3-Stripes Brand Protection The three-stripe brand is out for proactive, some would say aggressive,

brand protection.

We are all familiar with the adidas three-stripes trademarks, which

consist of three parallel lines that usually appear on the side of adidas

apparel and footwear.

The symbol protects both consumers and the producer and

distinguishes adidas in a very competitive market. But to what extent

should trademarks protect stripes? And should they be exclusive, or

can other brands use them too?

Footwear brand protection

Sneakers are a huge business with trademarks, logos, and designs that

consumers recognize and associate with a specific brand.

The market is about quality and performance, but no less about

designs and logos.

Trademarks, logos, and designs help consumers identify the source of

the footwear, such as seeing three stripes on the side of a shoe and

immediately recognizing the brand.

A short brand history

Founded by Adolf “Adi” Dassler in Germany, the company started

producing running shoes back in 1924.

Adolf and his brother Rudolf became well known after Olympic athlete

Jesse Owens wore their rubber spikes shoes for the Olympic games and

won four gold medals. In 1947, the Dassler brothers split.

Adolf registered a new shoe company: Adidas. Rudolf went on to found

Puma, but this is another story.

It was somewhere around 1952 that adidas bought its three-stripe logo

from a Finnish footwear brand. Soon Adolf referred to adidas as “the

three-stripe company”.

Adidas trademarks and brand protection

Over the years, adidas has built a strong brand and protected it with

multiple trademarks, including three-stripes trademarks. It also has

endorsement and sponsorship agreements with various entities, such

as soccer superstar Lionel Messi, that strengthen the brand and grow

its sales.

The brand is known to use legal means to protect its many striped

trademarks.

Trademarks are specific in what they defend. Some instances of

trademark infringements are straightforward, like counterfeits. In other

cases, it depends on how the intellectual property right is applied.

Some brands believe that adidas is within its right to protect its

valuable trademarks, while others accuse it of applying the trademark

too broadly and going after those who use stripes on their products.

The Germany-based brand sends cease-and-desist letters or files

lawsuits. Often companies do not wish to enter into expensive

trademark litigation battles and withdraw or negotiate with adidas.

In recent years adidas has filed many trademark infringement lawsuits

and opposition proceedings, including against Thom Browne, Aviator

Nation, J. Crew, Show Branding Europe, football club FC Barcelona,

Marc Jacobs, Tesla and others.

Let’s review some of the recent adidas cases, with a focus on its latest

one.

2021 adidas v. Thom Browne

In a new complaint filed in a New York federal court, adidas is suing

Thom Browne for trademark infringement and dilution as reported

by TFL.

There, adidas claims it has “manufactured, advertised, marketed,

promoted, distributed, and sold footwear and apparel bearing its

famous and distinctive Three-Stripe trademark” for decades.

It asserts that it has been using the trademark continuously and

promoting it “in connection with apparel and footwear”. According to

adidas, it has invested “millions of dollars” to promote its marks.

The trademarks have come to identify adidas’s products and help the

public recognize and distinguish them.

The company’s Three-Stripe Marks are federal trademarks for “athletic

footwear”, “footwear”, and a variety of products including clothing,

sporting goods, and bags.

As for the decades-long use, adidas claims it has used its mark on

footwear since 1952 and on apparel since 1967. Thom Browne

launched his high-end fashion brand in 2001.

Adidas alleges that “despite Thom Browne’s knowledge of adidas’s

rights in the famous Three-Stripe Mark” for apparel and footwear,

Browne “has expanded its product offerings far beyond [its] formal

wear and business attire and is now offering for sale and 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.”

According to the complaint, the stripes of the Thom Browne sportswear

are “likely to cause consumer confusion and deceive the public

regarding its source, sponsorship, association, or affiliation.”

A likelihood of confusion between trademarks exists when they are

similar to an extent that consumers would believe they come from the

same source.

Adidas also claimed that the Browne brand did more than that.

“Exacerbating Thom Browne’s encroachment into adidas’s core market

category,” adidas claims that it “entered into a partnership with the

famous European football (soccer) club FC Barcelona, beginning with

the 2018-2019 season and continuing today”.

It added that Thom Browne has “promoted its goods using images

associated with soccer and even several soccer players that are

sponsored by adidas, including most notably Lionel Messi.”

According to adidas, Thom Browne’s actions amount to “trademark

infringement, dilution, unfair competition, and unfair business

practices” arising under the Lanham Act.

A spokesman for Thom Browne responded by releasing a statement

to WWD magazine saying that adidas “consented for 12 years and now

they are changing their mind” regarding the four-striped design. He

added, “we are right and we are confident in the outcome of the case”

at court.

2020 opposition by adidas

Before this, in December 2020, adidas filed an opposition with the U.S.

Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal

Board regarding trademark application by Thom Browne for red, white,

and blue stripes trademarks for use on footwear.

It claims that the trademarks are confusingly similar to the existing

adidas marks. Opposition is still pending (as of July 2021).

2019 adidas v. Aviator Nation

According to a lawsuit filed by adidas, Aviator Nation infringed on its

trademark by using “confusingly similar imitations” of the design on

apparel such as jackets.

