Thom Browne wants the trademark infringement, unfair competition, and dilution case that adidas filed against it over their respective uses of stripes tossed out of court. In a newly-filed motion to dismiss, the New York-based fashion brand argues that despite using its own source-identifying “four band” and “five stripe” designs since as early as January 2009 without objection from adidas, “it recently became an unexpected target of adidas’ latest trademark enforcement campaign – with adidas apparently taking the sweeping position … that no item of clothing can have any number of stripes in any location or orientation without infringing or diluting [its] Three-Stripe Mark.”
In its October 6 motion to dismiss and corresponding memo in support, counsel for Thom Browne argues 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 does not define “what exactly [its three stripe] mark is.” Browne asserts that in the June 2021 complaint, adidas makes trademark claims against Browne and its allegedly infringing wares on the basis of 24 federal trademark registrations, but does not identify “any specific product or design that [it] contends infringes any specific trademark registration.”
Aside from providing a list of “representative examples” of Thom Browne products that allegedly infringe its trademarks, Browne claims that adidas simply defines the allegedly infringing offerings as “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.” The problem here, according to Browne, is 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.”
This vagueness is heightened by the nature of adidas’ Three-Stripe trademark, itself, per Browne, which argues that “significant variations” exist between the marks depicted in the 24 trademark registrations that adidas cited in its complaint. Specifically, Browne’s counsel claims that the 24 marks “cover curved, slanted, and straight-line designs, and include designs that vary drastically in lengths, color patterns, line spacing, placement and product type,” making it “impossible that all the cited registrations constitute a single ‘Three-Stripe Mark.’”
Against that background and given that the Thom Browne brand has “designed and sold for years a wide variety of apparel and footwear bearing its own marks,” Browne claims that it is “simply at a loss to know what it is that adidas contends infringes each of its trademarks.” Browne’s counsel at Wolf, Greenfield & Sacks, P.C. and Harley Lewin, who is occupying an Of Counsel role, further argues that it is “impossible … to discern whether adidas’ claims are directed only to items that allegedly include stripes positioned in the same manner, or to all products that display any number of stripes, regardless of specific locations, specific uses or specific lengths.”
In short, Browne contends that adidas’ complaint “begs the question of exactly what it is that adidas is alleging infringes what trademark registration,” thereby, leaving Browne “in the dark as to which of the 24 registrations are asserted against which of its products, or which products allegedly likely cause dilution,” infringement, and/or unfair competition. Practically speaking, Browne’s counsel claims that it “cannot answer the complaint,” unless adidas – “at a minimum” – provides a “specific identification of the products that [it] contends infringe each of its trademarks.”
The seemingly bigger issue here, though, according Browne, is that adidas “cannot and does not own exclusive rights to such a generically broad design motif as ‘two, three, or four parallel stripes’ on apparel and footwear, [and] because adidas has not limited its claims to specific products or otherwise clearly defined the product types at issue which relate to adidas’ registrations, [it] has failed to sufficiently allege trademark infringement, unfair competition or dilution by Thom Browne.”
At the same time, Thom Browne argues that the fact that it has become a target of adidas is “particularly outrageous because over a decade ago, adidas approved Thom Browne’s adoption and use of four stripes on its clothing instead of three stripes.” And beyond that, “adidas never complained about Thom Browne’s use of the Five Stripe Ribbon or the then adopted Four Band Design despite knowing about it for over a decade.” (Adidas will presumably push back against this point by arguing that it did not consent to Browne’s use of the mark on athleticwear, and that it approved of the brand’s use of stripes in the context of suiting and other formal ready-to-wear, for which the Thom Browne brand is best known. Browne recently entered into the sportswear, complete with big-name partnerships with the likes of European football club FB Barcelona beginning in 2018.)
With the foregoing in mind, Browne claims that adidas has “failed to properly and adequately plead ownership of valid trademark rights that could be the basis of its claims and has failed to identify the specific Thom Browne products that could possibly violate adidas’s purported rights.” As such, “all claims in adidas’s complaint should be dismissed,” per Browne. Or alternatively, the German sportswear giant should be required to submit “a more definite statement of its claims.”
As for the trademark opposition proceedings that predated – and ultimately, prompted – the filing of this suit, in which adidas has sought to block the registration of a number of Thom Browne trademarks in the U.S. and the European Union, the stateside battle has been put on hold for the time being in light of the filing of this litigation.
In its complaint, adidas claims that in furtherance of Thom Browne’s “more 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, Thom Browne went so far as to file trademark applications in the EU and with the U.S. Patent and Trademark Office (“USPTO”) 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 USPTO’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.
From the outset of the case at hand, Thom Browne has slammed adidas’ efforts to shut down its use of stripes, saying in a statement in June that the case “is an attempt to use the law illegally,” and noting 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.”
The case is adidas America, Inc., et. al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).