Adidas – stylized as adidas – is a name that comes up regularly in matters of vigilant trademark policing. Over the last few years, it has sued several other brands on claims of copying its famous three-stripe design, including Skechers, Forever 21 and Marc Jacobs. Now, it is trying to stop Futbol Club Barcelona, a professional soccer team based in Spain, from registering a stripe-design mark with the United States Patent and Trademark Office (USPTO). The application was filed last May for a mark of seven stripes featuring alternating blue and garnet stripes, for use with paper/stationery goods, clothing/shoes, games/sports-related products, and more. It was filed under the Madrid Protocol, which extends trademark protection in the U.S. to international registrations made through the World Intellectual Property Organization.
This October, adidas filed a Notice of Opposition with the USPTO’s Trademark Trial and Appeal Board, following the May publication of the application in the Official Gazette. It cited its grounds as “likelihood of confusion” and “dilution by blurring.” adidas owns the registrations to more than twenty trademarks, some of which date back to the early 90s, and the company included several of these registrations in the Notice of Opposition. Each of the exhibits featured the three-stripe design on footwear and clothing.
In the filing, adidas said that it has been using the well-recognized design since 1952 on footwear and since 1967 on apparel, and that it had a prominent place in soccer: “Three-Stripe Mark is particularly well known among professional soccer players, fans and consumers of soccer apparel. For example, adidas sponsors internationally famous soccer players, including David Beckham, Lionel Messi, Paul Pogba, Mesut Ozil and Gareth Bale. In addition to its extensive sponsorship and advertising, adidas has an extensive collection of soccer-related footwear, apparel and sporting goods, which prominently feature the Three-Stripe Mark.”
The company went on to explain that its revenues were in the billions globally, which included hundreds of millions from the U.S. It had also spent millions on promotion and marketing of its products, which it said had helped it build up and currently own “extremely valuable goodwill.” adidas stated that the public now comes to associate the three-stripe design with it alone.
adidas believed that the classes of goods in Futbol Club Barcelona’s application are identical or similar to what it already sells using its three-stripe mark, and that Futbol Club Barcelona’s mark “so closely resembles the Three-Stripe Mark that the use of Applicant’s Mark is likely to cause confusion, deception, or mistake as to the affiliation, connection, or association of Applicant with adidas, or the origin, sponsorship, or approval of Applicant’s goods by adidas.” Furthermore, adidas believed that if Futbol Club Barcelona were allowed to register this mark, it would “dilute the distinctiveness of the Three-Stripe Mark by eroding consumers’ exclusive identification of the Three-Stripe Mark with adidas, and otherwise lessening the capacity of the Three-Stripe Mark to identify and distinguish the goods of adidas.”
Where creative minds come together
The company asked the Trademark Trial and Appeal Board to deny the registration for the similar or identical classes.
For more information on the trademark application process, please contact us here at the Fried Firm.
