Thom Browne seeks cancellation of adidas 3-Stripe trademark
A stripes-centric legal battle between adidas and Thom Browne is brewing. On the heels of a New York federal court refusing to dismiss the trademark case that adidas filed against it last year, Thom Browne has filed its response, with 18 affirmative defenses – and a counterclaim seeking one of adidas’ 3 stripes. canceled trademark registrations. In addition to denying the bulk of the allegations that adidas made against her in her lawsuit, Thom Browne lays out a range of affirmative defences, arguing that, among other things, she should be shielded from liability because adidas does not took no action against her. – timely – on his use of a 4-stripe pattern, which has appeared on Thom Browne merchandise since 2009.
As part of his Laches, Acquiescence and Estoppel defense, Thom Browne claims that adidas has known about his use of the 4-stripe trademark since 2007 when “adidas complained about Browne’s use of three parallel horizontal stripes on his clothes”, which prompted him to adopt a logo consisting of “four parallel horizontal stripes”. From 2009 to 2018, when adidas first launched opposition proceedings regarding one of Browne’s 4-stripe marks in the European Union, Thom Browne claims that “adidas did not complain of [its] use of four parallel horizontal stripes on clothing.
The New York-based fashion brand also claims that “throughout this period…there has been no instance of any real confusion between [its] the use of four parallel horizontal stripes and adidas’ use of three stripes.
Under other affirmative defences, the brand claims that it and adidas operate in “entirely separate markets, at very different prices, and are not competitors”, thereby lessening the likelihood of confusion. Beyond that, Browne argues that, despite adidas’ claims to the contrary, he has “not encroached on adidas’ market” and that “any changes to [its] range of products over the years” – that is, its expansion from high fashion to sportswear/sportswear – “was natural and anticipated”.
Additionally (and setting the stage for his rescission-focused affirmative defense), Browne argues that adidas doesn’t have strong rights to the 3-Stripes pattern, because the German giant’s use of the stripes on apparel and the shoes “wasn’t exclusive”. In fact, Browne claims that “many third parties use stripes, in multiple variations and iterations, on apparel and footwear”, and claims that adidas “has failed to control the market and as a result has permitted third parties to use stripes”. on apparel and footwear,” thus removing adidas’ ability to claim its trademark in this case. (The non-enforcement claim is interesting given that later in his filing, Browne specifically points to adidas’ “notoriety as an overzealous enforcer of its real and perceived rights in its ‘three-stripe mark.'” )
With the foregoing defenses (and others) in mind, counsel for Thom Browne seeks “a judgment dismissing the complaint, for costs and disbursements, an award of attorneys’ fees, and any other additional relief that the Court seems appropriate”.
Thom Browne Counterclaim for Annulment
Turning to his counterclaim, Thom Browne asserts that adidas’ “Three-Quadrilaterals Design” trademark (registration number 4,910,643) is “merely ornamental and/or aesthetically functional” and “has not acquired secondary meaning”. Lobbying for the court to overturn the registration, which extends to “leather and imitation leather goods”, apparel and “sports sporting goods”, Thom Browne argues that during the registration process, adidas n did not “specifically establish that the design is perceived as an ‘indicate of source'” and, therefore, the United States Patent and Trademark Office (“USPTO”) should never have registered the mark in 2016.
In response to a March 2015 Office action from the USPTO, which initially refused to register the mark on the grounds that it was “merely a decorative or ornamental element of the goods”, Thom Browne claims that “almost all” of the product photographs that adidas provided to the USPTO show the three-quadrilateral design used alongside the “adidas” work mark and/or its “Badge of Sport” mark, “if they show the conceptions with three quadrilaterals”. In Brief: Thom Browne asserts that adidas has not established that the three-quadrilateral design, by itself, serves as a source indicator for consumers.
“The three-quadrilateral design is merely ornamental and/or aesthetically functional as applied to the goods” cited in the registration, Browne alleges, and instead of showing secondary meaning, “the mark is not capable of be perceived by the public consumer as an identification of the source of the goods.
Thom Browne states that he “believes that it is liable to be damaged by the maintenance of adidas AG registration no. 4,910,643 because adidas is asserting such registration against Thom Browne in this case for the disrupt the activities of Thom Browne”. Accordingly, Browne wishes “the complaint and each purported claim for relief to be dismissed with prejudice”, and judgment has been entered in favor of Thom Browne on his counterclaim, including a court order voiding the trademark registration. adidas in question. .
In the complaint it filed in June 2021, in which it sets out allegations of trademark infringement, unfair competition and dilution, adidas argues that as a result of “the recent encroachment by Thom Browne[ment] in direct competition with adidas by offering athletic-style sportswear and footwear that bears confusingly similar knockoffs” of adidas’ three-stripe brand, which adidas claims to have “widely and continuously used and promoted…in relation with clothes and shoes… for more than half a century.”
The case is adidas America, Inc., et al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).