I just got back from my yearly trip to hang out with creative people and learn about branding and design at FUSE. This year we traveled to the brand capital New York City.

On Monday, I participated in the FUSE Trenzwalk through Chelsea, Greenwich Village and the Meatpacking District in New York City. Earlier this week, you may have seen Steve Baird’s post inspired by this walk, What You Need to Un-Suspend a Trademark.

There were two places in Chelsea Market that caught my eye and have trademark registrations:

  1. KIKKERLAND®, and
  2. FAT WITCH®.

The KIKKERLAND® store sells various products such as personal grooming devices, sports spectacles, massage apparatus, electric lamps, electric light fixtures, chronometric instruments, stationery, furniture, household utensils, kitchen utensils, and briefcases.

The FAT WITCH® brand is associated with brownies, cookbooks and recipe cards. Although the brand name itself might not inspire consumers to come in to consume brownies and become “fat,” the cute design of the witch below does invite people into the store.

Day two of FUSE was devoted to presentations at the DREAM hotel. I attended the presentation entitled “The Augmented Body – Sustainable Fashion Futures for a Connected World,” by Dr. Amanda Parkes. We learned about a company that was using waste from oranges to make “Orange Fiber,” which is a sustainable silk fabric. The company partnered with famous designer Salvatore Ferragamo® for his Capsule Collection.

Adidas is also getting on the sustainability train by selling shoes and swimsuits made from ocean plastic. Specifically, the footwear giant partnered with the non-profit organization Parlay for the Oceans. The organization seeks to raise awareness about the precarious state of the world’s oceans and to work on projects to help protect and conserve the oceans.

ZOA™ was another sustainable fabric discussed in the presentation. The brand features biofabricated leather products made without animals. Modern Meadow filed a trademark application for the ZOA mark in connection with various bioleather products.

Has anyone been involved with the development of sustainable products, or bought any products made from them?

Normally when we talk about stripes trademarks , we’re talking about iconic sportswear brand adidas. An avid litigant with respect to use of “three stripe” designs on footwear and clothing, adidas is a regular feature here at DuetsBlog, where we have discussed disputes with lululemon, Puma, and retail store Forever 21. But today we’re talking about a different three stripe brand, the blue-red-blue and green-red-green three stripe designs featured by luxury brand Gucci. Not everything is new though. Gucci’s foil in this dispute is no stranger to stripe-infringement claims, as our friend Forever 21 makes another appearance.

Over the past year, Gucci sent cease and desist letters to Forever 21 regarding the sale of clothing and accessories featuring a familiar striped pattern. Following an exchange of letters, Forever 21 struck first, filing a complaint requesting declaratory judgment that its sale of the products does not infringe Gucci’s rights, and requesting that the court cancel Gucci’s registrations on the grounds of lack of secondary meaning and/or genericness. In its answer, Gucci asserted claims of trademark infringement, trademark dilution, and unfair competition. Excerpts from Gucci’s answer displaying the clothing at issue are shown below (with additional examples here and here). 

 

In its answer, Gucci only addressed Forever 21’s non-infringement count. Prior to filing the answer, Gucci filed a Motion to Dismiss all the claims related to cancellation of Gucci’s registrations. On Monday November 6, the District Court issued an order granting the motion, providing Forever 21 with 10 days to file an amended complaint.  In the order, the court suggests that Forever 21 may have an uphill battle in pursuing these claims, stating

[T]he court is skeptical that plaintiff has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism.

So while I’d love to get into the substance of whether Forever 21 has a chance at cancelling these “three-stripe” registrations, we’ll have to see whether Forever 21 is able to craft an amended complaint to overcome the court’s concerns. In the interim, I’m left considering Gucci’s three stripe marks alongside adidas’ three stripe marks. In reviewing each parties’ registrations, an interesting detail emerges. Both parties own registrations for stripe designs associated with clothing, but that doesn’t mean both parties have the same type of registered rights.

For adidas, it registered its stripes as trade dress for its products. For example, Reg. No. 3,029,127 describes the registered mark as “three parallel stripes running along the sleeve of a shirt, t-shirt, sweatshirt, jacket or coat.” The drawing of the mark is shown below.

Clearly, adidas’ registrations is specifically for a stripe patterned applied to jackets.

Gucci’s registered rights? Not so much. Based on the registrations identified in Gucci’s answer and counterclaim, none of Gucci’s registrations cover trade dress. All of the registrations instead appear to be for an image of stripes. The descriptions for Gucci’s marks are all similar to Reg. No. 4,379,039, which describes the mark as “a stripe containing three distinct bands of color with a red band in the middle of two green band.” The drawing for the registrations is simply a square with three stripes.

