The request came as part of Thom Browne’s answer to the trademark infringement complaint Adidas filed against it in June last year. Submitted Thursday, the response arrived just two weeks after the court rejected the fashion brand’s motion to fully dismiss the complaint.
In its original lawsuit, Adidas alleged that Thom Browne’s use of two-, three- and four-stripe designs was “likely to cause consumer confusion and deceive the public regarding [the products’] source, sponsorship, association or affiliation.” The company claimed that the luxury brand had recently “encroached” into direct competition with Adidas by offering sportswear and athletic-styled footwear and entering into partnerships with professional athletes.
Thom Browne laid out a range of defenses in its response. Despite later dubbing Adidas an “overzealous enforcer,” the label argued the company allowed it to use a horizontal, four-stripe pattern from 2009 to 2018 without an issue. Additionally, it claimed Adidas “failed to police the market” by allowing third parties to also use stripes on clothing and footwear.
Though Adidas argued the luxury label encroached on its market, Thom Browne claimed the changes to its product line have been “natural and anticipated.” Furthermore, it said that since they operate in “entirely separate markets” at different price points, they are not competitors and consumers are not likely to become confused.
Thom Browne’s response also included a counterclaim seeking to cancel a trademark that Adidas received in 2016. The mark was one of many mentioned in the sportswear giant’s original complaint. Adidas described the mark as “three diagonal quadrilaterals positioned parallel to each other upon a contrasting background.”
Adidas initially applied for the mark in February 2014. The U.S. Patent and Trademark Office finally registered it two years later after rejecting it multiple times. As Thom Browne notes in its counterclaim, the USPTO at one point rejected the trademark on the basis that it was “merely a decorative or ornamental feature of the goods.”
In its September 2015 response, Adidas argued that the design was recognized as an iconic symbol associated exclusively with the Adidas brand.” In support, it included photographs of athletic products bearing a variety of three-stripe designs. According to Thom Browne, “many” did not include what it called the “Three-Quadrilaterals Design.” As many of these cited goods also include other Adidas marks, Thom Browne also argued that the pictures failed to establish the design as an “indicia of source.”
The USPTO ultimately approved the mark, publishing it for opposition in December 2015 and registering it in March 2016. Thom Browne’s counterclaim, however, asserts the USPTO was right when it said the design was “merely ornamental and/or aesthetically functional” and the trademark should not have been issued.
Given that Adidas cited the mark in its original lawsuit, Thom Browne said it believes it is “likely to be damaged” by the maintenance of Adidas mark. As such, it argued that it has the power to petition to cancel the mark’s registration. It did not attempt to cancel any of the other trademarks named in Adidas’ lawsuit.
Fashion Nova similarly filed a petition to cancel Adidas’ Three-Quadrilaterals mark in July 2020. Facing its own trademark lawsuit from Adidas, the fast-fashion retailer asserted that it was likely to be damaged by the maintenance of the mark. It too argued that the trademark was “merely ornamental and/or aesthetically functional” and had not acquired any secondary meaning.
In September last year, the two parties jointly filed to suspend the cancellation proceeding pending the outcome of Adidas’ lawsuit. That litigation is currently ongoing. Adidas filed a separate infringement complaint in March, this one targeted at footwear that it alleges infringed on its Stan Smith sneaker trade dress.