Adidas and the Fight for the “Three- Stripe”

By Tiffany Pho

Adidas recently filed a trademark infringement suit in Oregon district court against high fashion label, Marc by Marc Jacobs. The eponymous line by Marc Jacobs debuted its track jacket in Spring 2014 displaying a new “four stripe design” down the sleeve, remarkably similar to Adidas’ “three-stripe.”  The Adidas complaint states that the three-stripe has been famous and well-known for many years, due in part to the company’s sponsorships with artists and athletes such as Katy Petty, Selena Gomez, Pharrell Williams, Tim Duncan, Lionel Messi, and most recently, Kanye West, for his Yeezy Boost sneaker collection. The lawsuit claims that Marc by Marc Jacobs intentionally produced and designed similar imitations of Adidas’ three-stripe trademark in order to deceive customers into believing that the fashion line had collaborated with Adidas in producing and selling the products.  Adidas believes that customers will be easily confused into thinking that Adidas collaborated with Marc Jacobs on this line because it had previously collaborated with other high end fashion designers such as Stella McCartney, Jeremy Scott, and Yohji Yamamototo create luxury items featuring the three-stripe.

Adidas’ complaint claims that the four-stripe design on Marc Jacob’s track jackets is “likely to cause confusion, deception, and mistake by creating the false and misleading impression that [Marc by Marc Jacobs’] goods are manufactured, produced, distributed, endorsed, sponsored, approved, or licensed by adidas, or are associated or connected with adidas.”  Adidas believes that the use of the four-stripe on the track jackets is likely to cause confusion as to the source of the product, in violation of Section 1125(a) of the Lanham Act.  Adidas claims this is particularly damaging to customers who perceive the Marc Jacobs line to lack quality, and would associate that lack of quality with the Adidas brand.

Adidas is also bringing a claim of trademark dilution against Marc Jacobs.  Adidas alleges that the three-stripe trademark has symbolized quality and reputation of the brand in the sporting world since the formation of the company, and that the appropriation of the stripes by Marc Jacobs will dilute that reputation by diluting the distinctiveness of the brand.

Adidas’ claims against Marc by Marc Jacobs are reminiscent of the trademark claims brought by Gucci against Guess in 2012.  Gucci’s complaint alleged trademark counterfeiting, dilution, and infringement claims based on Guess’ use of Gucci’s Green-Red-Green Stripe design, the script used in the Guess logo, the Square G and Guess’ Quattro G design (above).  Guess moved for summary judgment on the claims, which were denied, except for the dilution claims on the Quattro G and the Square G designs.  The reason the court ruled in Guess’ favor on the two dilution claims was because the Guess dilution marks were used in commerce before October 6, 2006. Marks used in commerce prior to October 6, 2006 were governed by the Federal Trademark Dilution Act of 1995, under which a plaintiff must prove actual dilution.  If, however, the diluting mark is used in commerce after the October date, the dilution analysis is governed by the Trademark Dilution Revision Act which allows a plaintiff to succeed upon a lesser showing of “likelihood of dilution.”  The court ruled that Gucci could not prove actual dilution on the two marks, therefore dismissing Gucci’s dilution claims as to the two marks.  The case proceeded to a bench trial where Gucci largely won on its claims against Guess on the trademark infringement and dilution claims, obtained a permanent injunction against Guess, and succeeded in obtaining the cancellation of one of Guess’ marks.

Although Gucci succeeded on the merits of its claims against Guess, it was much less successful in obtaining damages.  Gucci was awarded only $4,613,478 out of the $100-200 million Gucci had petitioned for. This drastic cut in damages was due to the combination of lack of evidence and a difficult post-sale confusion claim that Gucci had pursued.  Post-sale confusion occurs when the consumer knows that an item is not genuine, but purchases the item for the purpose of gaining the same prestige at a lower price.  The difficulty in showing post-sale confusion is that a likelihood of confusion among a good amount of post-sale observers must be proven, which is speculative and subject to scrutiny.

Adidas should be careful not to make the same mistakes in building its case that Gucci did. Although Adidas may be able to show trademark infringement and dilution, it should take into consideration different claims that can be made, along with the standards of proof if it wants to collect on full damages. The Adidas complaint did not state a specific amount in damages, but requested injunctive relief in destroying all infringing items, actual damages, profits from the sale of the infringing products, punitive damages, and attorney’s fees.

In other Adidas news, the brand also recently brought suit against fashion house Isabel Marant for allegedly copying designs from its “Stan Smith” line of shoes. Adidas claims that Isabel Marant copied the distinctive red heel tab on the back of the “Stan Smith” shoe and used it on the Isabel Marant “Bart” shoe (left). The Adidas sneakers currently sell for $75, while the alleged infringing Bart shoes sell for $400 more at $475. 

The case is Adidas America, Inc., et al. v. Marc Jacobs Int’l, case no. 3:15-cv-00582.

For a more detailed analysis of the Gucci vs. Guess case, please contact Olivera Medenica at omedenica@medenicalaw.com.