Does Gucci’s failure to register its mark as trade dress affect Forever 21’s ability to cancel the registrations for these design logos? Normally use as a trademark is on a tag, label, on the pocket, or emblazoned across the shirt. If Gucci’s actual use of the registered mark is limited solely to the trade dress along the bottom or cuffs of jackets, does it open up any potential claims for cancellation based on non-use? Does Gucci’s failure to register its mark as trade dress affect Gucci’s ability to assert that Forever 21 is infringing a federally registered trademark? I guess we’ll find out whether Forever 21 wades into these waters when (or if) it files its amended complaint. Stay tuned.

 

With the growing popularity of e-sports (multiplayer video-game sports competitions, often played by professional gamers for spectators–also stylized “eSports”), I’ve seen an increasing number of trademark disputes not only between video-game companies, but also between video-game companies and other non-electronics businesses selling physical goods or services.  It is interesting to observe the arguments regarding bridging the “virtual gap” between the physical world and the digitized world, in terms of whether consumers would actually perceive relatedness and confusion.

One example, and a timely update to one of my recent posts, was the potential dispute between Major League Baseball Properties, Inc. (“MLB”) and Blizzard Entertainment, regarding Blizzard’s Overwatch game. The logo used for the Overwatch game had a two-tone background with a silhouette of a figure, arguable with some similarities to MLB’s well-known blue-and-white logo with a white silhouette of a baseball player. As predicted, after filing a request for extension of time to oppose, MLB never followed through with an opposition proceeding. And it seems that MLB didn’t convince Blizzard to make any changes, as the Overwatch League mark appears the same–so a positive outcome for Overwatch there. It seems MLB wasn’t concerned enough about potential confusion in light of the gap between the parties’ goods and services; although, in my view, the lack of concern was probably influenced by the significant dissimilarities in the marks.

Another example recently in the news is a new enforcement action by Adidas (or as their marketing folks prefer, adidas). adidas is often in the news regarding its aggressive enforcement measures, as we’ve blogged about on numerous occasions (such as hereherehere, and here).

This one is interesting as, unlike many examples we’ve blogged about, the enforcement target is not another shoe or clothing company, using a physical similar design with three (or two, or four) stripes. Rather, the target here is the Turner ELEAGUE, which offers popular e-sports competitions.

The ELEAGUE design logo includes an “E” design consisting of three lines, that (arguably) appears similar to the adidas three-stripe design. Turner has applied to register its mark in connection with various types of digital media and software in the field of electronic sports (Application No. 87065837), as well as various types of marketing promotion services, retail store services featuring “clothing,” and “clothing for use in online virtual worlds” (Application No. 87065846). See the “E” design mark below applied-for by Turner, as well as the mark next to the word “LEAGUE” as it typically appears on Turner’s website.

A couple weeks ago, adidas filed an extensive Notice of Opposition (over 100 pages) against registration of Turner’s applications.  The primary goods offered by adidas, and identified in its trademark registrations, are clothing, apparel, footwear, and physical sporting goods. Nevertheless, as argued in the Notice of Opposition, adidas also licenses its mark to be used in video games (e.g., on virtual players’ clothing, and in virtual signs and sports fields), and sponsors electronic sporting events and teams, all of which is helpful for the relatedness argument.  In addition, to the extent that Turner’s ELEAGUE application seems to also cover real-world “clothing,” rather than only  “virtual” clothing, adidas has a stronger case for relatedness. In industry news there have been some skeptical reactions to the dispute, but to be fair, the Notice of Opposition makes some decent relatedness arguments, so we’ll see how this one turns out. No reaction yet from Turner, as the Answer to the Notice of Opposition is not due until November 19.  I’ll be watching this one with interest–stay tuned for updates.

 

 

We’ve written a lot over the years about Adidas’ three-stripe non-verbal, non-traditional trademark. Turns out, Adidas actually owns a federally-registered trademark for the verbal, spelled-out, look-for advertising equivalent too, called: The Brand With The 3 Stripes®.

We haven’t until now probed the meaning of “stripe” though: “A long narrow band or strip, typically of the same width throughout its length, differing in color or texture from the surface on either side of it.” Synonyms include, lines, bands, belts and bars, among others.

See where I’m headed? What is a reasonable scope of rights for this likely famous mark?

