Adidas is coming for J. Crew with a new trademark challenge. The German sportswear giant – which is notorious for its aggressive and enduring fight over stripes – initiated a bid to shut down one of J. Crew’s recently-filed trademark applications, one in which the struggling retailer is seeking federal protections for a striped design for use on apparel ranging from tops and shorts to bowties and pajamas, as well as handbags, luggage, business card cases, and beach bags.
According to the opposition that adidas filed earlier this month, the sportswear brand asserts that it “believes that [it] will be damaged by the issuance of a registration” for a J. Crew multi-stripe trademark since it has been using its famous three-stripe trademark since “as early as 1952 … in the United States and worldwide.” As a result, adidas argues that “the three-stripe mark [has] come to signify the quality and reputation of adidas.” Not just any use of stripes by J. Crew – which makes heavy use of stripe-y patterns across its stock of garments and accessories and even introduced a stripe-specific “holiday,” National Stripes Day, in an effort to help boost its ailing sales numbers – is problematic. Adidas is specifically taking issue with “a stripe design with five parallel bands of color in the following order: burgundy, ivory, navy blue, ivory, burgundy.”
Pointing to more than 20 trademark registrations for its various use of stripes, its “frequent sponsorship of athletic tournaments and organizations, as well as professional athletes and collegiate sports teams … and musical artists,” and the “billions of dollars [in global annual sales] and hundreds of millions of dollars within the United States,” adidas says that “the public recognizes and understands that the three-stripe mark distinguishes and identifies adidas’s merchandise” from that of other brands.
“As a result of [its] extensive use and promotion of the three-stripe mark,” adidas claims that it “has built up and now owns extremely valuable goodwill that is symbolized by the mark,” and with that in mind, it argues that such rights are at risk because “consumers familiar with the goods and services long associated with [its] three- stripe mark are likely to assume that the goods and services offered under [J. Crew’s striped trademark] originate from the same source, or that they are affiliated, connected, or associated with [adidas].”
This is particularly true, the brand claims, because J. Crew’s trademark “incorporates three stripes in a manner that is confusingly similar to adidas’s three-stripe mark in appearance and overall commercial impression … for use on identical, highly related and/or complementary to the goods and services” as the ones sold by adidas.
In addition to causing confusion amongst consumers should they see products bearing J. Crew’s striped mark, the retailer’s trademark is likely to “dilute the distinctiveness of the three-stripe mark by eroding consumers’ exclusive identification of the three-stripe mark with adidas, and otherwise lessening the capacity of the three-stripe mark to identify and distinguish the goods and services of adidas.” As such, in furtherance of its opposition, a pre-registration proceeding in which any party that believes it may be damaged by the registration of a trademark for which an application has been filed can seek to have the application refused, adidas has asked the U.S. Patent and Trademark Office’s Trademark Trial and Appeals Board (“TTAB”) to shut down J. Crew’s application.
Four days after adidas filed its notice of opposition, it lodge an additional filing with the TTAB seeking to temporarily suspend proceedings pending settlement negotiations, meaning that the two parties are attempting to resolve their trademark differences on their own. On Friday, the TTAB agreed to suspend the matter for 60 days, “subject to the right of either party to request resumption at any time.” Should adidas and J. Crew fail to come to an agreement within 60 days, proceedings will resume before the TTAB.
This is the latest in a long line of stripes-specific fights for adidas. The sporting goods giant has initiated trademark infringement lawsuits (and opposition proceedings) against Shoe Branding Europe, football club FC Barcelona, Italian fashion brand Bally, fellow footwear brand ECCO, Skechers, Marc Jacobs, and Elon Musk’s Tesla, among others, a pattern that has prompted outrage from trademark scholars, practitioners, and brands, alike.
For instance, Forever 21, which filed a suit of its own against adidas in 2017, asked the court to interfere after the fast fashion giant received cease and desist letters from adidas. In its suit, Forever 21 asserted that “bully” adidas had “managed to secure federal trademark registrations for use of three, parallel stripes placed in specific locations on certain shoes and clothing,” which it has used to “essentially assert that no item of clothing can have any number of stripes in any location without infringing adidas’s trademarks.” That case ultimately settled out of court.
UPDATED (June 30, 2021): On the heels of a months-long suspension of proceedings in light of settlement negotiations between the parties), J. Crew withdrew its application “without prejudice,” according to a filing that counsel for the retail lodged with the TTAB.
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