Last month, Adidas filed a complaint against high-end fashion brand Marc Jacobs to protect its iconic “Three Stripe Mark.” Along with trademark infringement, the complaint also accuses Marc Jacobs of unfair competition, trademark dilution and deceptive trade practices. Does Adidas have a strong case? Based on the brand’s long history and past success defending its trademark, Marc Jacobs may have an uphill battle. Fashion is a fascinating industry regarding intellectual property rights, because it can touch on copyright, trademark and patents. If you think about jewelry, there can be patents involved in regard to how certain pieces function (such as clasps), trademarks because of the way things are branded and copyright protection because of the way the pieces are designed.

In some cases, all three of these intellectual property rights may come into question, depending on the nature of the case. But in this instance, Adidas will likely focus on the brand’s trademark rights as well as trade dress, which pertains to the positioning of stripes on apparel and how that can be a source identifier for Adidas without actually saying or using the word Adidas.

The Stripes on Your Sweater Look Awfully Familiar …

What spurred the lawsuit is a sweater from the Marc by Marc Jacobs line featuring four parallel stripes on the garment’s sleeves. Sound familiar? The Adidas “Three Stripe Mark” goes back more than 60 years, so it’s pretty ingrained in the apparel and fashion culture, especially with respect to athletics.

Marc Jacobs could say its designs are different from Adidas, and there are a different number of stripes. They could also say Marc Jacobs is marketing toward a different set of consumers than Adidas, however Adidas does address this in their complaint, specifically with respect to the company’s high-end brands.

Adidas and Marc Jacobs Both Operate in High-End Circles

Adidas has featured the brand’s trademark three stripes on its sneakers since 1952, on sportswear since 1967 and in its high-end fashion collaboration with designer Yohji Yamamoto (Y3) since 2002. This established crossover into high fashion could be one factor that works in Adidas’ favor with respect to the complaint against Marc Jacobs.

Since Adidas has a history of cross-marketing its brand with high-end designers through the Y3 collaboration (and in lines with Stella McCartney and Jeremy Scott), Adidas could argue that consumers may be confused and infer that Adidas partnered up with Marc Jacobs. This could potentially dilute the mark, especially if people have an aversion to Marc Jacobs.

Are Marc Jacobs Fans a Sophisticated Bunch?

Marc Jacobs’ saving grace may be to show that its customers won’t confuse the two brands. They could argue that Marc Jacobs purchasers are sophisticated and very pointed in what they buy, because they have an attraction to the brand. Similarly, I know when I’m going into a store to buy a Rolex, I’m not going into a store to purchase a Timex watch.

If the sweater has other elements on it, say the Marc Jacobs name is emblazoned on the front, even with the four stripes, then people are going to look at the sweater in the aggregate and know it’s Marc Jacobs and not Adidas, because it clearly says Marc Jacobs. Score one point for Marc Jacobs.

At the same time, if people could be misled or detracted from purchasing Adidas apparel, because the designs look so much alike, Marc Jacobs could potentially divert sales from Adidas. This is another factor that could play in Adidas’ favor and why the brand wants to eliminate the initial interest and confusion between the two clothing lines.

Adidas Stopped Payless Shoes from Bringing Its Brand Down

A previous trademark infringement case where Adidas emerged victorious was the brand’s dispute with Payless Shoes. Unlike the Marc Jacobs suit, Adidas did have a prior agreement with Payless regarding the discount brand’s use of stripes on shoes.

Payless used two stripes and four stripes, but the focus of the lawsuit was more on trade dress and how the stripes were positioned. Adidas argued the fact that the stripes were equal in size and in contrasting color and at the same angle and the same location on the Payless shoes as on Adidas shoes.

While two doesn’t equal three and four doesn’t equal three, if you look at either the shoes or sweater in the aggregate, then the overall appearance may be confusingly similar. Adidas did defeat Payless in 2008, and part of their argument was if Payless were allowed to continue selling the shoes, that would dilute the Adidas mark and degrade the prestigious connotation of the three stripes.

It’s Not Easy to Conquer an Iconic Brand

In both cases, it comes back to a mark (or variations thereof) that has been around for decades. It’s hard to say that Marc Jacobs didn’t know that the stripes looked like Adidas’ “Three Stripe Mark.” In trademark infringement lawsuits, there is a good deal of subjectivity involved. If this case goes to trial, industry experts will be called, and surveys will come into play to get a pulse of what consumers would think, what they are confused by and in what context.

Still, it’s also about proving the elements. Marc Jacobs could try to prove when a consumer looks at the Marc Jacobs sweater they may at first think it looks like an Adidas product, but upon closer examination, any confusion between brands is put to rest. However, even if you can show an initial confusion was overcome, if there was any confusion at all, that could be sufficient to weigh in Adidas’ favor.

Courts Look at the Aggregate, but This Dispute Will Probably Settle

Deconstructing the elements isn’t what the court is going to weigh, it will instead look at the aggregate. While one factor may weigh in the favor of one side, others may not. The court will look at the totality of the circumstances for all the factors and use that as the basis for its decision.

At the end of the day, most of these cases don’t go to trial, because the parties usually reach a settlement, though Adidas has the financial ability to fight the lawsuit in court if they choose to do so. If it becomes a long drawn out process, it’s typically not a win for either party. There are so many variables to take into consideration, but Adidas wouldn’t be afraid to go to court based on the brand’s history. The question is: Does Marc Jacobs want to take them on?

Photo Source: ADIDAS AMERICA, INC. AND ADIDAS AG vs. MARC JACOBS INTERNATIONAL

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Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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