Interestingly, whether by strategic design or unintentional lack of consistency, Adidas has called versions of its three-stripe device mark at the USPTO, three parallel bands, three diagonal quadrilaterals, and three slanted quadrilateral bars too.

 

 

 

Whatever the verbiage though, the first time I encountered the competing Lululemon brand, my eyes were drawn to the consistent application of three parallel lines positioned on the upper chest/shoulder area of the shirt, leaving me to wonder why Adidas tolerates this non-functional marking and symbol, especially given its heavy enforcement appetite:

Turns out, Adidas spoke up a few years back when Lululemon applied to federally register a non-traditional trademark described as “three parallel bars applied to the front left-hand seam of the upper chest/shoulder area of the shirt, t-shirt, sweatshirt, sweater, tank-top or jacket,” as shown in the drawing below:

 

It’s curious that Lululemon chose to call the three parallel lines, “bands,” (Adidas verbiage) especially since during prosecution it described a “Three Stitch Design mark,” which seems more accurate, yet after convincing the USPTO that Lululemon had a distinctive non-traditional mark, Adidas came knocking and opposed anyway.

Having said that, Adidas knocked only so hard, as its mission appears to have been focused on preventing registration only, not use, since the use persists several years later. Wouldn’t you enjoy the opportunity to view the apparent settlement and coexistence agreement?

Had Adidas not opposed, or had Lululemon been able to defend the opposition, perhaps Lulu would be in a stronger position to do something about these Reef shoes that I initially mistook for an extension of the Lululemon brand (until spending more time handling them):

 

What do you think, do you suppose Reef shoes felt more comfortable adopting the three stitch device on shoes because Lulu has no non-traditional trademark registration and would have to establish non-functionality and common law rights to enforce, or perhaps, because Lulu has apparently stopped selling footwear and shoes?

Do you suppose that Reef shoes has focused on the registration of other non-traditional marks and refrained from seeking federal registration of its three stitch design because it doesn’t want to hear from Adidas?

Is it fair to say that the Adidas’ stripes, bands, and quadrilaterals don’t cast a shadow on stitches, at least when it comes to use, as opposed to registration?

Hello, B&B Hardware, and what do you have to say for yourself?

We write a lot here about the scope and strength of trademark rights and how that determination is often intertwined to making intelligent likelihood of confusion determinations.

Does “April Madness” fall within the NCAA’s scope of trademark rights for “March Madness“?

Likelihood of confusion? Is “March Madness” a famous mark deserving protection from dilution?

How about “Final 3”? Does that fall within the NCAA’s scope of trademark rights in “Final 4”?

These are some of the questions that will be answered in NCAA v. Kizzang LLC, filed by the NCAA in Indiana federal district court last week, a PDF of the complaint is here.

Yesterday we wrote about a 1929 decision determining that the letter “C” fell within the scope of rights of a trademark containing the letter “B”.

Now, the NCAA is asking for a mark containing the month “April” to fall within the scope of rights in a mark containing the month “March.”

Doesn’t this remind you a little bit of our prior discussions of Adidas and its “one stripe buffer” — enjoying protection of its three stripe design against two and four stripes?

Hat tip to Dan.

Trademark bullying allegations are in the news again.

Not only is Forever 21 calling Adidas a trademark bully for asserting rights in the three stripe design mark, it is asking a federal court to say it has not done anything wrong and award it fees:

“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 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”

This is not their first rodeo together, see here and here. It isn’t our first rodeo discussing Adidas either, see here, here, here, and here.

For more on the subject of trademark bullying, please consider attending another Strafford live webinar a week from today, March 14 at noon CST, details here.

First three who comment earn a free ticket to attend, we hope you join us.

UPDATE: Looks like there is going to be a fight about where the trademark fight actually goes forward, as KOIN6 reports, here.

We’ve written on several occasions (for example, here, here, and here) about the aggressive policing by Adidas of its well-known “three-stripe” mark for shoes, including attempts to enforce its mark against other two-stripe or four-stripe designs (with some success).

Adidas is at it again, with a new lawsuit asserting trademark infringement based on Puma’s four-stripe design for a soccer cleat. The complaint was filed on Friday last week in the U.S. District Court, District of Oregon. Adidas also filed a motion for a preliminary injunction on the same day.

Puma is a competitor and longtime rival of Adidas. The two companies are headquartered within walking distance of each other, in the German town of Herzogenaurach. Adidas and Puma were founded decades ago by brothers Adi Dassler and Rudolph Dassler, respectively, which has led to fierce and sometimes bitter competition between the two companies over the years. In 2013, Forbes ranked the Adidas v. Puma rivalry as one of the greatest business rivalries of all time.

