06 Feb Adidas Loses ‘3-Stripe’ Trademark Trial: The Importance Of Trademarking.
What if one day a lawyer shows up to inform you that a lawsuit has been filed against your brand? A brand identity that you have been working on since two to five years ago. Later on, you learn that it is because another company in your industry uses a similar name or logo. They might have problems with competition or confusion for their customers if they don’t file a case to make you stop using that name. The logical thing to do at that moment would be to get a lawyer if you do not already have one.
Imagine that after the whole case, the court’s order is that you should change your brand name. You have invested so much time and energy into building the brand to its current status, not forgetting the thousands of ringgit you have spent on your brand identity and branding system. Now that kind of pain also comes with having to start everything all over again with a new name. That could very well happen to you someday if you do not trademark your brand.
What is a trademark?
A trademark is a form of intellectual property that consists of a recognisable symbol, design, or expression used to identify goods or services from a specific source that sets them apart from those offered by other parties. The owner of a trademark may be an individual, a company, or another legal body. A trademark could be found on the product itself, on a label, a voucher, or a box.
Background of the case
Adidas started using its “three-quadrilaterals” emblem on footwear in 1952 and has since aggressively defended its trademark rights to it. The business has 24 federal trademark registrations for stripes in various forms, which cover a variety of clothing. Adidas claimed that Thom Browne marketed “essentially the same” activewear, which could have confused customers who saw the items on social media, in shop racks, or worn by other people. However, Thom Browne’s attorney, Robert Maldonado of Wolf Greenfield & Sacks PC, told the jury that Thom Browne, which charges $650 or more for sweatpants and compression shirts, does not compete with Adidas since the two companies operate in “different worlds.“
Designer Thom Browne wore his signature look of suit shorts and a sock bearing his four-stripe design, to court in New York.
Maldonado further commented that the case isn’t about confusion or competition, it’s whether Adidas can own all stripes. Thom Browne’s counterclaims, which argued that Adidas’ mark should be revoked because it is “aesthetically functional” and “undermines” the ability of its rivals to enter new markets, were rejected by US District Judge Jed S. Rakoff in October, and both parties’ requests for pretrial victories were denied in December. A legal defence known as laches was used by Thom Browne in earlier stages of the case to argue that Adidas took an unreasonable amount of time to file the lawsuit.
In 2021, Adidas filed a lawsuit against Thom Browne in the Southern District of New York’s US District Court, claiming that the luxury retailer violated its trademarks by entering the athletic industry with shoes, shirts, and pants that had two, three, and four parallel stripes. Beginning in the 2018 season, Thom Browne collaborated with F.C. Barcelona, a European soccer team.
Adidas attorney, Charlie Henn of Kilpatrick Townsend & Stockton LLP, said Thom Browne had pushed “right into Adidas’ territory. According to data provided by Adidas, about 30% of poll respondents thought that Adidas and Thom Browne were somehow connected. However, the claim of Thom Browne Inc.’s unauthorised use of the “three-stripe” emblem by the German sportswear giant failed to convince the federal jury in Manhattan.
Thom Browne’s socks on the left and the signature Adidas 3-stripe logo socks on the right.
Adidas has requested a total of $7.8 million. Nevertheless, on that faithful Thursday, the jury did not find any trademark infringement or dilution. During the closing arguments, Maldonado stated that Adidas does not own the stripes. The idea that his business wants to capitalise on Adidas’ brand outraged Thom Browne, who was present in court, according to Maldonado.
Maldonado reiterated that the idea that Thom Browne wants to be a sportswear athletic company is just not true. The lawyer claimed that the case represented a significant victory for fashion designers after the ruling. In a statement, Adidas expressed its disappointment with the ruling and promised to continue to vigilantly enforce their intellectual property, including submitting any necessary appeals.
Importance of Trademarking
As we saw from above, there are many brands out there that are into all sorts of businesses. Yet, the majority lack a distinctive method through which their target market can consistently recognise their products. Knowing why it is important to trademark your brand is almost the same as understanding why your brand should be unique. Here are a few reasons to trademark your business.
- A trademark can safeguard your company from legal action from those parties who make use of identical assets. You cannot trademark anything that is not original to you, so make sure your product or service has a distinct quality that customers cannot get from a competitor.
- It helps you establish a reputation in your field by demonstrating to others that you are dependable and credible. This means that it will be difficult for any other brand to convince customers to buy their version of your product or service because they would not have the same name recognition as yours.
- Using a trademark gives you more power than simply using a generic phrase, which is beneficial when submitting legal documents like contracts.
Nobody loves to go to court to defend their corporate name, yet brands all around the world have to do it all the time. For instance, the French fashion label Louis Vuitton sued Louis Vuiton Dak, a Korean fast-food outlet, in 2016. With their name being too similar to the designer’s brand, the court ordered a name change. Louis Vuitton has the advantage in this situation because they registered their company name as a trademark earlier.
Louis Vuiton Dak in Seoul offended Louis Vuitton by taking its name and monogram pattern to sell chicken.
Simple Ways To Trademark Your Brand
After witnessing what different brands have gone through just to keep a name they have branded and been using, there are ways to simplify branding. When a client selects an agency to do their branding, it is their responsibility to ensure that the proposed brand name and identity are unique and will not cause a trademark nightmare for our clients in the future.
Before presenting name ideas to clients, it is important to do a quick trademark search and check domain availability. For this step, free websites such as trademarkia.com are used. Following that research, a name that will not cause any issues for the client will be chosen. Before starting any designs, a naming presentation with some preview visualisations will be carried out for the client to visually understand the proposed name concepts.
Then, it is time to design a logo. As a final step, a trusted service will be used to start the registration process for both the name and the logo. It is recommended to work with a lawyer on this step of the process. By combining both brand assets, you will save thousands and have a peace of mind to continue investing in your brand.
A trademark can help set your goods and services apart from those of your rivals and can also be used as a defence in court against infringement. Although submitting a trademark application might be difficult and time-consuming, it is important to protect your brand identity. Intellect is here to help you with a clear system of brand trademarking so that you can be at ease knowing that your brand name and logo are yours to keep.