Should Adidas Three-Stripes trademark registration be Canceled?

Back in 2021, adidas filed a suit against New York fashion brand, Thom Browne [1], claiming that Thom Browne’s “Four-Stripes Design” constitutes trademark infringement and dilution of adidas’ three-stripe mark. The German sportswear giant seeks injunctive relief and damages. 

In its complaint, adidas claims that Thom Browne’s expansion beyond its typical formalwear into sportswear and athleisure causes a likelihood of confusion between the brands’ striped marks. 

adidas alleges that its competitor is “selling 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.”.

Thom Brown demands cancellation of adidas Trademark registration

Last week, Thom Brown submitted its answer to the New York Court. 

According to Brown, adidas has been aware of the existence of this trademark and use of the four-stripe mark since 2007 when adidas complained about Browne’s use of three horizontal parallel bands on its clothing. In response Thom Browne changed from three horizontal parallel bands to four horizontal parallel bands. 

Brown claims that from 2009 through 2018, adidas did not complain about Thom Browne’s use of four horizontal parallel bands on clothing. In 2018, adidas first initiated an opposition proceeding over one of Browne’s four stripe marks in the European Union. 

However, Brown does not only want to prove that it did not plagiarize adidas, but it wants to demand that adidas' Three-Stripes Logo registration be canceled.

Thom Brown claims that that adidas' rights to the three-stripes motif do not exist, as their use “has not been exclusive”. According to Brown, “adidas has failed to police the market, and, as a result, has allowed third parties to use stripes on clothing and footwear.”.

The Defendant countersuits by claiming that in 2014, adidas applied to register the “Three Quadrilaterals Design”. The registration was initially refused by the U.S. Patent and Trademark Office (“USPTO”) because the mark was “merely a decorative or ornamental feature of the goods,” and, therefore, did not function as an indicator of source. According to Brown, adidas did not specifically establish that the Three-Quadrilaterals Design is perceived as an “indicia of source.”. 

Brown argues that it was only when adidas showed photos of the three stripes in connection with the word "ADIDAS" that the USPTO agreed to register the trademark.

In other words, Thom Browne claims that adidas did not establish that the Three-Quadrilaterals Design, by itself, serves as an indicator of source for consumers. 

Brown continues by saying that “as a mark that is merely ornamental and/or aesthetically functional, the Three Quadrilaterals Design has not acquired secondary meaning as of the date of submission of this Counterclaim and is not entitled to a federal trademark registration. Registration No. 4,910,643 should not have been issued. ?.

The defendant claims that it is likely to be damaged by maintenance of Adidas Three Quadrilateral Design registration and therefore, maintenance of Registration No. 4,910,643 is contrary to law, and it should be canceled. 

Litigious Stripes

In 2019, the European General Court’s ruling annulled adidas three-stripe trademark registration and stated that those three stripes "constitute an ordinary figurative mark and have no distinctive character". 

It is not the first time that adidas is having legal issues with competitors who use those three stripes. The Fashion law has identified twenty legal disputes in the last 20 years between adidas and competitors.

12.05.2022, Reema Hug

  [1] adidas America, Inc., et al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).