This month we discuss trademark lawsuits involving Apple, Adidas, Crocs, and many more…
Adidas Sues Thom Browne in Latest Battle Over Three-Stripe Mark
Athleisure brand Adidas, widely known for assiduously policing its famous three-stripe trademark, has filed a new lawsuit against American menswear and womenswear clothing label Thom Browne (“Browne”) over Browne’s use of design on its clothing featuring two-, three- and four- parallel stripes.
The lawsuit, which was filed in the Southern District of New York, asserts claims against Browne for trademark infringement, trademark dilution and unfair competition, accusing it of “irreparably harming Adidas’s brand and its extremely valuable mark” by “offering for sale and selling athletic-style apparel and footwear featuring two, three, or four parallel stripes in a manner that is confusingly similar to Adidas’ three-stripe mark” and likely to “deceive the public regarding its source, sponsorship, association, or affiliation.” In particular, the suit claims that Browne, traditionally known for its tailored and cropped men’s suits and jackets and avant-garde womenswear, “encroached into direct competition with Adidas by offering sportswear and athletic-style footwear that bear confusingly similar imitations” of Adidas’ three-stripe mark. Such conduct that the complaint claims has also been exacerbated by Browne’s use of similar celebrity brand ambassadors that Adidas partners with in order to promote their brand.
Notably, Adidas initiated an inter partes proceeding before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, opposing three applications by Browne to register red, white and blue stripe marks. The parties’ inability to resolve that dispute prompted Adidas to file the instant lawsuit in federal court seeking, among other things, an injunction against Browne’s further use of the stripe marks.
Browne, for its part, is not backing down and, in June, called Adidas out for allegedly acquiescing to Browne’s use of its striped marks for twelve years.
The case is Adidas America, Inc., et al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY). A link to Adidas’ complaint in the lawsuit can be found here.
Off-White Strives to Defend its Red Zip Tie and “For Walking” Marks Before the PTO
Attorneys for the buzzy fashion label Off-White are insisting that two of the brands asserted trademarks, a red zip tie attached to some of the brand’s shoes and handbags, and the quoted wording “For-Walking,” which the brand famously used on a pair of boots, are just as valid as any other source identifier. Attorneys are refuting the PTO’s rejection of those design elements as “merely a decorative or ornamental feature of the goods” which induces consumers to purchase the goods on which they are used.
Off-White has pointed to the uniqueness of the red zip tie, widespread media and celebrity attention it has garnered, and its continuous use of the red zip tie for more than five years, has transformed the feature into a distinctive source identifier and not a merely ornamental feature, likening the zip tie to the logo-centric products of other luxury brands, which consumers buy because of the presence of the logos. Off-White’s position — the mere fact that a trademark can be seen on the product cannot automatically mean that it is a decorative or ornamental feature of the goods — is entirely valid, and in many ways the same fight Christian Louboutin faced with its red sole, i.e., can a trademark be attractive and still be a source identifier?
Regarding the proposed mark “For Walking” Off-White argues that the quotation marks make all the difference, resulting in a distinctive and unique commercial impression on the goods. Off-White also argues that the phrase is not merely descriptive because it does not describe a characteristic or feature of the goods with any degree of particularity.
This fight presents immensely interesting and provocative questions around the protectability of innovation, originality and wit in fashion and is one to watch.
Crocs Sues Walmart, Hobby Lobby Over Look-Alike Shoes
The Colorado-based footwear company, Crocs, Inc. filed several federal lawsuits on July 12, 2021 against twenty-one retailers, including Walmart Inc. and Hobby Lobby Stores, Inc. for allegedly infringing on the company’s trademark and diluting the company’s brand. Crocs argues that several companies are attempting to benefit from the brand’s success and in doing so are wrongfully violating its rights. For example, Walmart’s use of 3D open-hole marks placed along the upper edge of the shoe is confusingly similar to Crocs’ signature appearance. Crocs had earlier protected its shoes using a design patent. But after the patent expired, Crocs relied solely on the protection from its two trade dress registrations which include the 3D mark and Vamp mark.
In furtherance of the lawsuit above, Crocs also filed a complaint with the United States International Trade Commission (ITC) to prevent the sale of counterfeit products and block the importation of the goods.
Crocs is arguing in both the federal court and the ITC against nearly two dozen companies.
Crocs, Inc. v. Cape Robbin Inc. et al., case number 1:21-cv-01890, is in U.S. District Court for the District of Colorado; Crocs, Inc. v. Dr. Leonard’s Healthcare Corp. et al., case number 2:21-cv-13583, is in the U.S. District Court for the District of New Jersey; Crocs, Inc. v. La Modish Boutique et al., case number 2:21-cv-05641, is in the U.S. District Court for the Central District of California; and Crocs, Inc. v. Bijora, Inc. d/b/a Akira, case number 1:21-cv-03698, is in the U.S. District Court for the Northern District of Illinois.
