logo
shadow

Three Stripes and You’re Out!

By Sara Alexandre [November 28th, 2012] 

World V. Adidas

Adidas has an issue with World’s “cut-off-w-lines”

So, let’s see.  World Industries’ likely stance on this one will be that their sneaker on the left, “Varsity”, is designed with a visually distinct “W” representing World Industries.  It’s just, you know, cut-off.  What’s that?  You think their “cut-off-w-lines” looks exactly like Adidas’ internationally recognized three-stripe trademark that they’ve used since 1952?  Hahaha.  I mean, really. All you have to do is look at it!  World’s “cut-off-w-lines” have arrows on top, and, and, and the little piece there, yeah, the one curving a little bit, no- not that one, that one!…

Needless to say, Adidas has promptly filed a federal lawsuit this month against World Industries, and Big 5 Sporting Goods after the latter featured World’s sneaker in a full-page newspaper advertisement in late April of this year.  The complaint was filed in Portland, Oregon, where Adidas’ North American headquarters is based.  The advertisement, filed along with the complaint, shows World Industries “Major” skate shoe positioned next to an Adidas “Tip Off 2″ basketball shoe with three stripes. Additionally, the complaint states the retailer positions World Industries shoes near Adidas shoes in their stores.

Adidas released a statement regarding the damages arising out of what they consider unauthorized use of its trademark, explaining, “World Industries’ merchandise is likely to cause consumer confusion, deceive the public regarding its source, and dilute and tarnish the distinctive quality of Adidas’ three-stripe mark.”

In deciding whether Adidas’ trademark infringement claim against World Industries is valid, the court will determine whether World Industries’ label is identical or confusingly similar to Adidas’ three stripe trademark.  Courts typically consider 8 factors established by Ninth Circuit Court of Appeals in AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979, when measuring the likelihood of confusion regarding a mark in dispute:

  1. Strength of the mark
  2. Proximity of the goods
  3. Similarity of the marks
  4. Evidence of actual confusion
  5. Marketing channels used
  6. Type of goods and the degree of care likely to be exercised by the purchaser
  7.  Defendant’s intent in selecting the mark
  8. Likelihood of expansion of the product lines

Aside from the well articulated argument above, World Industries may also defend itself by claiming its use of the “cut-off-W” was fair use or parody.  When a descriptive mark is used in good faith for its primary meaning in describing a product, as opposed to its secondary meaning, then the use is protected.  In Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983), the court decided that the defendant’s use of “fish fry” to describe batter for coating fish was fair use and did not infringe upon the plaintiff’s mark “Fish Fri”.

If a parody is not too closely linked with commercial use, then courts have considered different factors in applying the First Amendment to protect some artistic and editorial expressions which include parodies of trademarks.  In Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996), the court held the use of a pig-like character named “Spa’am” in a Muppet movie did not violate Hormel’s rights in the trademark “Spam.”  Conversely, in Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977), the court held “Gucchie Goo” diaper bags were not protected under the parody defense.

            Adidas’ complaint seeks to halt the sale of infringing sneakers, the destruction of the sneakers, and money damages, all remedies to which successful plaintiffs are entitled by federal law.

View complaint here:

http://docs.justia.com/cases/federal/district-courts/oregon/ordce/3:2012cv00859/107369/1/

commentsComments (0)