Thom Browne wants the trademark infringement, unfair competition and dilution case that adidas has brought against him regarding their respective uses of the stripes to be dismissed out of court. In a new motion to dismiss, the New York-based fashion brand argues that despite the use of its own patterns identifying the source “four stripes” and “five stripes” since January 2009 without objection from adidas, “It recently became an unexpected target of adidas’ latest brand app campaign – with adidas seemingly taking the radical stance … that no clothing can have all number of scratches in all location or orientation without encroaching or diluting [its] Three stripe mark.
In his October 6 motion to dismiss and the corresponding supporting note, counsel for Thom Browne argues that despite allegations of federal and common law trademark infringement, unfair competition and substantiated dilution on his “alleged rights in [its] so-called ‘Three Stripe Brand’, ”adidas fails to make its case sufficiently on a number of fronts. Primarily, Thom Browne argues that adidas does not define “what exactly [its three stripe] trademark is. ”Browne claims that in the June 2021 complaint, adidas makes trademark claims against Browne and its allegedly infringing goods based on 24 federal trademark registrations, but does not identify“ any specific product or design that [it] maintains that it infringes any specific trademark registration.
In addition to providing a list of “representative examples” of Thom Browne products allegedly infringing its trademarks, Browne asserts that adidas simply defines the allegedly infringing offers as “athletic style clothing and footwear featuring two, three or four parallel stripes in a way that is confusingly similar to adidas ‘three-stripe mark. The problem here, according to Browne, is that Adidas’ claims are “too vague to provide adequate advice as to the ‘identity of the allegedly counterfeit products or the factual basis of its allegations of trademark infringement, unfair competition and dilution’.
This imprecision is accentuated by the nature of adidas’ three-stripe mark, itself, according to Browne, who argues that there are “significant variations” between the marks represented in the 24 trademark registrations that adidas cited. in his complaint. Specifically, counsel for Browne asserts that the 24 marks “cover curved, slanted, and rectilinear designs, and include designs that vary widely in length, color, line spacing, location, and product type,” which makes “impossible that all the recordings constitute a single” three-band mark “.
Against this background and given that the Thom Browne brand has “for years designed and sold a wide variety of clothing and footwear bearing its own brands,” Browne claims that he is “simply unable to know what adidas is claiming. infringes every one of its marks. Browne’s attorney at Wolf, Greenfield & Sacks, PC and Harley Lewin, who holds a legal position, further states that it is “impossible … to discern whether Adidas’ claims relate to only items that include stripes positioned in the same way., or all products that display any number of stripes, regardless of specific locations, specific uses or specific lengths.
In short, Browne argues that adidas’ complaint “raises the question of exactly what adidas is alleging infringes which trademark registration”, thus leaving Browne “in the dark as to which of the 24 registrations is being claimed against which of his products. , or which products are likely to cause dilution, counterfeiting and / or unfair competition. Concretely, Browne’s lawyer asserts that he “cannot respond to the complaint”, unless adidas – “at a minimum” – provides “specific identification of the products that [it] claims to infringe each of its brands.
The seemingly bigger problem here, however, according to Browne, is that adidas “cannot and does not have exclusive rights to a generically wide design pattern like” two, three or four parallel stripes “on clothing and footwear. , [and] because adidas has not limited its claims to specific products or clearly defined the types of products at issue that relate to the registrations of adidas, [it] did not sufficiently allege trademark infringement, unfair competition or dilution by Thom Browne.
At the same time, Thom Browne argues that the fact that she has become a target of adidas is “particularly scandalous because over a decade ago, adidas approved Thom Browne’s adoption and use of four stripes on his clothing instead of three. “And beyond that,” adidas never complained about Thom Browne’s use of the tape. five-stripe or four-stripe design then adopted, although it has known for more than a decade. by Browne on athletic wear, and endorsed the brand’s use of stripes in the context of tailoring and other formal ready-to-wear, of which the Thom Browne brand is best known. Browne is recently entered the field of sportswear, with renowned partnerships with European football club FB Barcelona from 2018.)
In view of the foregoing, Browne asserts that adidas “has failed to properly and adequately argue the ownership of valid trademark rights that may be the basis of its claims and has failed to identify specific Thom Browne products that may possibly violate the alleged rights of adidas ”. As such, “all of the claims in the adidas complaint should be dismissed,” according to Browne. Or, the German sportswear giant should be required to submit “a more precise statement of its claims”.
With regard to the trademark opposition proceedings which preceded – and ultimately prompted – the filing of this complaint, in which adidas sought to block the registration of a number of Thom Browne’s trademarks in the United States – United States and in the European Union, the battle in the United States has been launched. pending for the moment given the filing of this dispute.
In its complaint, adidas claims that due to “Thom Browne’s more recent encroachment[ment] In direct competition with adidas by offering athletic-style sportswear and shoes that wear similarly confusingly ‘knock-offs of adidas’ three-stripe brand, Thom Browne has gone so far as to file trademark applications in the EU and with the United States Patent and Trademark Office (“USPTO”) to register various striped designs. In fact, adidas alleges that “this dispute began in 2018, when [it] opposed a trademark application filed by Thom Browne in the EU ”for a deleted trademark.
Shortly after filing an opposition with the EU, adidas says its attorney “began to investigate Thom Browne’s product lines in the United States” and discovered allegedly infringing trademark uses “in pairs and four bands ”. During the summer and fall of 2018, “adidas’ in-house attorney attempted to negotiate a resolution with attorney for Thom Browne” regarding his use of the striped marks, but these efforts “were unsuccessful. “.
Fast forward to December 2020 and adidas has filed an objection with the USPTO’s Trademark Trial and Appeal Board, urging the trademark agency to end three pending U.S. trademark applications. red, white and blue striped marks for use on footwear, filed by Thom Browne earlier that year on the grounds that the marks are so similar as to lead to confusion with its own pre-existing marks.
Early in the case, Thom Browne criticized adidas efforts to end its use of stripes, saying in a June statement that the case “is an attempt to use the law illegally”, and noting that “adidas gave consent to Thom Browne over 10 years ago and actually suggested that Thom add an extra stripe to reach four on the sleeves or pants and that would be OK by Adidas. – there, 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).