Adidas Am., Inc. v. Thom Browne Inc.
| Decision Date | 21 April 2022 |
| Docket Number | 21-cv-5615 (JSR) |
| Citation | 599 F.Supp.3d 151 |
| Parties | ADIDAS AMERICA, INC., and Adidas AG, Plaintiffs, v. THOM BROWNE INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
H. Forrest Flemming, III, Richard Charles Henn, Jr., Kilpatrick Townsend & Stockton LLP, New York, NY, for Plaintiffs.
Robert T. Maldonado, Tonia A. Sayour, Wolf Greenfield & Sacks, PC, New York, NY, Harley Irwin Lewin, Lewinconsult LLC, Portland, ME, Quincy Kayton, Wolf, Greenfield & Sacks P.C., Boston, MA, for Defendant.
On March 23, 2022, the Honorable Robert W. Lehrburger, United States Magistrate Judge, issued a detailed Report and Recommendation in the above-captioned matter recommending that the defendant's motion to dismiss the complaint pursuant to Fed. R. Civ. P. 12(b)(6) or, in the alternative, for a more definite statement pursuant to Fed. R. Civ. P. 12(e) be denied in part and granted in part. Defendant timely filed its objection on April 6, 2022, asking this Court not to adopt the finding that the complaint adequately identified the protected mark, to which plaintiffs timely responded on April 20, 2022. Accordingly, the Court has reviewed the record and the issues de novo .
Having done so, the Court finds itself in complete agreement with Magistrate Judge Lehrburger's Report and Recommendation, and in particular his conclusion that the complaint sufficiently alleges that the Three-Strike Mark functions as a unitary mark, and hereby adopts its reasoning by reference. Accordingly, the Court grants the motion in part by striking plaintiffs’ prayer for relief asking the Court to sustain its TTAB opposition proceeding against defendant's trademark application and denies the motion in all other respects.
This is a trademark infringement, unfair competition, and dilution case. Plaintiffs adidas America Inc. and adidas AG (collectively "adidas" or "Plaintiffs") seek injunctive relief and damages against Thom Browne Inc. ("Thom Browne" or "Defendant"), which markets and sells sportswear and athletic-styled footwear adorned with allegedly similar imitations of adidas’ three-stripe design trademark (the "Three-Stripe Mark" or "Mark"). Adidas also asks the Court to sustain its opposition to Thom Browne's application to register a multi-stripe trademark design for footwear that is currently pending but stayed in the Trademark Trial and Appeals Board ("TTAB"). Thom Browne moves to dismiss the complaint pursuant to Federal Rule Of Civil Procedure ("Rule") 12(b)(6) for failure to state a claim, or, in part in the alternative, for a more definite statement pursuant to Rule 12(e). Thom Browne asserts that the Complaint is vague about which products are alleged to infringe and dilute which trademarks, that Plaintiffs lack standing, and that the Court lacks jurisdiction over trademark opposition proceedings. For the reasons set forth below, I recommend that the motion be DENIED IN PART and GRANTED IN PART.
Plaintiffs filed the Complaint on June 28, 2021. The complaint alleges trademark infringement, unfair competition, and trademark dilution under the federal Lanham Act, 15 U.S.C. § 1114, 1125(a), (c), as well as related causes of action under New York statutory and common law. On October 6, 2021, Defendant filed its motion to dismiss, which is now fully briefed. (Dkt. 18.) The matter has been referred to me for report and recommendation. Oral argument took place on March 10, 2021.
The factual background is drawn primarily from the Complaint. As required on a motion to dismiss pursuant to Rule 12(b)(6), the Court takes the facts alleged in the Complaint as true and draws all reasonable inferences in favor of adidas as the non-moving party.
Adidas is one of the world's leading manufacturers in athletic apparel, sportswear, footwear, and sporting equipment. (Compl. ¶ 13.) Around 1952, adidas introduced its signature logo, the Three-Stripe Mark, on footwear, and it has since come to be emblematic of the brand. (Compl. ¶ 14.) Adidas has spent millions of dollars promoting both the Three-Stripe Mark and its products through various advertising and marketing campaigns. The company's annual U.S. sales of products bearing the Three-Stripe Mark have, in recent years, totaled in the hundreds of millions. (Compl. ¶¶ 33-34.) Many of adidas’ advertising campaigns have featured "A-list" celebrities and athletes. (Compl. ¶¶ 34-35.)
Adidas has also used the Three-Stripe Mark in connection with its frequent sponsorship of athletic tournaments and organizations, professional athletes, and collegiate sports. (Compl. ¶ 30.)
