Thom Browne challenges Adidas three-stripe mark
Designer Thom Browne has filed a counterclaim after it was sued by sportswear retailer Adidas over the use of a stripe design.
In the lawsuit filed at the US District Court for the Southern District of New York on May 5, Thom Browne has argued that the contested mark isn’t eligible for protection.
Adidas sued Thom Browne in June 2021 for its use of the two-, three-, and four-stripe designs on its athletic apparel and footwear.
Adidas held that the designs are “confusingly similar iterations” of the contested mark, and asserted federal claims for trademark infringement, unfair competition, trademark dilution, injury to business reputation and dilution under New York law, and trademark infringement under the state’s common law.
Decorative stripes
In the countersuit, Thom Browne denied that the accused products infringe on any of Adidas’ rights.
The filing held that: “Third parties have designed and sold clothing, footwear, and fashion accessories featuring decorative stripes for decades. Because of stripes’ numerous uses as fashion statements for informational indicators, consumers are accustomed to seeing stripes used on clothing sold by different manufacturers.”
It further argued that because the design is merely ornamental and/or aesthetically functional, the mark is not likely to be perceived by the consuming public as an identification of the source of the goods.
“As a mark that is merely ornamental and/or aesthetically functional, the three quadrilaterals design has not acquired secondary meaning as of the date of submission of this counterclaim and is not entitled to a federal trademark registration,” stated the filing.
Thom Browne noted that in addition to being famous for its activewear and related accessories, Adidas has “achieved notoriety as an overzealous enforcer” of its actual and perceived rights in its “three stripe mark” design.
The designer first found itself the subject of Adidas’ policing over a decade ago, when it was using a three band design on its suiting. To avoid a dispute and without any admission of wrongdoing, Thom Browne ceased use of the three band design and subsequently adopted a four band design.
Contrasting markets
But the designer held that Adidas is now, over ten years later, attempting to state causes of action for federal and common law trademark infringement, unfair competition, and dilution based on the amorphous definition of a “three-stripe mark” design.
The designer also argued that the two brands were very different and consumer confusion was unlikely.
“Thom Browne has built its reputation on high end, tailored pieces. Its sportswear collections carry on this reputation, and are therefore entirely unlikely to be confused with Adidas' performance activewear and performance wear,” said the designer.
The lawsuit contended that numerous third parties use stripes, in multiple variations and iterations, on clothing and footwear, and that consumers are accustomed to distinguishing between striped clothing and footwear.
Thom Browne also insisted that it had manufactured, marketed and sold all types of apparel since at least the mid-2000s, including knitwear and athletic wear, and had not encroached into Adidas’ market. “Any changes to Thom Browne’s product line over the years has been natural and anticipated,” the complaint said.
Thom Browne has asked for a judgment dismissing the complaint, for costs and disbursements, for an award of attorneys’ fees, along with other forms of relief.
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