Trivedi and Parashar (Advocates and Solicitors)
ADIDAS V. THOM BROWNE.
Adidas is a sportswear giant known worldwide for its products and a "Three-Stripes" Signature Mark, which the Company has been using since 1952. The company owns 24 federal trademark registrations for different variations of the stripes, covering all kinds of apparel.
In 2021, Adidas sued Thom Browne for trademark infringement for $ 7.8 Million. According to documents, Adidas has filed over 90 lawsuits and more than 200 settlement agreements since 2008.
In Adidas America Inc. v. Thom Browne Inc. [S.D.N.Y No. 1:21-cv-05615], the issue started in 2005 when Thom Browne first incorporated the Three-Striped design into its products. Subsequently, in 2007, Adidas raised its concerns with Thom Browne regarding the use of this design and as a result, it agreed to cease utilizing the Three-Striped design. However, in 2008, Thom Browne began incorporating the Four-Striped design into its activewear, thereby resuming the use of a striped pattern.
In the present case, Thom Browne was accused by Adidas of infringing its Three Striped design through the use of two branding designs known as "Four Bars" and Grosgrain" to its specific products. Furthermore, Adidas stated that the use of the Four Bars and Grosgrain causes public confusion, is deceptively similar, and can induce the public into thinking that the products are being manufactured, sold, or associated by Adidas as the public sees the Company's trademark or any signature mark, which can distinguish between the original and a copy. Through the usage of these designs, Thom Browne earned much profit.
Thom Browne argued that Adidas had exercised unreasonable delay in asserting its claim. As per the documents, the usage of the "Four-Bar Signature" was first sold in 2009 and was displayed at the New York store in 2010. However, Adidas claimed it only became aware of the alleged infringement in early 2018, when Thom Browne applied to trademark the "Grosgrain Signature."
The Jury took the following points before deciding whether Thom Browne is liable for trademark infringement or dilution of the Adidas mark; Strength of the Mark, Similarity Percentage, Reach to the Consumer, and Intention.
Thom Browne was held not liable for trademark infringement, dilution of the Adidas mark, or any damages or profit from selling the "Four Bars" and "Grosgrain" designed products.
This decision gave Adidas a big blow and ended its monopoly over the "Three-Strip" signature mark. It serves as a reminder for companies to diligently monitor and take appropriate legal action to safeguard their well-known trademarks from infringement.