Adidas said that after Aviator Nation started selling apparel with a three

parallel stripes design, they have entered an agreement in 2012 for

Aviator Nation to not use the “three-stripe trademark or any design,

mark, or feature that is confusingly similar to the three-stripe mark.”

The agreement did not last long, and adidas accused Aviator Nation of

trademark infringement and breach of settlement agreement. Again,

the two brands settled the matter quietly and in 2013, signed another

agreement.

In 2018, adidas claimed that Aviator Nation was again selling apparel

that is confusingly similar to adidas’s three-stripe mark. The parties

held discussions but were not able to resolve the issue.

Adidas went to court claiming Aviator Nation had continued to

manufacture and sell the allegedly infringing apparel. In the lawsuit,

adidas claims that the allegedly infringing apparel was likely to “deceive

the public regarding its source, sponsorship or affiliation.”

It alleges that in addition to breach of contract, this amounts to

trademark infringement, counterfeiting and dilution, and it poses unfair

competition and injury to business reputation.

2019 adidas v. J. Crew

Adidas objected J. Crew’s trademark application for a striped design for

use on apparel. In its opposition, adidas argues that “the three-stripe

mark [has] come to signify the quality and reputation of adidas.” It,

therefore, objected to this stripe design by J. Crew:

Adidas wrote that the design “is confusingly similar to adidas’s three-

stripe mark in appearance and overall commercial impression …”.

Furthermore, adidas believes the suggested striped mark by J. Crew can

create trademark dilution because, if approved, the adidas trademark

will not identify and distinguish only adidas. Therefore, adidas has

asked the USPTO’s Trademark Trial and Appeals Board to refuse J.

Crew’s application.

The outcome? after settlement negotiations between the parties, J.

Crew recently withdrew its application. See Adidas comes for J. Crew’s

stripe trademark (yahoo.com)

2019 Skechers v. adidas

The intellectual property rivalry between adidas and Skechers

is nothing new.

This time, Skechers went to court, asking it to declare that despite

adidas’s claims of alleged infringement, Skechers 4-stripe Goldie-Peaks

shoe does not infringe on the three-stripe mark.

According to Skechers, adidas sent “infringement notice” letters

claiming a similarity in the “overall commercial impression” of the

Skechers design, which is likely to result in consumer confusion.

Skechers believes that the three-stripe mark should have a narrow

scope in an industry full of stripe designs. Therefore, it is not at fault.

The case was settled out of court.

2019 EU refuses adidas

Gaining protection for stripes or bars is not always easy. In 2019,

adidas lost a three-stripe trademark battle in the EU.

In 2009, the Shoe Branding Europe BVBA (Shoe Branding) from Belgium

filed for their own trademark.

In 2010, adidas sued. In 2013, EUIPO (known at the time as the Office

for Harmonization in the Internal Market) rejected adidas’s notice of

opposition.

Adidas then filed an application for wider trademark protection of a

mark as consisting of “three parallel equidistant stripes of identical

width, applied on the product in any direction.”

In 2014, the European Union Intellectual Property Office (EUIPO),

approved and registered an EU trade mark for products of clothing,

footwear and headgear.

But in 2016, Shoe Branding filed for the trademark to be annulled on

the grounds that it is “devoid of any distinctive character, both inherent

and acquired through use.” EUIPO annulled the registration.

Adidas moved on to appeal the decision but failed, and the General

Court of the EU upheld the 2016 annulment. In its press release it said,

“adidas does not prove that that mark has acquired, throughout the

territory of the EU, distinctive character following the use which had

been made of it.”

In that, adidas failed to broaden trademark protection over three

stripes. This loss should not affect adidas’s existing three-stripe marks

and its trademark protection.

However, it does seem to raise the question of what number of stripes,

colors, or thickness can adidas protect and prevent others from using.

Understanding brand protection

Why is it important for adidas to protect its brand’s logos and not just

the wordmark?

The answer is that those stripes on the side of athletic shoes create

visual recognition. When we see Messi on the field with the three

stripes on his cleats, it makes us want these products.

Whether or not adidas’s three-stripe mark should get broad protection

is a question for national trademark offices and courts.

It is up to them to decide if a certain stripe pattern infringes or dilutes

adidas’s trademarks.

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Want to protect Your Brand? Contact us to learn more:

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WiserTip: Recognize the importance of strategic classification for marks

in light of consumers’ likelihood of confusion between similar or

identical marks in the same category.

FAQ

What is the origin of the name adidas?

Adidas is derived from the first and last name of its founder: Adolf “Adi”

Dassler.

What is a trademark?

A trademark identifies and distinguishes a person or a company’s

goods or services through any name, word, symbol, device, or any

combination thereof. Trademarks protect the exclusive rights to use

them. [See 15 U.S. Code § 1127]

What is a figurative mark?

According to EUIPO, a figurative mark is a trademark where “non-

standard characters, stylization or layout, or a graphic feature or a

colour are used, including marks that consist exclusively of figurative

elements.”

Among the examples used by EUIPO for a figurative trademark: