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Counting By Numbers, or Stripes? A Likelihood of Confusion Tale.

Posted in Branding, Domain Names, Infringement, Law Suits, Marketing, Trademarks

    

When it comes to scope of rights and trademark enforcement, as a trademark type, it’s hard not to admire Adidas’ success in preventing the use of two, three, and four stripes, when its long-standing federally-registered design mark consists of three stripes.

At least in the U.S., Adidas appears to have gained a one stripe buffer on either side of its powerful three stripe iconic symbol, so advocates for Adidas might say 2, 3, or 4 stripes, and you’re out (of luck anyway).

(For some great coverage on Adidas’ recent trademark enforcement activities, check out Seattle Trademark Lawyer).

How can it be then (within the hospitality industry), that no analogous buffer exists between 4&5, Motel 6, Big 7 MotelBel-Air Motel 7, Big 7 Motel (Chula Vista, California), Big 7 Motel (Valdosta, Georgia), Magnificent Seven, Seven Days, Super 8, and National 9 Inn, with them all happily coexisting (apparently) without any likelihood of confusion?

(Also, how can it be that Super 8 (apparently) doesn’t control the Super8Inn.com domain?)

Perhaps it all comes down to what your trademark strength and likelihood of confusion analysis happens to count, stripes or numbers . . . .

  • Howard

    I used to work for K-Swiss, which owns the rights to 5 stripes, and they were highly protective of this – especially with Adidas and Asics and anyone else in the footwear business who used stripes. It’s such an identifiable part of the brand, and it’s sometimes seen very quickly and at a distance, that there can be many cases of “mistaken identity” if someone gets too close to your design.
    Maybe I’m biased from my time in the business, but I agree with Adidas’ stance on being very vigilant about protecting their stripes.

  • My Point of View

    In my opinion this could be because people are more likely to get confused between similar images. Which is why we have those ever popular “spot the difference between the two images” brain teasers. However in our minds the numbers 7,8 and 9 are very distinct and people are less likely to get confused among them.

  • http://www.linkedin.com/in/randallhull Randall Hull

    From my perspective as a brand guy, Adidas created a strong, unique, international brand and has aggressively protected its trade dress. This doesn’t appear to be the case with these hospitality businesses. I imagine things would be quite different if any of them was owned by a corporation such as Starwood or InterContinental. Hmmm….W6 or H8, perhaps?

  • http://www.linkedin.com/pub/philip-furgang/3/b7b/75 Philip Furgang

    I hate to be a wet blanket (really), but one reason may be that these trademark owners never fought for their marks. I did a quick WestLaw search using (“motel 6″ “big 7″ “super 8″ “national 9″) /10 trademark) and found 6 cases. One was a sign case which, in turn, cited an unreported Motel 6 sign case (i.e., usage of a sign as against local government restrictions). The remainder were Super 8′s fights with its franchisees.
    It goes without saying (but not to a laymen) that there is no trademark cop. Fight for it or lose it.
    Yet another reason why these motel companies did not go at one another, may have something to do with Motel 6′s origins. I’m not sure, but I think Motel 6 was first with its marketing concept. When it did appear in the marketplace it advertised that you could stay in their motel for $6 per night. Hmmm, “Motel” “6″ for the price. Merely descriptive? Probably then but not now.

  • http://www.linkedin.com/in/anthonyshore Anthony Shore

    I’m guessing that Adidas has always been aggressively protective of their mark, whereas the hotel that first used a number allowed others to do the same. The numeric hotel names have become ever-diluted over time.
    Peaceful coexistence can be a bitch.

  • http://www.linkedin.com/pub/ed-roach/3/197/471 Ed Roach

    Because stripes have become an icon for adidas unlike the other examples which are numerals as part of the unique name.

  • http://www.linkedin.com/pub/tom-casagrande/4/678/998 Tom Casagrande

    As I have understood it for several years, adidas goes after 2- and 4-stripers when the context in which the stripes are used creates an optical illuion of sorts where it’s possible to see the borders of, and interstices between, the stripes as the stripes themselves. Kind of like that drawing that, depending on how you look at it, is either the outline of a lamp or the silhouette of two faces. So on that basis it’s really not about the “strength” of three stripes creating a zone of protection that keeps away 2 and 4. Of course, maybe adidas is getting a bit bolder and actually using the “strength” theory now.

  • http://www.linkedin.com/in/nielackermann Niel Ackermann

    A very long time ago, before they got bolder and under the old (1938) UK trade mark law, adidas came after a client of mine who used 4 stripes on a tracksuit. The adidas argument was that if you have four stripes IIII , you in fact have three stripes between the four stripes.
    I fobbed them off with the argument that my client was not using the stripes as a trade mark but as decoration. We never heard from them again. Under the current Trade Marks Act, this argument may not work as well.

  • http://www.linkedin.com/in/lesliedechernatony Leslie de Chernatony

    Interesting comment. From a perception perspective there may be a view amongs consumers that 2, 3 and 4 stripes are similar, particularly when in motion. A point to be addressed though is the extent to which the brand owner has consistently invested in their brand, so the logo is not just a recognition device, but this acts as a basis for rapidly recalling from memory unique benefits of the brand.

  • http://www.linkedin.com/in/elmarko Mark Gross

    Hey Stephen,
    Interesting Question. I posit:
    Adidas competes in a more concentrated venue. Shelves in stores trump the winding ribbons of highways. Confusion is more likely where there is less spread between the brand presentation to its market.
    Adidas is more mass market. Do motels 6,7 8 and 9 (and I remember when Motel 8 meant $8 a night) go head to head much? I suspect these are more impulse buy / Convenience buy type purchases opposed to reserve in advance, destination purchase.

  • http://www.linkedin.com/in/randywerner Randy Werner

    My thoughts: With a shoe branding is almost entirely limited to visual cues (for example with trucks, Jeep and the seven opening grill) as apposed to verbal (name). The “visual” signature is the set of stripes. It would be interesting to know what challenges Nike, Puma, etc. have met and won. It would be an argument about a consumers’ ability to distinguish between three and two stripes, or three and four stripes. Or, between swoops and similar marks.
    Another thought I have is that the motel names were originated to increase distinction between different hotels, motels and inns. Were the names created to link motel 6 with a highway #6 and therefore any additional use of the number 6 would be blurring the line? Were they naming like the banks were, with 1st, 2nd, etc.? Maybe a better way to look at the shoe vs. lodging problem is to look at visual cues that places of lodging have been able to protect, for example the shape of a building.

  • http://www.linkedin.com/in/fredheld Fred Held

    Randy is 100% right on. I had a problem with designer jeans pocket designs. Levis V shape can not even be buried in additional stitching. A great question.

  • fabio pasquetto

    1) ADIDAS 3 STRIPES is considered a “famous trademark” , the 3 stripes have gone under an extensive use for years and years in many sport competitions and counts on a large number of customers, so and they gained a public awareness even separately from adidas name. The protection is ensure throught and thanks to the use as “3 stripes” will recall ADIDAS , like the”swoosh”Nike, even if the product name does not appear. Adidas is completely aware of that and is going on defending its signs with a “reactive” policy.
    For the cases regarding numbers, the ground of effective enforceability (protections) is basically very similar…..:)

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