Due to its prolific and continuous appearances, the Three-Stripe Mark is recognized by the public and has been referred to in the media, among many others, as adidas’ "iconic trio of stripes," the "famous Adidas three stripes," and the "ubiquitous three stripes." (Compl. ¶ 32.) Adidas is internationally known and symbolized by its famous Three-Stripe Mark, and the general public in the United States has come to associate adidas with the Mark. (Compl. ¶ 36.)
Adidas owns 24 federal trademark registrations issued by the United States Patent and Trademark Office ("PTO") for the Three-Stripe Mark. The trademarks cover the Three-Stripe Mark on "athletic footwear," "footwear," "sports and leisure wear," including shirts, jackets, shorts, pants, as well as for "clothing," including T-shirts, sweatshirts, jackets, coats, and others. (Compl. ¶¶ 15-26.) Adidas also owns registration of the Mark for sporting goods and bags. (Compl. ¶ 26.)
Thom Browne is a clothing and accessories designer known especially for its cropped men's suits and jackets and avant-garde womenswear. (Compl. ¶ 37.) Since 2004, Thom Browne has attached as a detail to its clothing what it refers to as a white-red-white-blue-white "five stripe ribbon" design. (Def. Mem. at 2; see also Pl. Mem. at 9.1 ) Since 2009, it has also attached a similarly styled "four band design." (Def. Mem. at 1.) More recently, Thom Browne has expanded its fashion line to include sportswear and athletic-styled footwear that adidas alleges bears confusingly similar imitations of its Three-Stripe Mark. (Compl. ¶ 37.) The Thom Browne sportswear and footwear feature three and four stripes in ways that adidas claims is likely to deceive, confuse, and mislead actual and prospective purchasers of adidas’ merchandise. (Compl. ¶¶ 37, 39.)
Since 2018, Thom Browne has been in a partnership with European football club FC Barcelona through which it has promoted its goods using images associated with soccer and soccer players such as Lionel Messi. Additionally, Thom Browne was referred to as "the other Three Stripes" company in a GQ Magazine article focusing on the company's debut into athletic wear. (Compl. ¶ 40.). Adidas alleges these are examples of Thom Browne's further encroachment into its core market category.
In 2018, Thom Browne filed applications with the PTO to register a striped design mark on apparel.2 (Compl. ¶¶ 41, 46.) On December 14, 2021, adidas filed an opposition before the TTAB seeking to prevent registration of Thom Browne's applications. (Compl. ¶ 41.) In its request for relief in the instant case, adidas asks the Court to sustain adidas’ opposition to Thom Browne's trademark applications. (Compl. Prayer For Relief No. 4.)
For the last three years or so – since summer of 2018 – the parties have engaged in sporadic settlement discussions and an unsuccessful mediation. (Compl. ¶¶ 46-52.)
To survive a Rule 12(b)(6) motion, a complaint must plead "enough facts to state a claim to relief that is plausible on its face." Bell Atlantic Corp. v. Twombly , 550 U.S. 544, 570, 127 S. Ct. 1955, 1974, 167 L.Ed.2d 929 (2007). A claim is facially plausible when the factual content pleaded allows a court "to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S. Ct. 1937, 1949, 173 L.Ed.2d 868 (2009). "Where a complaint pleads facts that are ‘merely consistent with’ a defendant's liability, it ‘stops short of the line between possibility and plausibility of ‘entitlement to relief.’ " Id. , 129 S. Ct. at 1949 (quoting Twombly , 550 U.S. at 557, 127 S. Ct. at 1966 ).
In considering a motion to dismiss for failure to state a cause of action, a district court must "accept[ ] all factual claims in the complaint as true, and draw[ ] all reasonable inferences in the [non-moving party's] favor." Lotes Co. v. Hon Hai Precision Industry Co. , 753 F.3d 395, 403 (2d Cir. 2014) (internal quotation marks omitted). This tenet, however, is Iqbal , 556 U.S. at 678, 129 S. Ct. at 1949. Rather, the complaint's "[f]actual allegations must be enough to raise a right to relief above the speculative level, ... i.e., enough to make the claim plausible." Arista Records LLC v. Doe 3 , 604 F.3d 110, 120 (2d Cir. 2010) (internal quotation marks omitted). A complaint is properly dismissed where, as a matter of law, "the allegations in [the] complaint, however true, could not raise a claim of entitlement to relief." Twombly , 550 U.S. at 558, 127 S. Ct. at 1966.
Rule 12(e) of the Federal Rules Of Civil Procedure provides that "[a] party may move for a more definite statement of a pleading to which a responsive pleading is allowed but which is so vague or ambiguous that the party cannot reasonably prepare a response." Fed. R. Civ. P. 12(e). A Rule 12(e) moti...
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