Below is Puma’s soccer cleat that is the subject of the infringement lawsuit filed by Adidas:

puma

And here is the three-stripe design on one of the Adidas soccer cleats:

adidas-puma

What do you think? Would consumers be likely to confuse the Puma shoe for an Adidas shoe? This dispute is in its early stages, as Adidas just filed its complaint last week, so it remains to be seen how Puma will respond. Stay tuned for further updates.

Maybe I haven’t quite accepted the fact that the US Open and New York Fashion Week are over and September almost is too, but stories on tennis and fashion always get my attention, especially when they include a little intellectual property infringement flair.

The Stan Smith shoe is a legendary shoe design from Adidas named after the US tennis player (and US Open Champion) who famously wore them in the 1970s.

ADIDASStanSmith

Last week, Adidas sued Skechers over claims that the Skechers Onix infringed Adidas’ trademark rights in its Stan Smith shoe.  Here is a photograph of the Skechers Onix:SkechersOnix

Notice any similarities?  Actually, perhaps the better question is – do you notice any differences?  Sure, the shape of the toe is a little different, at least in the photos the toungue looks a little different, the number of rivets for the shoelace also differs, and perhaps the most obvious distinction – the shoe has five stripes versus the iconic 3-stripe design on the Adidas version.  But don’t let the number of stripes or their angle lead you to a conclusion that that’s a sufficient difference, it certainly hasn’t stopped Adidas before (see here and here).  So do you think Skechers has a problem here?

According to a Law360 article on the subject, this isn’t the first challenge from Adidas on the striping issue.  Adidas has been prolific in protecting its three-stripe from use by other shoe manufactures and designers, but with Skechers the parties signed a settlement agreement in 1995 and have a pattern of reaching additional confidential agreements to handle similar claims over the past several years.  Maybe what forced their toe over the line here is that Skechers appeared to be using “adidas Originals” and “Stan Smith” as keywords  (although when I tried to search today, neither of those phrases brought me to any shoes on the Skechers site and keyword advertising rulings haven’t exactly gone in brand owners’ favor).   Or maybe it’s that Skechers last year sued Adidas-owned Reebok for patent infringement.

But Skechers isn’t the only one out there making white leather tennis court shoes with perforations and colored heel tabs.  What about this pair from Nike, with its perforated swoosh and additional stitching line?

Nikeracquette

Or this Isabel Marant sneaker?  I got a kick out of this comparison (and yes, pun intended there), where the $80 Adidas shoe is considered the   “save” over the $400 “splurge” designer version.

SplurgeMarantAdidas

 

Or this from Saint Laurent?

SaintLaurent Do any of these look like they should get the same attention from Adidas that Skechers is getting?

– Draeke Weseman, Weseman Law Office, PLLC

On Monday, the University of Oregon and The Ohio State University will play in college football’s first College Football Playoff championship game. DuetsBlog has previously covered the trademark issues surrounding BCS Properties’ attempt to register College Football Playoff as a trademark in connection with college football playoff games here. Even if College Football Playoff ultimately fails as a trademark, Monday’s championship game will be awash in trademarks and intellectual property. Consider this your DuetsBlog guide to the game.

UNIVERSITY OF OREGON

We’ll start with Oregon, and begin with a little history. In 1859, Congress required Oregon to set aside land for a state university as a condition for admittance into the Union. Oregon chose land in Eugene, and, in the mid-1870s, began building what is today the University of Oregon®, or Oregon®, or just UO®. Although all eyes will be on the Oregon Ducks’® football team on Monday night, Eugene may be better known to many as Track Town USA® thanks to the success of Oregon’s track team under Bill Bowerman in the 1960s and 70s. During that time Bill Bowerman introduced jogging to the American public, coached the legend Steve Prefontaine, met Phil Knight, and started Nike, Inc.

Nike has maintained a strong relationship with Oregon ever since, hiring grad Tinker Hatfield in the 80s to design Air Jordan shoes (but not the ones blogged about here) and grad Dan Weiden’s agency Weiden-Kennedy, to coin the tag line “Just Do It” while developing TV ads like “Bo Knows” to sell newly invented cross-training shoes (also designed by Tinker Hatfield.) Today, Nike designs not only Oregon’s football uniforms, but also the special uniforms for all four teams that played in the College Football Playoffs, branding them from head to toe, and even hands:

For those interested, these uniform deals are influential, lucrative, and signed on a team-by-team basis.

Continue Reading Topics of Conversation for Your College Football Playoff Party