Apple Beats “Memoji” Trademark Case at the Ninth Circuit
On Tuesday, July 13, 2021, the Ninth Circuit rejected a trademark lawsuit against Apple over the use of “Memoji.” The court ruled that Social Technologies LLC (“Social Tech”), an Atlanta based app maker, had sought to register the mark “Memoji” solely to bolster its case against the tech giant. Social Tech alleged that it started using “Memoji” in 2016, but the court found that the company never actually used the name in commerce before Apple announced its emoji features in 2018. Among other things, the court cited emails that showed Social Tech employees expediting the launch process and discussing the possibility of a lawsuit against Apple, by telling co-workers to “get your Lamborghini picked out!”
Based on the evidence, the Ninth Circuit concluded that Social Tech did not exhibit the kind of “bona fide use” required for trademark protection.
Pasadena Beats Trademark Lawsuit Over Rose Bowl
On July 13, 2021, U.S. District Court Judge Andre Birotte dismissed a trademark lawsuit filed by the Pasadena Tournament of Roses Association, a college football non-profit association that hosts the historic Rose Bowl football game, against the City of Pasadena.
The organization sued the city seeking a determination that it can move the location of the game from Pasadena to Texas, without the city’s consent, and that the city owns no trademark rights in the “Rose Bowl.” The organization further accused the city of infringing its trademark in a social media post. In the past, the games were held primarily in the City of Pasadena, but due to COVID-19 restrictions the games were moved to Texas.
The court granted the city’s motion to dismiss, declining to rule on the declaratory judgment claim. The parties had apparently entered into a previous agreement to officially move the location of the Rose Bowl football game and avoid litigation. As to the trademark claim, the court ruled that the social media post was protected under nominative fair use — a doctrine that allows the use of a trademark if it is necessary to identify a brand owner.
Savannah College of Art and Design Requests the U.S. Supreme Court to Reject Sportswear’s Trademark Petition
On July 13, 2021, Savannah College of Art and Design, Inc. (“SCAD”) asked the U.S. Supreme Court to reject Sportswear, Inc.’s petition for a writ of certiorari, in which it seeks permission to use marks that SCAD claims are “blatant appropriations(s) of (its) name, mascot, and other registered marks.”
In October 2017, the Eleventh Circuit permanently prohibited Sportswear from using the mark “SCAD” in commerce and protected the rights of the college. The court found that from 2009 to 2014 Sportswear received approximately $2,000 in profits from bearing the mark “SCAD” on apparel and issued the company to cease production. In its decision, the Eleventh Circuit stated that it was bound by the 1975 case, Boston Professional Hockey Association Inc. et al. v. Dallas Cap & Emblem Manufacturing Inc., in which the Fifth Circuit held that intellectual property rights for service marks registered by a sports team extended to embroidered emblems of the marks, which were being used by another company without permission.
In its petition, Sportswear argues that, in its ruling the Eleventh Circuit admitted that Boston Hockey did not have a basis for extending the rights of service marks to goods, and that other circuits have held that service marks do not extend to goods. SCAD argues that there is no conflict among rulings in the circuits, and the decision by the Eleventh Circuit should be upheld.
Nike’s Use of the Words “Cool” and “Compression” Mark: Fair Use?
In 2018, Lontex Corp. (“Lontex”) filed an action against Nike alleging that Nike infringed its Cool Compression mark. In February 2021, the court denied Nike’s motion to dismiss the case. In July 2021, Nike filed its trial brief and alleges that its use of the words “cool” and “compression” were only descriptive and not in violation of Lontex’s rights. Specifically, “Nike intends to prove that it used the common words ‘cool’ to describe cooling aspects of its apparel, and ‘compression’ to describe a tight fit, which is indisputably a fair use, for which the Lanham Act grants a complete affirmative defense.” Moreover, Nike also argues that Lontex started using Cool Compression on its apparels and in its advertising in 2016, after it discovered that Nike was using the words “cool” and “compression” to describe characteristics of its own apparels. In its trial brief, Lontex maintains that Nike’s use of the words “cool” and “compression” even when including content between the two words, is an infringement of its mark. The case will be presented to a jury who will decide whether there is actual confusion between Lontex’s mark and Nike’s use of the terms “cool” and “compression.”
Cointreau Files a Trademark Infringement Case Against Cannabis Company
On July 9, 2021, Cointreau Corp. (“Cointreau”) filed a trademark infringement action against cannabis company, Canopy Growth (“Canopy”), for selling its CBD-infused sparkling water under the name “Quatreau.”
Cointreau argues that Canopy is using a name very similar to its well-known French orange liqueur to benefit from Cointreau’s international reputation. Cointreau also claims that Canopy is diluting Cointreau’s trademark.
While Cointreau is currently only selling its alcoholic orange liqueur in the U.S., Cointreau alleges in its complaint that it owns a trademark for mineral and carbonated waters along with non-alcoholic drinks, and that the company will start selling non-alcoholic beverages imminently, which it claims is likely to cause greater confusion with Canopy’s “Quatreau” sparkling water.
Dunnington Bartholow & Miller Trademark Bulletin Committee: Olivera Medenica (Partner), Donna Frosco (Of Counsel); Sixtine Bousquet, Betsy Dale & Kamanta Kettle (Associates).