A Canadian trademark scuffle that pits two big names in the apparel/accessories space against one another seems to be making its way into the United States. On the heels of Arc’teryx-owner Amer Sports Canada Inc. filing a trademark lawsuit against adidas’ Canadian subsidiary early this year over the German sportswear giant’s “Terrex”-branded retail stores, Amer Sports Canada Inc. (“Arc’teryx”) is looking to block the application for registration that adidas lodged in the U.S. for the TERREX word mark for use in connection with “retail store services featuring clothing, footwear,” etc. (Class 35), arguing that consumers are likely to be confused by the mark and thus, it will be damaged if it is registered.
In the notice of opposition that it filed with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board on August 21, as first reported by TFL, Arc’teryx claims that adidas is “seeking to use a mark that is substantially similar to the ARC’TERX mark, and to offer retail store services that are identical or substantially identical to the ARC’TERYX mark.” The Canadian outdoorwear-maker claims that adidas’ plans to offer similar goods under a similar name is likely to cause – and in fact, already has caused – confusion among consumers.
ARC’TERX v. TERREX
Arc’teryx asserts that consumers are likely to believe the two companies are affiliated because “the pronunciation of ‘TERREX’ is identical to the pronunciation of the letters ‘TERYX’ in ARC’TERYX,” and at the same time, adidas “intends to use the [mark] on the same services as Arc’teryx,” including outdoor-specific clothing, footwear, and gear. In addition to the potential for confusion in the U.S., including since “the conditions under which consumers shop at retail stores means they would be likely to enter a TERREX retail store, thinking it to be an ARC’TERYX retail store,” Arc’teryx alleges that there is “already evidence of actual consumer confusion in a neighboring jurisdiction, Canada, where adidas has begun using the TERREX name in connection with retail store services.”
An adidas TERREX pop-up in Portland
While Arc’teryx claims that it has used its name in Class 35 in the U.S. since at least as early as December 1, 2011, adidas is not currently offering retail store services under the TERREX name in the U.S. Nonetheless, the bigger sportswear brand “intends to do so in the future.” As for its use of the TERREX mark in Canada, Arc’teryx contends that existing confusion has been demonstrated by articles from local media in Vancouver, which “began publishing articles commenting on the confusion between the TERREX retail store and the ARC’TERYX retail store.” (According to the complaint, adidas opened its first TERREX retail store “on the same block and four doors down from the ARC’TERYX retail store” in Vancouver in December, thereby, prompting the aforementioned trademark infringement suit.)
Prior Use by adidas: To the extent that adidas has made prior use of or has registrations for the TERREX mark in connection with apparel (in Class 25), Arc’teryx claims that such use/registrations do “not entitle adidas to expand into the retail store services” in light of its existing presence in the segment of the market in the U.S. Hardy a hypothetical scenario, adidas has maintained a registration for TERREX for use on “footwear, shorts, pants, t-shirts, sweatshirts, vests, jackets, rains suits,” etc. in the U.S. since 2009, and started offering up apparel and other goods under its Terrex “line of outdoor adventure gear” in 2011, according to the adidas website.
Delving into its own rights, 34-year-old Arc’teryx alleges that it is the owner of “various registered trademarks and trademark applications directed to the word mark ARC’TERYX covering a variety of goods and services,” including outdoor apparel, footwear, bags, and accessories, as well as retail store and online services for selling such products directly to consumers and has maintained registrations for the mark in the U.S. since 2014.
Given that it has “developed a fast-growing and exceptionally loyal consumer following for its brand and products in the retail store services Class 35,” Arc’teryx – which operates 28 ARC’TERYX-branded retail stores across the U.S. – contends that it is “entitled to exclusive use of its trademarks, and the opposition of adidas’ intention to be similar and confusing on storefronts.”
The Bottom Line: Arc’teryx claims that adidas’ use of – and a potential registration for – the TERREX mark “would harm Arc’teryx,” namely, in light of the potential for “widespread” consumer confusion. As a result, Arc’tery requests that its opposition be sustained and that registration for adidas’ mark be refused.
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