January 25, 2021

This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.

On December 14, 2020, adidas AG, adidas America Inc. and adidas International Marketing BV (collectively, Adidas) filed an opposition with the United States Patent and Trademarks Trial and Appeal Board against Thom Browne Inc.’s (Thom Browne) US trademark applications for a red, white, and blue parallel stripe for use on footwear. Adidas has opposed the applications, which have been filed on an intent-to-use basis, on the grounds of likelihood of confusion and dilution by blurring.

In the opposition, Adidas asserts that the brand first placed three parallel stripes (the Three-Stripe Mark) on its athletic shoes over sixty-five years ago and that these stripes “came to signify the quality and reputation of adidas footwear to the sporting world early in the company’s history.” Over the years, Adidas used the Three-Stripe Mark extensively in connection with a wide variety of footwear, apparel, and related goods, and has cited a number of federal trademark registrations dating back to 1969 for use of the Three-Stripe Mark on its products. Adidas further asserts that the brand began using the Three-Stripe Mark on footwear since at least as early as 1952 both in the United States and worldwide.

Adidas argues that the registration of Thom Browne's trademark applications is likely to cause "confusion, deception, or mistake as to the affiliation, connection, or association of Applicant with Adidas", and is likely to "dilute the distinctiveness of the Three-Stripe Mark by eroding consumers’ exclusive identification of the Three-Stripe Mark with adidas.”

Another Opposer, Tommy Hilfiger

Unsurprisingly, Adidas is not the only brand opposing Thom Browne’s US trademark applications. Tommy Hilfiger Licensing LLC also opposed Thom Browne’s US trademark applications for a red, white, and blue parallel stripe. Similar to Adidas’ grounds for opposition, Tommy Hilfiger has argued likelihood of confusion and dilution by blurring, and further opposes the trademark applications on the basis that they are merely descriptive as per section 2(e)(1) of the Trademark Act. In addition to the three Thom Browne’s trademark applications cited by Adidas for use on footwear, Tommy Hilfiger opposed an additional trademark application for a red, white, and blue parallel stripe for use on fragrances and perfumes.

While Adidas’ opposition highlights its consistent use of parallel stripes as a trademark, the opposition brought by Tommy Hilfiger focuses on the red, white, and blue colour elements of the trademark applications. Counsel for Tommy Hilfiger states that the brand has used red, white, and blue stripes as a trade dress and device to identify the origin of various products including footwear and fragrances for more than thirty-five years.

With respect to the ground that Thom Browne’s trademark applications are merely descriptive, the opposition filed by Tommy Hilfiger’s asserts that Thom Browne’s trademark applications are unsupported by any evidence that the marks have “secondary, origin-indicating meaning, as distinguished from their functioning to adorn or ornament goods on which they are placed.”

What’s Next?

Both Adidas and Tommy Hilfiger have filed a section 15 declaration of incontestability for a number of their trademark registrations which were cited in the oppositions. In a declaration of incontestability, the owner claims incontestable rights in a trademark and continuous use of the trademark for five years. Following this declaration, the trademark becomes incontestable, meaning that various aspects of the registration such as the trademark’s validity cannot be challenged by third parties. Given the section 15 declarations of incontestability and the large family of trademarks that each opposer has cited, Thom Browne may find it difficult address and argue against the grounds of the oppositions.

Thom Browne has until January 23, 2021 to file an Answer to the opposition brought by Adidas, and January 24, 2021 to file an Answer to Tommy Hilfiger.

_________