Kiana Robinson is a J.D. Candidate, 2021 at NYU School of Law.
The sportswear and athletic footwear company Adidas has been having quite a busy year defending the three-stripe mark in American and European courts. In August 2019, the company filed a Notice of Opposition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeals Board (TTAB) against J. Crew, stating that the use of J. Crew’s applied-for mark is “likely to cause confusion, deception, or mistake as to the affiliation, connection, or association of [J. Crew] with Adidas, or the origin, sponsorship, or approval of [J. Crew]’s goods by Adidas,” and “dilute the distinctiveness of three-stripe mark.” However, several days later, Adidas sent an additional filing to the TTAB to suspend further proceedings while the two companies attempt to agree on a settlement. If Adidas and J. Crew don’t reach an agreement, a brief analysis of how other courts have accepted or rejected trademark protections for Adidas may provide some insight into how much protection the company has of the three-stripe mark.
In June of 2019 Adidas suffered a loss when the General Court of the European Union affirmed the decision by the European Union Intellectual Property Office (EUIPO) to annul the company’s three-stripe trademark protections. The decision was made in response to an application for declaration of invalidity by the footwear company, Shoe Branding Europe. In a statement, the Court found the three-stripe mark, originally registered by the EUIPO in 2014, was properly ruled invalid because it was found to lack proof of inherent or acquired distinctiveness. The ruling came as a surprise since Adidas had just received a favorable decision against a European footwear company attempting to register a parallel two stripe mark. In 2018, the Luxembourg-based General Court affirmed the EUIPO decision issued in 2015 and 2016 to permit Adidas’ opposition to a two parallel stripe trademark registration filed by Shoe Branding Europe because the designs risked “taking unfair advantage of Adidas’ earlier mark.” The decision suggested that trademark protection for Adidas’ three-stripe mark, consisting of “three parallel equidistant stripes of identical width, applied on the product in any direction,” would be valid throughout European Union territory. However, Shoe Branding Europe, while prevented from registering the two-stripe parallel mark with the EUIPO, was not finished with Adidas and quickly requested that the company’s three-stripe trademark protections be annulled.
The implications of the decision have been contested by various entities in trademark law with some suggesting this is a significant blow to trademark protections for Adidas and others suggesting it is a narrow ruling that can be appealed. Expert Tim Meyer-Dulheuer, managing partner of Dr. Meyer-Dulheuer & Partners LLP, a German law firm specializing in trademark law, told Fortune that “the loss of reputation, is enormous for Adidas,” and they will likely “have the same problem elsewhere, in the United States and in Asia.” Adidas issued a statement that the ruling is disappointing, but limited to this “particular execution of the three-stripe mark” and does not impact the broad scope of protection that Adidas has on its well-known three-stripe mark in various forms in Europe. While the decision can be appealed to the European Court of Justice, it does not prohibit Adidas from continuing to use the three-stripe mark, but it does make it more difficult for the company to contest the use of similar stripe marks by other companies.
With this EU decision in mind, there is a possibility that the European court’s logic will be carried over to the J. Crew opposition should the parties fail to reach a settlement agreement. The General Court of the European Union considered several forms of evidence including, but not limited to, the number of stripes in the contested mark, the use of color, and market surveys. Images with a description submitted for trademark registration may serve as evidence for how the mark will look and be used. The TTAB may then review Adidas’ current registrations cited in the Notice of Opposition illustrating three black parallel lines going across footwear and apparel in various directions. The TTAB may then consider the J. Crew mark consisting of five parallel stripes of different widths and colors. To assess whether there is a likelihood of confusion amongst consumers, the TTAB, like the General Court, can use market surveys submitted as evidence, but the amount of weight given to a market survey can vary and is never a guarantee to a favorable decision. Indeed, at least one of the market surveys submitted by Adidas was deemed irrelevant because the three-stripe mark at issue was not referenced. It’s hard to say whether consumers or the TTAB will find the two marks at issue similar enough to validate the Notice of Opposition as there are many competing factors to be considered. The decision by the General Court of the EU suggests that while Adidas can continue to use the three-stripe mark on its footwear and sportswear, the company may have more challenges in precluding other companies, including J. Crew, from using similar stripe marks. On its face however, a comparison between the Adidas mark and J. Crew mark suggests that the marks may not be similar enough to cause confusion, but a picture of course, is worth a thousand (or more) words.