The footwear company took specific issue with Thom Browne using two-, three- and four-stripe designs on sportswear and sneakers in a way it said was “likely to cause consumer confusion and deceive the public regarding [the products’] source, sponsorship, association or affiliation.”
Adidas also claimed Thom Browne’s partnership with the European soccer club FC Barcelona further exacerbates the matter. According to the footwear company, Thom Browne has promoted its goods using soccer players sponsored by Adidas—including “most notably” Lionel Messi.
Adidas’ suit alleges Thom Browne committed trademark infringement, engaged in unfair competition, diluted the distinctiveness of its three-stripe mark and caused “irreparable injury” to its goodwill and business reputation.
It asked the court to enjoin Thom Browne from using any “colorable imitation” or “simulation” of its’ three-stripe trademark on or in connection with athletic-style clothing and footwear. Adidas is also petitioning the court to order Thom Browne to recall all sportswear products bearing the “confusing similar imitations” and deliver up for impoundment and destruction all such products and related advertising.
Adidas also asked to be awarded damages—including “lost profits, a reasonable royalty and/or corrective advertising.” It then requested this amount be tripled given what it described as Thom Browne’s “knowing and intentional use of confusingly similar imitations” of its three-stripe trademark. It also asked to be awarded “punitive damages” in order “to deter such conduct in the future.”
The footwear giant claims the current dispute began in 2018, when it opposed a trademark application Thom Browne filed in the European Union for a red-white-and-blue, three-stripe design. “Shortly thereafter,” it said, it started investigating the label’s product lines in the U.S.—specifically, those with a two-, three- or four-stripe design. It reportedly began pursuing a resolution in the summer and fall of 2018.
After a lengthy back-and-forth, the two parties finally selected a mediator in November. Between December and April, this mediator held numerous videoconferences and phone calls with the two companies’ counsels. According to Adidas, the mediator was unable to bring them closer together, “necessitating” this week’s legal action.
As Adidas worked to mediate its disagreement with Thom Browne, it continued its attempts to block trademark applications the label filed. In the United States, this began in July last year, when it first requested the U.S. Patent and Trademark Office give it 90-day extensions to consider opposing three trademark applications filed by Thom Browne. The tennis footwear brand K-Swiss joined it for two of these applications, while Tommy Hilfiger joined for all three, as well as a fourth related to fragrances and perfume.
In December, Adidas officially moved to oppose the three applications, while Tommy Hilfiger fought those same applications, as well as the fourth.
Adidas’ notice of opposition claims the design Thom Browne attempted to trademark—the same red-white-and-blue, three-stripe design it fought in Europe—would be “likely to cause confusion” and “dilute the distinctiveness” of its own three-striped design. On June 21, however, Adidas filed to suspend its opposition for 60 days, saying it was “actively engaged in negotiations for the settlement of this matter.”
Tommy Hilfiger’s notice of opposition similarly claims the red-white-and-blue design proposed by Thom Browne could be confused with its own blue-white-and-red, striped trademark. Thom Browne filed to suspend the matter for 60 days on April 16 due to active negotiations. That same day, however, Thom Browne also asked for a 60-day extension to consider blocking two trademark applications filed by Tommy Hilfiger—both related to a blue-white-and-red, four-stripe design.
Two months later, on June 14, Tommy Hilfiger filed its own motion to suspend its opposition for another 60 days, again for ongoing negotiations. On Tuesday, however, Thom Browne officially filed to block one of the two four-stripe trademarks Tommy Hilfiger had been pursuing. In its case, it argued its opponent’s four-stripe design was too similar to a previously filed trademark it had for its three-stripe design.