Thom Browne has prevailed in the trademark fight waged against it by adidas. Within a matter of hours of the close of the trial that had been underway before the U.S. District Court for the Southern District of New York since last week, the jury found that despite adidas’s arguments to the contrary, Thom Browne did not engage in trademark infringement or dilution by offering up apparel and footwear bearing a four-stripe motif. In closing arguments on Thursday, counsel for Thom Browne doubled down on its claims that adidas, which maintains trademark rights in its famed 3-stripe logo, is not the owner of all striped designs, and that Thom Browne – which is particularly well-known for its high-end tailored pieces – is not looking to piggyback on the reputation of adidas by way of its use of a striped mark on a growing array of leisure apparel and accessories.
The trademark trial followed from more than four years of back-and-forth between the parties since adidas initiated an opposition proceeding in 2018 in response to a trademark application that Thom Browne filed in the European Union for a four-striped mark. In December 2020, adidas filed a stateside opposition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, urging the trademark body to put a stop to three pending trademark applications for red, white, and blue stripe trademarks for use on footwear that were filed by the New York-based fashion brand earlier that year. Adidas argued that Thom Browne’s marks are confusingly similar to its own pre-existing marks.
Setting the stage for the now-completed trademark trial, adidas filed a trademark infringement and dilution suit against Thom Browne in June 2021. The German sportswear giant – which has been using a 3-stripe logo since the 1950s and is notoriously litigious when it comes to others’ use of lookalike marks – alleged that Browne was engaging in “direct competition with [it] by offering sportswear and athletic-styled footwear that bears confusingly similar imitations” of its three stripes.
At the heart of adidas’ case was its claim that consumers “are likely to assume that [Thom Browne’s] goods originate from the same source, or that they are affiliated, connected, or associated with [adidas]” when no such affiliation exists. According to adidas, consumer confusion is likely – especially in a post-sale capacity – since Thom Browne uses stripes in a manner that is “similar to [its] three-stripe mark in appearance and overall commercial impression.” Kilpatrick Townsend’s R. Charles Henn argued on behalf of adidas that many of Thom Browne’s goods, including its sportswear apparel and sneakers, “are identical to the goods” that adidas has “long … offered in connection with the three-stripe mark.”
Aside from the obvious trademark elements at play, there were strong undertones of competition in the parties’ clash, with adidas – which was seeking roughly $8 million in damages – alleging that Thom Browne has not merely been making high fashion items bearing a four-striped mark but has been aggressively encroaching on its home turf (i.e., the sportswear market), including by way of an expanding collection of sports-related apparel and official deals with teams, such as European football club FC Barcelona. (Browne’s expansion efforts reflect a larger trend of brands looking to cater to consumers more holistically, whether that be by expanding their offerings to include sportswear, offering up cosmetics, or in the upper-end of the luxury spectrum, rolling out restaurants and/or hotels in order to meet consumers where they are. These expansion efforts bring revenue and other upsides, but as the case at hand clearly demonstrates, they can set brands up for trademark clashes.)
All the while, counsel for Thom Browne pushed back against adidas’ claims, stating that the likelihood of consumer confusion here is low due to the two companies’ respective positions in the market, complete with very different price points. Beyond that, counsel for Thom Browne, Robert Maldonado, took the position that adidas had waited too long to take legal action over Thom Browne’s allegedly infringing use of stripes. Mirroring the laches, acquiescence, and estoppel arguments that the brand previously made in response to adidas’ complaint, Maldonado asserted at trial that adidas complained about Thom Browne’s use of three horizontal parallel bands on clothing back in 2007, but it did not take issue with its use of four horizontal parallel bands on clothing until much more recently.
In order to avoid litigation, Thom Browne swapped out its three-stripe motif for a logo consisting of “four horizontal, parallel bands” back in 2007 after “adidas complained about [the brand’s] use of three horizontal parallel bands on its clothing.” The years-long delay between adidas having known (or when it reasonably should have known) that Thom Browne was using a “four horizontal bar” design and adidas taking action was “unreasonably” long, per Browne. On a similar note, Maldonado told the jury that the two companies and their respective striped marks co-existed in the market for that period of time without damage to adidas’ brand.
A spokesperson for Thom Browne said in statement on Thursday, “We are pleased that the jury found that at no time did Thom Browne Inc. infringe on any of adidas’ trademarks.” The rep further asserted that “for over 20 years now, Thom Browne has been a pioneering force in luxury fashion, bringing a wholly unique and distinctive design aesthetic that combines classic tailoring with American sportswear sensibilities.”
Meanwhile, a representative for adidas told TFL, “We are disappointed with the verdict and will continue to vigilantly enforce our intellectual property, including filing any appropriate appeals.”
The case is adidas America, Inc., et al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).
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