby was produced or endorsed by Vans.” MSCHF further argued that an injunction prohibiting it from offering up the Wavy Baby shoes “would unconstitutionally restrain [its] free speech because its parody of Vans is protected First Amendment expression.” 

Counsel for MSCHF has since filed a notice of appeal to the U.S. Court of Appeals for the Second Circuit in response to the district court’s grant of a temporary restraining order and preliminary injunction.

The case is Vans, Inc. v. MSCHF Product Studio, Inc., 1:22-cv-02156 (EDNY).

Nike has asked a New York federal court to allow it to amend the complaint that it filed against StockX early this year over the resale marketplace’s allegedly infringing “Vault” NFTs, asserting that since it lodged that complaint, “additional facts transpired or were discovered that are highly relevant to [its] claims against StockX.” In addition to entering into the non-fungible token (“NFT”) market since the filing of its suit by way of a venture with its RTFKT brand, the Beaverton, Oregon-based sportswear behemoth claims that it has purchased a number of pairs of counterfeit “Nike” sneakers from the StockX platform, and all the while, StockX has altered its terms for the “Vault” NFTs, giving rise to the need for Nike to make relevant amendments to its original filing. 

In the 25-page memo of law in support that it filed with the U.S. District Court for the Southern District of New York on Tuesday, counsel for Nike seeks leave to amend the complaint that it filed against StockX in February, in which it accused the fashion and footwear resale platform of trademark infringement, trademark dilution, and unfair competition. Since it lodged that complaint, Nike claims that there are “multiple facts that occurred or were discovered” that are directly related to its claims against StockX. 

Primarily, Nike argues that “StockX has made a series of modifications to its representations surrounding [the] Vault NFTs” at the center of the case. For example, Nike states that after it “shined a spotlight on several problematic and deceptive terms governing the infringing Nike-branded NFTs, StockX deleted and/or replaced those terms.” StockX also allegedly “modified Vault NFT marketing that, e.g., promised owners of the infringing Nike-branded NFTs exclusive StockX benefits.” While these changes “do nothing to excuse StockX’s ongoing infringement of Nike’s marks or to resolve its past infringement and, indeed, by the time those modifications were made, StockX had already offered for sale, sold, and/or released into the stream of commerce all of the infringing Nike-branded NFTs,” Nike argues that StockX’s “revisionary conduct is, nonetheless, relevant to [its] claims,” and thus, should be included in an amended complaint. 

Beyond that, Nike says that its own position has changed since it filed suit, as it has since entered the NFT market, a fact that is critical to the likelihood of confusion analysis. “Two key factors in the likelihood of confusion analysis are ‘proximity of the products and their competitiveness with one another’ and evidence that the senior user may ‘bridge the gap’ by developing a product for sale in the market of the alleged infringer’s product,” Nike asserts. “Sure enough, after Nike’s drop of these NFTs, additional actual confusion between the parties’ occurred because of StockX’s infringing Nike-branded NFTs.”

Finally, Nike proposes supplementing its pleadings with additional allegations – and two addition causes of action – centering on its alleged purchase of “four confirmed pairs of counterfeit ‘Nike’ shoes” from the StockX platform. Despite “StockX’s numerous guarantees of authenticity,” and its argument that each of the Vault NFTs functions as “a ‘claim ticket’ to a pair of Nike shoes that StockX authenticated using its ‘proprietary, multi-step authentication process,’” Nike claims that it purchased the counterfeit sneakers “within a two-month period on StockX’s platform.” 

“At least one pair of those counterfeit shoes are the same style as one of the infringing Nike-branded Vault NFTs,” Nike asserts. 

Nike StockX

In addition to seeking to include factual allegations about how StockX is “actively and directly selling counterfeit goods on its platform,” Nike says that it is looking to add counterfeiting and false advertising causes of action to its original five causes of action. Nike claims that it has a claim for false advertising in light of StockX’s practice of “guaranteeing [its] sales as ‘100% Verified Authentic’ based on its ‘proprietary’ authentication process when they are not,” and give that “those statements are material to [consumers’] purchasing decisions.”  

As support for proposed inclusion of counterfeiting and false advertising claims, Nike asserts that “a court in this District recently denied a Rule 12(b)(6) motion to dismiss nearly identical causes of action for counterfeiting and false advertising.” The case that Nike is referencing is Chanel v. The RealReal (“TRR”), in which the court held that “Chanel has adequately averred that its own investigation revealed that TRR marketed and sold counterfeit Chanel products, and Chanel has also alleged that TRR’s own customers have complained about the receipt of counterfeit merchandise.” 

