Fame of adidas 3-Stripes Mark Yields Section 2(d) Summary Judgment

The Board entered judgment summarily in this opposition to registration of the mark shown below left, for "Athletic footwear; Bowling shoes; Footwear; Footwear for track and field athletics; Golf shoes; Headwear; Jackets; Pants; Running shoes; Shirts." The Board found confusion likely with the registered mark shown below right, for "footwear." The fame of the adidas 3-stripes mark, acknowledged by applicant, was a key to victory. In other words, 3-stripes and you're out! adidas AG and adidas America, Inc. v. Etonic Holdings, LLC, 121 USPQ2d 1188 (TTAB December 22, 2016) [not precedential].

Opposers relied on several registrations as well as on common law rights, but the Board focused on the registered mark shown above, which it found to be the closest of the registered marks. Standing and priority were not in issue, nor was there any dispute that the involved goods are in part identical. The Board must presume that these identical goods are marketed in the same channels of trade to the same classes of consumers. The applicant and registration have no limitations as to cost of the goods, and so they include relatively inexpensive footwear bought on impulse.

As we know, fame plays "a dominant role" in the du Pont analysis. "A famous mark has extensive public recognition and renown and enjoys a broad scope of protection or exclusivity of use."

The evidence established that the 3-stripes mark has been in use on footwear since 1952, that products bearing the mark are sold in more than 300 retailers, that opposers sold billions of dollars worth of footwear in the period 2006-2013, the vast majority of which bore the 3-stripes mark. Advertising expenditures have been very substantial.

Opposers sponsor various sporting events, including the World Cup, and the Boston Marathon. They outfit the NBA as well as various college sports teams. Such stars as Justin Bieber, Kay Perry, and David Beckham have been featured in advertising. The mark has been noted in media coverage and is co-branded with other high profile brands. Opposers have vigorously enforced their rights in the mark.

The Board therefore found no genuine dispute that the 3-stripes mark is famous for opposer's footwear and is entitled to a broad scope of protection.

As to the marks, the Board noted that applicant's mark may appear anywhere on its footwear, including the sides thereof. The three stripes in applicant's mark may be displayed at the same direction and angle as the adidas mark. Because two of the stripes in applicant's mark are not connected to the perpendicular element, "the overall impression of Applicant's mark is one of three stripes, rather than the letter 'E.' The perpendicular element "does not distinguish the parties' respective marks in a significant manner."

The Board found no genuine dispute that the overall commercial impressions created by the marks are highly similar.

The Board found that the relevant du Pont factors favor opposers, and no genuine dispute of material fact remained for trial. Therefore it granted opposers' motion for summary judgment under Section 2(d). The Board declined to reach opposers' dilution claim, lack of bona fide intent, and contract claims.

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TTABlog comment: If the goods are in part identical, what's the need for a dilution claim? The test for similarity of the marks is the same under dilution and Section 2(d) anyway.

Text Copyright John L. Welch 2017.