Thom Browne Looks to Get adidas 3-Stripe Trademark Cancelled

A stripes-centric legal battle involving adidas and Thom Browne is heating up. On the heels of a New York federal court docket refusing to toss out the trademark situation that adidas submitted towards it previous calendar year, Thom Browne has filed its respond to, entire with 18 affirmative defenses – and a counterclaim aimed at finding a person of adidas’ 3-stripe trademark registrations canceled. In addition to denying the bulk of the allegations that adidas has created against it in its grievance, Thom Browne sets out an array of affirmative defenses, arguing that, among other matters, it must be shielded from legal responsibility since adidas failed to take motion versus it – in a timely fashion – more than its use of a 4-stripe pattern, which has appeared on Thom Browne wares because 2009. 

In furtherance of its Laches, Acquiescence, and Estoppel defense, Thom Browne claims that adidas has been informed of its use of the 4-stripe mark given that 2007 when “adidas complained about Browne’s use of a few horizontal parallel bands on its garments,” prompting it to undertake a brand that is composed of “four horizontal parallel bands.” From 2009 by means of 2018, which is when adidas to start with initiated an opposition proceeding over a person 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 garments.”

The New York-based fashion manufacturer also promises that “throughout this period of time … there have been no circumstances of precise confusion between [its] use of 4 horizontal parallel bands, and adidas’ use of a few stripes.” 

In connection with other affirmative defenses, the model asserts that it and adidas run in “entirely independent marketplaces, at vastly distinct selling price factors, and are not competitors,” thus, diminishing the probability of confusion. Further than that, Browne argues that it even with adidas’ allegations to the opposite, it has “not encroached into adidas’ sector,” and that “any modifications to [its] merchandise line over the years” – i.e., its growth from superior fashion into sportswear/activewear – “has been natural and predicted.” 

Additionally (and placing the phase for its cancellation-concentrated affirmative protection), Browne argues that adidas lacks strong legal rights in the 3-stripe motif, as the German giant’s use of stripes on outfits and footwear “has not been exclusive.” In point, Browne asserts that “numerous 3rd get-togethers use stripes, in numerous variations and iterations, on garments and footwear,” and claims that adidas has “failed to police the sector, and, as a result, has authorized third get-togethers to use stripes on clothing and footwear,” therefore, getting rid of adidas’ ability to make its trademark claims in this situation. (The failure-to-enforce claim is an exciting just one given that later on in its submitting, Browne precisely factors to adidas’ “notoriety as an overzealous enforcer of its real and perceived legal rights in its ‘Three- Stripe Mark.’”)

With the foregoing defenses (and many others) in brain, counsel for Thom Browne is trying to find “a judgment dismissing the complaint, for prices and disbursements, an award of attorneys’ service fees, and this sort of other and even more reduction as to the Court docket seems suitable.” 

Thom Browne’s Cancellation Counterclaim

Turning its interest to its counterclaim, Thom Browne asserts that adidas’ “Three-Quadrilaterals Design” mark (Registration No. 4,910,643) is “merely decorative and/or aesthetically functional” and “has not obtained secondary that means.” Pushing for the court to terminate the registration, which extends to “articles designed of leather-based and imitation leather-based,” clothes, and “athletic sporting products,” Thom Browne argues that through the registration method, adidas did not “specifically create that the structure is perceived as an ‘indicia of supply,’” and consequently, the U.S. Patent and Trademark Workplace (“USPTO”) really should never ever have registered the mark again in 2016. 

In responding to a March 2015 Office environment Action from the USPTO, which preliminarily refused to sign up the mark on the basis that it was “merely a ornamental or decorative attribute of the products,” Thom Browne promises that “nearly all” of the products photos that adidas presented to the USPTO display the 3-Quadrilaterals Style applied together with the “adidas” do the job mark and/or its “Badge of Sport” mark, “if they show the 3-Quadrilateral Styles at all.” In quick: Thom Browne statements that adidas did not establish that the Three-Quadrilaterals Style, by by itself, serves as an indicator of resource for consumers. 

“The 3-Quadrilaterals Design and style is just decorative and/or aesthetically purposeful as utilized to the goods” cited in the registration, Browne alleges, and in lieu of a displaying of secondary indicating, “the mark is not likely to be perceived by the consuming general public as an identification of the resource of the merchandise.” 

Thom Browne states that it “believes it is very likely to be harmed by routine maintenance of adidas AG’s Registration No. 4,910,643 mainly because adidas is asserting that registration versus Thom Browne in this scenario in an work to disrupt Thom Browne’s organization.” As a end result, Browne is looking to have “the criticism and each and every purported claim for reduction be dismissed with prejudice,” and judgment entered in Thom Browne’s favor on its counterclaim, which includes an purchase from the courtroom cancelling the adidas trademark registration at challenge. 

In the complaint that it submitted in June 2021, in which it sets out promises of trademark infringement, unfair competitors, and dilution, adidas argues that in furtherance of Thom Browne’s “recent encroach[ment] into immediate levels of competition with adidas by featuring sportswear and athletic-styled footwear that bear confusingly comparable imitations” of adidas’s 3-stripe mark, which adidas asserts that it has “extensively and continually has used and promoted … in link with attire and footwear … for above 50 {a0ae49ae04129c4068d784f4a35ae39a7b56de88307d03cceed9a41caec42547} a century.” 

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