In the case at hand, just as Chanel asserts in its case against TRR, Nike argues that it sets out “plausible claims for counterfeiting and false advertising because the proposed [amended complaint] sufficiently alleges that StockX has been and is currently dealing in counterfeit Nike goods, which renders false and/or misleading StockX’s ‘100% Verified Authentic’ claims and its claims about the ‘proprietary multi-step verification process’ it employs to authenticate goods.” 

Nike also contends that it “sufficiently alleges that StockX is knowingly deceiving consumers with these false and/or misleading statements about the authenticity of the Nike goods for sale on its platform, continuing to engage in such improper and unlawful business practices to attract consumers to its platform and induce consumers to purchase supposedly genuine Nike goods and purchase and trade the infringing Nike-branded Vault NFTs.” And still yet, Nike alleges that “the continued sale of counterfeit Nike goods on StockX’s platform and StockX’s false and/or misleading claims about its authentication process has caused and is causing Nike injury as a result of, inter alia, harm to reputation, diverted sales, consumer confusion, dilution, and tarnishment of its valuable trademarks.” 

For the foregoing reasons, Nike requests the Court grant it leave to file a first amended complaint. 

In a statement in response to Nike’s filing, a spokesman for StockX stated on Wednesday, “We take customer protection extremely seriously, and we’ve invested millions to fight the proliferation of counterfeit products that virtually every global marketplace faces today. Nike’s latest filing is not only baseless but also is curious given that their own brand protection team has communicated confidence in our authentication program, and that hundreds of Nike employees – including current senior executives – use StockX to buy and sell products. This latest tactic amounts to nothing more than a panicked and desperate attempt to resuscitate its losing legal case against our innovative Vault NFT program that revolutionizes the way that consumers can buy, store, and sell collectibles safely, efficiently, and sustainably. Nike’s challenge has no merit and clearly demonstrates their lack of understanding of the modern Marketplace.”

The case is Nike, Inc. v. StockX LLC, 1:22-cv-00983 (SDNY).

A stripes-centric legal battle between adidas and Thom Browne is heating up. On the heels of a New York federal court refusing to toss out the trademark case that adidas filed against it last year, Thom Browne has 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 sets out an array of 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. 

In furtherance of its Laches, Acquiescence, and Estoppel defense, Thom Browne claims that adidas has been aware of its use of the 4-stripe mark since 2007 when “adidas complained about Browne’s use of three horizontal parallel bands on its clothing,” prompting it to adopt a logo that consists of “four horizontal parallel bands.” From 2009 through 2018, which is when adidas first initiated an opposition proceeding over one of Browne’s 4-stripe marks in the European Union, Thom Browne claims that “adidas did not complain about [its] use of four horizontal parallel bands on clothing.”

The New York-based fashion brand also claims that “throughout this period of time … there have been no instances of actual confusion between [its] use of four horizontal parallel bands, and adidas’ use of three stripes.” 

adidas Thom Browne

In connection with other affirmative defenses, the brand asserts that it and adidas operate in “entirely separate markets, at vastly different price points, and are not competitors,” thereby, diminishing the likelihood of confusion. Beyond that, Browne argues that it despite adidas’ allegations to the contrary, it has “not encroached into adidas’ market,” and that “any changes to [its] product line over the years” – i.e., its expansion from high fashion into sportswear/activewear – “has been natural and anticipated.” 

Additionally (and setting the stage for its cancellation-focused affirmative defense), Browne argues that adidas lacks robust rights in the 3-stripe motif, as the German giant’s use of stripes on clothing and footwear “has not been exclusive.” In fact, Browne asserts that “numerous third parties use stripes, in multiple variations and iterations, on clothing and footwear,” and claims that adidas has “failed to police the market, and, as a result, has allowed third parties to use stripes on clothing and footwear,” thereby, removing adidas’ ability to make its trademark claims in this case. (The failure-to-enforce claim is an interesting one given that later on in its filing, Browne specifically points to adidas’ “notoriety as an overzealous enforcer of its actual and perceived rights in its ‘Three- Stripe Mark.’”)

With the foregoing defenses (and others) in mind, counsel for Thom Browne is seeking “a judgment dismissing the complaint, for costs and disbursements, an award of attorneys’ fees, and such other and further relief as to the Court seems proper.” 

