Three Stripes and Yo ...

Three Stripes and You’re Out: adidas Seeks to Protect its Mark

March 23, 2017 | by Kevin C. Baltz

On March 17, 2017, athletic apparel giant, adidas[1], filed suit against Juicy Couture, Inc. asserting trademark infringement and unfair competition claims.  The case is styled adidas America Inc. et al. v. Juicy Couture Inc., Case Number 3:17-cv-00437, filed in the U.S. District Court for the District of Oregon.  Apparently, adidas got a burr in its sneaker after Juicy Couture recently started selling apparel lined with three stripes.  adidas especially took issue with the fact that Juicy Couture had, in 2009, executed a Settlement Agreement (with adidas) in which it “agree[d] … that it will not produce, manufacture, distribute, sell, offer for sale, advertise, promote, license, or market … any … apparel bearing the Three-Stripe Mark or any design, mark, or feature that is confusingly similar to the Three-Stripe Mark.”

In its Complaint, adidas identifies a plethora of athletes, artists and universities that it has branded with its Three-Stripe Mark (some of my favorites include DeMarco Murray, Von Miller, Aaron Rodgers, Kris Bryant, Dustin Johnson, Pharrell Williams and Katy Perry).  adidas asserts, among other things, that Juicy Couture intentionally designed and manufactured its competing three-striped apparel “to mislead and deceive consumers into believing” that it was made by adidas.  adidas further contends that Juicy Couture’s use of the Three-Stripe Mark “is likely to deceive, confuse, and mislead actual and prospective purchasers before, during, and after purchase into believing that the Infringing Apparel is manufactured or authorized by, or in some manner associated with, adidas, which it is not.”

This is not the first time that adidas has taken initiative to protect its Three-Stripe Mark.  In 2015 and 2016, adidas filed similar trademark infringement suits against Ecco, Skechers, Mark Jacobs, and Forever 21, among others.   adidas has also targeted Nike, Steven Madden, Payless, Target, and Nordstrom for infringement of the Three-Stripe Mark in the past.

If the case proceeds to trial, adidas will likely show the similarity between its products and those offered by Juicy Couture.  For its part, Juicy Couture will need to establish that no customers would be confused by its use of a three-strip design on apparel.  In determining whether consumers are likely to be confused, courts typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; and (7) the defendant’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

[1] According to the complaint, adidas does not capitalize the “a” in its legal name.  Also, the proper pronunciation is AH-dee-das, with the emphasis on the first syllable.  (Americans have traditionally pronounced the name with the emphasis on the second syllable “ah-DEE-das”).

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