New York: When Tesla Inc. sought to register a trademark for the groundbreaking Model 3 electric car, it found the application with the US Patent and Trademark Office contested by an unlikely party: An athletic wear company hellbent on defending its three stripes.
Adidas said the Tesla logo, a trio of horizontal bars, would cause confusion because the carmaker planned to emblazon it on apparel, something Adidas had been doing with its own logo for years. Tesla withdrew its application, though by that time it had already changed its bars to a numeric 3.
Scuffles over trademarks are common in the apparel and footwear industries, but Adidas has taken a particularly strong defensive posture. Most battles, like the one with Tesla, are concluded without litigation, but Adidas AG and its US subsidiary have filed almost 50 trademark lawsuits over the past five years, naming as defendants rival labels such as Nike Inc., Skechers, and even Marc Jacobs. Last month, Adidas went after long-time competitor Puma over a soccer cleat with four stripes running down the side. That’s four, not three.
Three parallel stripes adorn the Adidas logo, decorate the sides of shoes, and run down the sleeves of its track jackets. The design rose to prominence in the 1950s after company founder Adi Dassler began using it on shoes. Now, the ubiquitous mark is found on the side of most Adidas products.
Almost everything the German company makes has that embellishment, and the company wages a constant war to snuff out anyone who dares use similar stripes.
“It can appear in so many different ways, even accidentally with someone having no intention of trading off of Adidas’s mark,” said Craig Whitney, a trademark lawyer at Frankfurt Kurnit Klein and Selz. “They’ve been put in a position where they have to police it even harder.”
Unlike the Nike Swoosh or Louis Vuitton’s famous LV print, the Adidas mark is so simple that it can lose its strength if there are too many similar patterns out there, said Whitney. The more stripe designs on the market, the less distinctive Adidas becomes.
No, Adidas doesn’t own the right to use any and all stripes, but it has trademarks for using them in certain ways. In footwear, the company holds trademarks to use specific three-stripe designs on everything from sneakers to roller skates to ballet slippers. Same goes for the stripes on the sleeves of track jackets or down the sides of tank tops.
At least one retailer has had it with these lawsuits. In a complaint filed in Los Angeles federal court this month, fast-fashion seller Forever 21 alleged that Adidas has become too aggressive in its litigation strategy. Adidas has sued over clothing and shoes with two stripes or four stripes, patterns with different colours, and types of clothing it doesn’t regularly make, according to the lawsuit. Adidas declined to comment on the claims or intellectual property issues. It has yet to file a response in the Forever 21 suit.
Los Angeles-based Forever 21 was spurred into action when Adidas sent a letter last month threatening to sue over the use of stripes on six garments. The companies have a history: In 2015, Adidas sued Forever 21 over Teenage Mutant Ninja Turtles and Looney Tunes clothing that had three stripes going down the sleeves. In that complaint, Adidas said the clothes deceived the public and tarnished the Adidas mark. (The lawsuit was eventually dropped.)
“Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 has decided that enough is enough,” Forever 21 said in suit against Adidas. “Adidas should not be allowed to claim that Adidas, alone, has a monopoly on all striped clothing.”
Oftentimes, Whitney said, labels count on companies to back down over trademark issues, since they usually don’t think a legal war is worth the trouble.
Not this time. Bloomberg