Thom Browne’s Cancellation Counterclaim

Turning its attention to its counterclaim, Thom Browne asserts that adidas’ “Three-Quadrilaterals Design” mark (Registration No. 4,910,643) is “merely ornamental and/or aesthetically functional” and “has not acquired secondary meaning.” Pushing for the court to cancel the registration, which extends to “articles made of leather and imitation leather,” clothing, and “athletic sporting goods,” Thom Browne argues that during the registration process, adidas did not “specifically establish that the design is perceived as an ‘indicia of source,’” and thus, the U.S. Patent and Trademark Office (“USPTO”) should never have registered the mark back in 2016. 

adidas Thom Browne

In responding to a March 2015 Office Action from the USPTO, which preliminarily refused to register the mark on the basis that it was “merely a decorative or ornamental feature of the goods,” Thom Browne claims that “nearly all” of the product photographs that adidas provided to the USPTO show the Three-Quadrilaterals Design used alongside the “adidas” work mark and/or its “Badge of Sport” mark, “if they show the Three-Quadrilateral Designs at all.” In short: Thom Browne claims that adidas did not establish that the Three-Quadrilaterals Design, by itself, serves as an indicator of source for consumers. 

“The Three-Quadrilaterals Design is merely ornamental and/or aesthetically functional as applied to the goods” cited in the registration, Browne alleges, and in lieu of a showing of secondary meaning, “the mark is not likely to be perceived by the consuming public as an identification of the source of the goods.” 

Thom Browne states that it “believes it is likely to be damaged by maintenance of adidas AG’s Registration No. 4,910,643 because adidas is asserting that registration against Thom Browne in this case in an effort to disrupt Thom Browne’s business.” As a result, Browne is looking to have “the complaint and each and every purported claim for relief be dismissed with prejudice,” and judgment entered in Thom Browne’s favor on its counterclaim, including an order from the court cancelling the adidas trademark registration at issue. 

In the complaint that it filed in June 2021, in which it sets out claims of trademark infringement, unfair competition, and dilution, adidas argues that in furtherance of Thom Browne’s “recent encroach[ment] into direct competition with adidas by offering sportswear and athletic-styled footwear that bear confusingly similar imitations” of adidas’s three-stripe mark, which adidas asserts that it has “extensively and continuously has used and promoted … in connection with apparel and footwear … for over half a century.” 

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

A New York federal court has ordered MSCHF to refrain from offering up, marketing, and/or fulfilling existing orders for its allegedly infringing Wavy Baby sneakers for the duration of the trademark-centric case that Vans filed against it last month. In a decision and order dated April 29, Judge William Kuntz of the U.S. District Court for the Eastern District of New York sided with Vans, granting its motion for a temporary restraining order and preliminary injunction on the basis that Vans is likely to prevail on the merits of its underlying claims, including trademark infringement, and that the sneaker-maker is likely to suffer irreparable harm unless MSCHF’s alleged infringement is stopped.

First addressing the likelihood that consumers will be confused as to the nature of MSCHF’s Wavy Baby sneakers, the court pointed to the “striking visual similarities between the [Vans] Old Skool shoes and the Wavy Baby shoes and their respective packaging.” The court was not persuaded by MSCHF’s argument that while it makes use of marks that are similar to Vans’ marks, it has “distorted” those marks, thereby, making them different from the ones that Vans uses to indicate the source of its offerings. The marks “need not be identical, but rather only similar, for there to be a likelihood of confusion,” per Judge Kuntz, who stated that the critical question is not whether the differences between the two shoes/marks “are easily discernable on simultaneous viewing, but whether they are likely to be memorable enough to dispel confusion on serial viewing.”

MSCHF’s distortion of the original Vans trademarks is insufficient to dispel consumer confusion, according to the court, which also noted that Vans sufficiently establishes that there is actual confusion at play, namely, by way of comments from consumers about the similarity of the two parties’ shoes, and more importantly, comments that demonstrate that “consumers have misunderstood the source of the Wavy Baby sneakers as a collaboration between” MSCHf and Vans.

As for consumer sophistication (a factor in the likelihood of confusion analysis), the court sided with Vans here, unpersuaded by MSCHF’s claims that “few of the purchasers of the Wavy Baby shoes were likely to be unsophisticated members of the general public” by virtue of the fact that the shoes were only available for a short time on MSCHF’s app. The court stated that the MSCHf sneakers were offered up to the general public “through self-service mediums accessible without professional assistance,” and noted that “shoes generally are a common consumer item.” Also weighing in Vans’ favor, according to the court, is the fact that MSCHF engaged in a “broad advertising campaign” for the Wavy Baby shoes in collaboration with Tyga, which makes it “likely that at least some buyers of the Wavy Baby shoes purchased them as a result.”

