Adidas and Tommy Hilfiger Unite: Opposing the Registration of Thom Browne Stripes

*** The writing does not, and is not intended to, constitute legal advice by any means***

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Adidas filed an opposition to block the federal registration of Thom Browne's Red-White-Blue ("RWB") stripes trademark. In February 2020, Thom Browne submitted an application based on a bona fide intent to use (ITU application). It's also called Section 1(b) application because Section 1(b) provides a statutory basis for such filing. See 15 U.S.C. §1051. Although your mark is not registered upon the filing of a Section 1(b) application, you are claiming that you will use your mark in commerce in the foreseeable future. It's like saying, "I've got dips!". Once you start using your mark as stated in your intent-to-use application, your filing date will be the date of first use of your mark. That's why the language of a bona fide (meaning, sincere and good faith) intent figures prominently in the statute.

Counsel for Adidas emphasized that Adidas has been using the RWB stripes in commerce well before Thom Browne entered the market. He further noted that, because of the long history of association between Adidas and the RWB stripes, consumers will be necessarily confused as to the source of a product bearing the RWB stripes in question. The likelihood of confusion is even stronger in footwear because Thom Browne makes various sneakers and sandals incorporating the design. Adidas is known for aggressively protecting its trademark rights, and this move is particularly noteworthy as many luxury brands are now venturing into the athletic. Dior Home has recently unveiled its ski collection. In waging the war, Adidas also found an unlikely alley: Tommy Hilfiger. The American fashion giant also lodged an opposition to stop Trademark Trial and Appeal Board ("TTAB") from registering the mark. TTAB will now have to undertake the review process for the opposing parties. We will soon hear what would happen to the validity of the Thom Browne application.

Two weeks ago, I gave my own prediction in an earlier post that the war over stripes would likely to continue to happen thanks to the design's powerfully intuitive appeal as a leitmotif. And here we are! I certainly do not know what the ultimate outcome would be, but there are two ways to look at the issue. First, to what extent should stripes be protected under the current law? As geometric shapes, I am sometimes compelled to think that it is a common idea that everyone should be able to use with imagination. At the same time, I know that designers belabor to come up with the next stripe design that is aesthetically pleasing and explosively marketable. Second, haven't Thom Browne succeeded in imbuing its RWB stripes with goodwill through successive collections, coupled with extensive marketing? If trademark is about the protection of the goodwill of a mark, Thom Browne should be able to claim that it is rightfully entitled to the federal protection of its mark. I should say these two policy considerations are equally powerful, and one cannot necessarily be sacrificed at the expense of the other. So let's wait and see what happens. We might have a glimpse into what policy rationales win over in fashion design.