Adidas has been around for a long time and spent a lot of money promoting its 3 stripe logo. Part of its strategy to protect its brand includes trademark registration. The German company owns numerous U.S. trademark registrations on the various incarnations of its brand. So when fashion designer Marc Jacobs recently released a line of clothing that included 4 stripes down the sleeve, Adidas’ trademark attorneys quickly went into action, filing a trademark infringement lawsuit in Oregon federal court.
Adidas alleges in the lawsuit that “Marc Jacobs’s use of confusingly similar imitations of Adidas’s Three-Stripe Mark is likely to deceive, confuse, and mislead purchasers and prospective purchasers.” A first question that might be asked is whether or not Adidas’ three stripes on a sleeve are distinctive enough to merit trademark protection. Do consumers automatically associate three stripes on the sleeve of a sports jacket with Adidas or as a source identifier? Fortunately for Adidas, it has a trademark registration on the Principal Register covering the three stripe design on sleeves. So it will have a legal presumption that its mark is distinctive and the burden will be on Marc Jacobs to prove that it is not distinctive.
Another advantage that Adidas will have is that its trademark registration is “incontestable” because Adidas completed and had acknowledged its Section 15 affidavit. Under Section 15 of the Lanham Act, an owner of a registration may file an affidavit after the fifth anniversary of the registration date affirming that the “mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce.” When a registration reaches this status, it is very difficult to challenge. Incontestable doesn’t mean it can’t be challenged at all, just that the grounds for challenging the registration are limited to certain circumstance such as when the mark has become generic or when a registrant committed fraud on the USPTO when obtaining the registration.
Under the circumstances, the likely and bestdefense for Marc Jacobs may be to assert that consumers are not likely to confuse his four striped sleeve jackets with the Adidas three striped sleeve jacket. The question will be whether or not consumers are likely to be confused or deceived as to the source of goods. Will consumers believe four striped jackets share come from or are associated with the same source of the three striped jackets? If the case moves forward, Adidas is likely to have a consumer survey done to show infringement. Marcus Jacobs will also likely have a consumer survey done to show that consumers are not likely to confuse the two designs. Each party will likely have expert witnesses that testify regarding the respective surveys to prove their position. In other words, this could become a battle of the experts, which makes for expensive litigation.
This will be an interesting case to follow. Adidas consistent and well done trademark registration practice likely gives it the upper hand and may provide it the leverage to force Marc Jacobs to back down and settle. This provides an excellent example of the importance of actively engaging early on in strategic trademark prosecution practice.
Article written by DA Johnson. Connect with DA on Google+