(To be fair, while the court states that the MSCHF sneakers were offered up and advertised to the general public, and that sneakers, generally, are a common consumer product, which suggests that the level of consumer sophistication and attention to detail in connection with such a purchase is low, there is actually a very good chance that most of the individuals who are in the market to buy MSCHF sneakers are distinct from the average sneaker buyer, which stands to impact the level of consumer sophistication at play here, and thus, the likelihood of confusion.)

MSCHf Wavy Baby

In terms of the proximity of the two parties’ offerings (another likelihood of confusion factor), the court determined that Vans demonstrated “sufficient proximity,” specifically pointing to its practice of regularly releasing special edition versions of the Old Skool shoes, including in limited quantities, in collaboration with others, and at similar price points as the MSCHF sneakers. And in pushing back against MSCHF’s argument that its sneakers are more akin to artworks “likely to be kept in glass cases or on shelves” than to Vans’ more wearable Old Skool shoes, the court cited a podcast interview with MSCHF chief creative officer Lukas Bentel, who stated that the Wavy Baby sneakers, as distinct from previous MSCHF sneaker releases, are a move by MSCHF to “transcend into more of a straight sneaker space.” 

Turning his attention to MSCHF’s First Amendment arguments, namely, that Vans is unlikely to succeed on the merits of its trademark claims because the Wavy Baby sneakers are a “parodic or artistic expression” of Vans’ marks, Judge Kuntz asserted that the MSCHF sneakers “do not meet the requirements for a successful parody.” While the Wavy Baby sneakers “convey their similarly and reference to the Old Skool shoe trademarks,” they do not “sufficiently articulate ‘an element of satire, ridicule, joking or amusement’ clearly indicating to the ordinary observer that [MSCHF] is ‘not connected in any way with [Vans],” according to the court. 

MSCHF included its own branding on the shoe label and “distorted” the original Vans trademarks, but “the extensive similarities and overall impression [of the MSCHF sneaker] overcome any such distinguishing features,” Judge Kuntz stated, “as evidenced by actual confusion in the marketplace.” Moreover, the judge stated that while the manifesto accompanying the shoes – which commented on the rampant copying in the sneaker space, Vans’ “outsized role” in consumer culture, and Vans’ ventures in the metaverse – “may contain protected parodic expression,” the shoes, themselves, and the packaging “fail to convey the satirical message.”

MSCHf Wavy Baby

Addressing MSCHF’s reference to the Louis Vuitton v. My Other Bag case, in which MOB successfully argued parody in connection with its manufacture and sale of canvas tote bags bearing depictions of Louis Vuitton-like bags, Judge Kuntz says the case at hand is distinguishable, as “the satirical message presented by the Wavy Baby shoes is not readily perceived from the product without the accompanying manifesto or descriptions.” As such, this is different from the play on the well-known “my other car …” joke in the My Other Bag case, Judge Kuntz asserts. 

Judge Kuntz also shoots down MSCHF’s comparison of the Wavy Baby sneakers to the rubber dog toys in the Bad Spaniels case. Unlike the MSCHF and Vans sneakers, the dog toy in the Bad Spaniels case “does not occupy the same market as Jack Daniels whiskey,” per Judge Kuntz, who notes that “where the infringement claim involves a competing product, ‘parodic use is sharply limited.’” Beyond that, the dog toy incorporates “clear puns and parodic references and displays clear distinctions between the products, making the parody more discernable and overt,” according to the judge. 

Finally, Judge Kuntz determined that the irreparable harm factor weighs in favor of Vans, as the Wavy Baby shoes “create a strong risk of consumer confusion and irreparable harm to the consumer recognition and good will cultivated by [Vans,’” namely, the brand recognition and success of the Old Skool shoes and associated trade dress that Vans has spent forty-five years and millions of dollars in marketing. The court also stated that MSCHF “failed to many any representations” that it would “not continue to produce iterations of the Wavy Baby shoes following the conclusion of the present litigation for one reason: it intends to do precisely that.”

