Design v. Trademark, Stripes v. Logo, Browne v. Adidas

Design v. Trademark, Stripes v. Logo, Browne v. Adidas

Design v. Trademark

Thom Browne is a designer who has been creating and selling luxury clothes, and recently began creating athletic clothing featuring a design of “two, three or four parallel stripes.”^[1] Adidas has been using its famous three-stripe logo as early as 1952 and holds a multitude of trademark registrations with the United States Patent and Trademark Office (“USPTO”).^[2] Several of those registrations concern the use of stripes on clothing, including t-shirts, sweatshirts, pants, and shoes.^[3] Indeed, not only does Adidas use the stripes as a logo, but it also uses it in its clothing designs; thus, the core origin of this dispute is probably there: design v. trademark.^[4]

Does a Trademark Give a Monopoly on a Design?

On January 12, 2023, a jury sitting in the Southern District of New York (“SDNY”) said no. They found that Thom Browne’s luxury clothes do not infringe Adidas’ three-stripe trademark.^[5] The jury found that, even if Thom Browne’s designs were similar, Adidas failed to show that a consumer might confuse Browne’s designs with the Adidas trademark.^[6]

To prove a claim of trademark infringement under the Lanham Act, a plaintiff must show the defendant “used[d] in commerce any reproduction, counterfeit, [or] copy… of a registered [trade]mark in connection with the sale… of any goods or services… which such use is likely to cause confusion.”^[7] So they must show (1) they have a mark that is entitled to protection and (2) the defendant’s use of the mark is going to cause consumers confusion as to the origin or sponsorship of the goods.^[8] In the present case, notwithstanding the similarity, the jury was convinced by Browne’s argument that the brands “operate in different markets, serving different customers, and offer their products at strikingly different price points.”^[9] Adidas was seeking $7.8 million in damages, $850,000 for licensing fees, and $7 million for the profit Thom Browne made by using stripe designs.^[10]

The designer’s lawyers mentioned that Browne’s brand is a luxury fashion company with celebrity clientele, whereas Adidas is a sports apparel brand worn by all types of customers worldwide.^[11] As an example, a Thom Browne cardigan with four stripes costs £1,300 (approximately $1,564), while Adidas tops with three stripes may cost as little as £36 (approximately $43).^[12] Browne’s attorneys contended that not only is the target consumer different, but no brand may own stripes as a design at all.^[13]

Thom Browne’s use of a varsity-stripe design goes back to 2008. Before that, the brand’s initial version had three stripes, but it was changed following an Adidas letter about the similarities between them in 2007.^[14] On January 9, Thom Browne testified in front of the jury about his active childhood in Pennsylvania, and how that made him love sports, which eventually inspired his use of stripes on his designs.^[15] At first, this testimony appears accessory compared to the overall decision and the interests at stake.^[16] However, one can envision that it was the result of a good preparation by Browne’s attorneys.^[17] Indeed, associating sports and stripes in general with such an ancient, relatable, and genuine memory might lead the members of the jury to think that stripes have been a common design for sporting goods, associated through time in the minds of the regular consumer since a time way before the creation of Adidas.^[18] It uses the facts to create proof of the commonness of the stripes associated with sport.^[19]

The Trademark Scope and its Protected “Zone”

In its complaint, Adidas contends that Thom Browne, by using stripes, has “expanded its product offerings” beyond what he was accustomed to creating, namely formal and business attire, towards athletic sportswear despite Adidas already using the stripes.^[20] The complaint contained pictures of Browne’s athletic wear product line, showing the similarities with Adidas registrations.^[21] However, the jury and court were not convinced because Thom Browne was using the stripes as a design, as opposed to using it as a brand identifier.^[22]

Nevertheless, several recent decisions within the Second Circuit illustrate how powerful a trademark can be, even against creative artwork. For example, the case against MSCHF, the creator of customized sneakers, on Vans’ trademark infringement, or the decision against Mason Rothschild held liable of Hermès trademark infringement for creating NFT Birkin bags.^[23]

Ultimately, it is all about finding that balance, or that sweet spot, between trademark dilution and excessive monopoly, both of those excesses being harmful to the consumers, as the first deceives them and the second impeaches the beneficial competition.