Adidas and Aviator Nation are back at odds, with the German sportswear giant arguing in a newly filed lawsuit that despite a number of previous settlement agreements, Aviator Nation continues to exhibit “blatant disregard” for its three-stripe trademark. In the trademark infringement and dilution, unfair competition, and breach of contract complaint that it filed in a federal court in Oregon on May 1, adidas alleges that even having entered into a formal settlement agreement with it as recently as 2022, Aviator Nation continues to offer up and sell sweatshirts, sweatpants, hoodies, shorts, and related apparel featuring parallel-stripe designs that are “confusingly similar” to adidas’s well-known mark.
Specifically, adidas asserts that in settlement agreements signed in 2012, 2013, and 2022, Aviator Nation “acknowledged adidas’s rights, agreed to stop selling apparel adidas had identified as infringing [its] three-stripe mark, and committed to stop manufacturing, marketing, or selling any product bearing the three-stripe mark or any design, mark, or feature confusingly similar to it.” Part of the problem, according to adidas, is that its fellow apparel-maker has continued to manufacture, market, and sell apparel that not only “imitates adidas’s three-stripe mark” but that “emphasizes three stripes” in a manner that is “likely to cause consumer confusion and deceive the public regarding its source, sponsorship, or affiliation.”
Reflecting on the stripe designs above, adidas asserts that Aviator Nation’s “infringing apparel even emphasizes three stripes, [as] such apparel features five stripes down the outseam (where adidas traditionally has placed its three-stripe mark) with three stripes that are much more prominent than the other two stripes, which are substantially similar in color to the background color of the garment and difficult to see. The apparel, thus, gives the appearance of having three stripes.”
At the same time, Los Angeles-headquartered Aviator Nation – which has garnered a cult following for its $150-plus sweats – continues to make use of confusingly similar striped designs on apparel that adidas claims “directly competes with apparel offered for sale by adidas through the same channels of marketing and trade.” Moreover, adidas claims that Aviator Nation began selling such allegedly infringing wares “long after adidas had established protectable trademark rights in the three-stripe mark and well after the three-stripe mark became famous among the general public in the U.S.”
Trademark Infringement and Dilution – Because consumers are likely to be confused regarding the source of Aviator Nation’s striped wares or believe that adidas is in some way connected with such wares when it is not, the sportswear giant accuses its smaller rival of trademark infringement. Beyond that, adidas argues that as a result of more than sixty-five years of use of its three-stripe mark and its “exclusive and continuous promot[ion] and use [of the] its registered three-stripe mark in the U.S., the mark has become famous.”
Against that background, adidas contends that Aviator Nation’s use of a lookalike mark is likely to “dilute the distinctiveness of [its] famous three-stripe mark by eroding the public’s exclusive identification of this famous mark with adidas, tarnishing, and degrading the positive associations and prestigious connotations of this famous mark, and otherwise lessening the capacity of the famous three-stripe mark to identify and distinguish adidas’s goods.”
Breach of Contract – The other critical issue here, according to adidas, comes on the contract front. Setting the stage here, adidas alleges that each of the settlement agreements that it entered into with Aviator Nation and its founder and CEO Paige Mycoskie contains a confidentiality provision that requires the parties to keep the contents of the agreements strictly confidential and to not disclose their terms to anyone.
“Notwithstanding these confidentiality provisions,” adidas claims that Mycoskie appeared on Guy Raz’s National Public Radio podcast “How I Built This” in January, and “publicly disclosed and misrepresented the parties’ prior disputes and key terms of their 2022 settlement agreement.” Specifically, she said …
“Basically, what happened was, in 2012 there were a couple garments that did have three stripes on ‘em. I basically said, ‘Ok. I’ll stop doing three stripe garments, but I’m going to continue doing the four stripe.’ And so, they like basically disappeared for several years, and I stopped doing three stripes … They came like years down the road … maybe 2016 or something, [and] said, ‘Ok, now we think your four stripes are confusingly similar.’ And I was like, ‘No guys, we made this agreement.’ And so anyway, in 2016, you know I had a little bit more money. I think at that point I actually had insurance for trademark protection. And so, this went on for a long time, and we did go through mediation and all this stuff. And then in the end, they pretty much let go of it. We just settled on the fact that I wouldn’t do three stripes, and I would really not do anything with four stripes that was confusing with their three stripes because one of the stripes blended into the background of the garment or something.”
Adidas claims that Mycoskie’s public statement “not only breached the parties’ 2022 agreement but demonstrates the contemptuous indifference she and her company repeatedly have exhibited for the duties and obligations they undertook in the [settlement] agreements.”
Against that background, adidas sets out claims of trademark infringement and dilution, unfair competition, and breach of contract. And in accordance with the terms of the parties’ 2022 settlement agreement, it states that it is entitled, in addition to other relief, to “injunctive relief and to recover its costs, including reasonable attorneys’ fees.”
Aviator Nation did not immediately respond to a request for comment.
The case is adidas America, Inc. et al v. Aviator Nation, Inc., 3:24-cv-00740 (D. Or.).
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