Against this background, the court granted Vans’ request for a temporary restraining order and preliminary injunction, thereby, requiring MSCHF and all persons acting in concert with it to refrain from “advertising, marketing, prompting, offering to sell, selling, distributing, and/or taking orders” – or fulfilling existing orders – for the Wavy Baby shoes. MSCHF must also “reverse and/or cancel any orders for the shoes that have been places as of the time” of the court’s order, and put the revenues from all of orders for the Wavy Baby sneakers that it did fulfill (roughly 4,000 pairs) into escrow.

It is not yet clear whether MSCHF will appeal, and as of now, all mention/images of the Wavy Baby sneakers have been removed from MSCHF’s website. Imagery of the Wavy Baby sneakers remains on the social media accounts of MSCHF collaborator Tyga, who is not named as a defendant in Vans’ suit. 

UPDATED (May 2, 2022): Counsel for MSCHF has filed a notice of appeal to the U.S. Court of Appeals for the Second Circuit in response to the district court’s grant of a temporary restraining order and preliminary injunction.

The case is Vans, Inc. v. MSCHF Product Studio, Inc., 1:22-cv-02156 (EDNY).

Adidas’ case against Thom Browne will move forward in the wake of an unsuccessful attempt by the New York-based fashion brand to get the stripe-centric spat tossed out of court. On the heels of Thom Browne filing a motion to get adidas’ trademark infringement, unfair competition, and trademark dilution complaint suit dismissed, which was largely denied in a report and recommendation from a magistrate judge for the U.S. District Court for the Southern District of New York last month, Judge Jed Rakoff adopted the magistrate judge’s report in a move that enables adidas’ headline-making lawsuit to move forward.

“The court finds itself in complete agreement with Magistrate Judge Lehrburger’s Report and Recommendation,” Judge Rakoff stated in an order dated April 21. In particular, Judge Rakoff pointed to Lehrburger’s conclusion that adidas’ complaint “sufficiently alleges that [its] three-stripe mark functions as a unitary mark.” Not a total loss for Thom Browne, Judge Rakoff also upheld Lehrburger’s determination that adidas “improperly requests the court to sustain the pending Trademark Trial and Appeal Board 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 opposition.

As such, Lehrburger – and now Judge Rakoff – determined that adidas’ request that the court sustain its opposition should be stricken. 

adidas Thom Browne
Some of the Thom Browne’s allegedly infringing wares

Judge Rakoff’s order follows from a motion to dismiss that Thom Browne filed in October 2021, primarily arguing that adidas’ June 2021 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.” 

Reflecting on these arguments last month, the magistrate judge largely sided with adidas (before sending his report and recommendation to the district court judge for determination), finding that the German sportswear giant sufficiently pled its trademark infringement, unfair competition, and trademark dilution claims, and that it has standing to bring such claims against Thom Browne. 

Primarily, Thom Browne claimed that adidas’ complaint falls short of the requisite pleading standard, as it does not specify exactly 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.’” As Thom Browne argued 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 Browne’s arguments, Lehrburger stated in his report that adidas is only “required to allege sufficient facts establishing they own a protectible mark, which [it has] 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.”  

adidas Thom Browne
Some of adidas’ 24 registered trademarks 

The magistrate judge asserted – and Judge Rakoff has since agreed – that adidas need not allege more than this simply because it “consistently refers to its three-stripe mark as a unitary mark,” or one that creates a commercial impression that is separate and apart from any unregistrable component. (Or as the Federal Circuit put it in the Dena Corp. case, a mark may be considered “unitary” if the elements of the mark “endow the whole with a single, integrated, and distinct commercial impression,” even if those elements would otherwise be unregistrable.)

Citing the decision of U.S. District Court for the District of Oregon in Adidas America, Inc. v. Forever 21, Inc., Lehrburger asserted 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.” 

The case is the latest in a long line of trademark lawsuits (and proceedings before the USPTO’s Opposition Division) that adidas has waged in furtherance of an aggressive and enduring practice that sees the 73-year-old sportswear behemoth police others’ unauthorized uses of stripes when its legal counsel believes that such third-party uses are likely to confuse consumers and/or diminish the distinctiveness of adidas’ three-stripe marks and the ability of those marks to identify a single source. Putting adidas’s long-running pattern in perspective, the late Judge Garr King summarized in 2008 in an opinion in the case that adidas filed against the now-defunct Payless Shoes: between 1995 and 2008, alone, adidas had “pursue[d] over 325 infringement matters involving the three-stripe mark in the United States, filed more than 35 separate lawsuits for infringement of the three-stripe mark, and entered into more than 45 settlement agreements with companies selling infringing footwear.” 

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