What makes the Adidas Thom Browne case so interesting?
The jury verdict in favor of Thom Browne, Inc., for its signature “four bars” design has been widely reported and commented on. But what makes this case so interesting? adidas filed suit against Thom Browne in 2021, claiming the designer’s use of stripes on his casual and athletic wear were infringing adidas’ famous three-stripe trademark, which adidas has used since the 1950s (and on sportswear since 1967). Thom Browne launched in 2001 as a high-end fashion brand, initially offering made-to-measure suits. His clothing typically includes the four-bar mark encircling the arm of a sleeve, a pant leg, or a sock. For many years, Thom Browne’s designs included parallel stripes, the design it calls the “grosgrain signature.”
A few points from this interesting battle over the use of stripes on apparel are noteworthy. First, the parties have a long history; this lawsuit did not come out of the blue. adidas contacted Thom Browne in 2007, after Thom Browne began using another design that adidas felt was closer to its three-strip mark. At that time, Browne was using three horizontal bars instead of four. As a result, Thom Browne changed from three stripes to four stripes. All was quiet until 2018, when adidas reached out to Thom Browne again to ask that it stop using the stripes. So what happened between 2007 and 2018? Thom Browne had achieved rapid expansion as a brand. Further, according to the Complaint, Thom Browne expanded beyond formal business attire into other areas of apparel, namely athletic and leisure wear, thereby directly competing with Adidas.
Another interesting point from this case was the expansion and growth of the Thom Browne brand and how that factored in. Thom Browne rapidly expanded from a boutique in Manhattan’s West Village to a brand whose products sold in over 300 retail locations around the globe. adidas argued that once Thom Browne expanded into more casual and athletic wear, the risk of consumer confusion increased. In addition, Thom Browne partnered with a famous European football club, further expanding its presence.
The Court, on motion for summary judgment, considered Thom Browne’s argument that adidas waited too long to bring suit. Thom Browne argued that adidas was aware of its four-bar mark on activewear during or before 2012 (the relevant date for purposes of the laches defense in this case, taking into account time spent in good faith settlement discussions). adidas argued that when it first discovered Thom Browne’s three stripe mark in 2006, it did not consider Thom Browne to be a direct competitor, and further, between 2009 and 2012, activewear was only a small percentage of Thom Browne’s total sales. The Court ultimately denied summary judgment on that argument, stating there was an issue of fact concerning whether adidas should have known it had an infringement claim during or before 2012.
Ultimately, the jury found no infringement. Yet adidas owns several three-stripe trademarks for apparel and footwear. How much does, and should, product line or geographic expansion factor into an infringement analysis? This case certainly calls into question where you draw the line on trademark infringement.