News analysis: Three stripes and you’re out
In March this year, WIPR reported that fashion retailer Forever 21 had filed a declaratory judgment against Adidas.
Forever 21 accused Adidas of taking protection of its ‘three-stripe’ trademark too far in a suit against Adidas at the US District Court for the Central District of California, Western Division.
In its suit, Forever 21 argued that Adidas is well-known for “aggressively enforcing its perceived” trademark rights against others.
The fashion retailer added that it had “fallen victim” to Adidas’s “threats” and that, most recently in a letter in February, Adidas’s counsel threatened to sue Forever 21 for using stripes on six items of clothing.
According to the claim, the stripes on the Forever 21 clothing “are merely ornamental and decorative. None of these items of clothing displays any of Adidas’s three-stripe marks, and no consumer is likely to believe any of these items are manufactured by, or otherwise associated with, Adidas”.
The suit said Adidas had claimed some of Forever 21’s clothing, including a T-shirt and vest, infringed its trademark. Forever 21 sought a judgment declaring that it had not infringed Adidas’s trademark.
A history lesson
Adidas’s roots date to 1924 when Adi Dassler embarked on a mission to provide athletes with the best possible equipment.
In 1949, Dassler started what was then called “Adi Dassler adidas Sportschuhfabrik”.
Adidas began using the ‘three-stripe’ mark on footwear in 1952 and registered the mark in the US in 1994.
Dassler reportedly once said: “The three stripes were originally installed on the shoes to give that part of the shoe more support, but it became our trademark.”
The company owns a number of other trademarks, including the term ‘Adidas’, at the US Patent and Trademark Office. One mark was registered in 1986 and covers sportswear such as shirts, jerseys, socks and caps.
Adidas has become known worldwide for its three-stripe mark, which adorns many of its clothes and shoes, and has often sought to protect its legal rights.
WIPR has reported on a number of cases that Adidas has taken up against companies such as Puma and Asics over its three-stripe mark.
In the Puma case, the claim alleged: “Puma’s use of four diagonal stripes … is a blatant attempt by Puma to trade on the goodwill and commercial magnetism Adidas has built up in the ‘three-stripe mark’.”
“The three stripes were originally installed on the shoes to give that part of the shoe more support, but it became our trademark.”
The case is slightly different to other filings because of the historical links between the companies. Brothers Adi and Rudolph Dassler started the shoe company in 1924, but more than 20 years later went their separate ways. Adi founded Adidas, while his brother launched Puma.
WIPR survey
Adidas’s enforcement has sometimes led to mixed reactions.
In March WIPR asked its readers whether they thought Adidas had gone “too far” in the protection of its three-stripe mark, and three-quarters of readers thought Adidas had.
Two readers said the company had “bullied parties who are not even close to infringing its marks into submission”.
Many readers noted that stripes on clothing are a generic feature and should be available to all designers.
However, one reader backed Adidas’s actions, asking which line had been crossed by Adidas in defending its IP rights.
“Sure, some actions may appear heavy-handed, but when you understand that IP counterfeiting/pirating will reach $4.2 trillion by 2022 [according to one report], the picture should be very clear. It’s not a victimless crime,” they said.
“Adidas is simply protecting its rights,” said the respondent, adding that the trademark registrations Adidas relied on in the case clearly cover the three stripes that were shown on the Forever 21 items.
But two readers said Adidas has an “inherently weak mark” and that the company would be “better advised to choose its battles carefully”.
As these responses show, the very nature of enforcing such a well-known and important trademark can be very divisive.
