Credit: Chuttersnap | Unsplash
Introduction
Within two days of filing its opposition, the sportswear giant, Adidas AG, decided to withdraw its Notice of Partial Opposition against Black Lives Matter Global Network Foundation’s (“the Foundation”) federal trademark application. The Foundation submitted an application with the U.S. Patent and Trademark Office (“USPTO”) to register its trademark consisting of three yellow stripes (the “Mark”), which Adidas argued would cause likelihood of confusion amongst consumers and dilute their valuable brand that is represented by its Three-Stripe Mark. Adidas is not new to protecting its Three-Stripe Mark, as it has previously filed over 90 lawsuits and signed more than 200 settlement agreements since 2008. So, with the Notice being withdrawn, what is the current predicament between the Foundation and Adidas?
Background
1. The Foundation’s Use of the Three Stripes
The Foundation was formed in 2013 to advocate for the eradication of systemic racism and the prevention of police brutality against African Americans and other minority groups. Today, the Foundation is the flagship organization of the Black Lives Matter (“BLM”) movement.
In 2018, the Foundation sought to reshape its brand elements with the mission to spread awareness of the BLM movement. With this goal in mind, the Foundation worked with a creative agency to develop a new brand mark that would help create a cohesive brand identity. Finally, the Foundation landed on the symbol of three parallel lines in a highlighter yellow color as featured below. The Foundation intends to use this design on “a variety of products including clothing, publications, bags, bracelets, and mugs.”
To protect its design, the Foundation filed a trademark application to register two marks: one with the words “Black Lives Matter” above three horizontal parallel lines in a highlighter yellow color, and the other with the same yellow three-stripe design without the words.
The colors the Foundation uses in its branding are directly related to the official color palette of the BLM movement: black, yellow, and white. The combination of these colors work together to represent power and energy, according to 1000Logos, as “[y]ellow is also a symbol of life and growth, while black adds progressiveness and strength.”
Following its application for trademark registration, it is uncertain as to when or whether its logo would be approved, as the U.S. Patent and Trademark Office “declined to comment on how quickly the Black Lives Matter trademark could be registered.”
2. Adidas’ Initial Opposition to the Foundation’s Trademark Application—What Are Its Claims?
On March 27, 2023, Adidas filed a Notice of Partial Opposition in the USPTO against the Foundation, requesting the USPTO to refuse the Foundation’s trademark application for the yellow three-stripe design without the words on the grounds of “[p]riority and likelihood of confusion” and “[d]ilution by blurring.” In particular, Adidas asserts that the Foundation’s Mark—three parallel, horizontal yellow lines without the “Black Lives Matter'' phrase above it—too closely resembles Adidas’ Three-Stripe Mark, such that issuance of a registration for the Foundation’s Mark would be likely to: (1) result in deception and confusion in violation of Section 2(d) of the Lanham Act (15 U.S.C. § 1052(d)), and (2) “dilute the distinctiveness” of the Three-Stripe Mark in violation of Section 43(c)(1) of the Lanham Act (15 U.S.C. § 1125(c)(1)).
In its Notice, Adidas claims it began using its world-renowned Three-Stripe Mark on its footwear as early as 1952 and on its apparel as early as 1967. Notice at 2. Over the years, Adidas has expansively used its Three-Stripe Mark on a broad assortment of goods and services, including footwear, apparel, accessories, and other related products, helping it to establish its reputation and recognition on an international scale.
On the other hand, the Foundation filed a trademark application to register its Mark for use in connection with “inter alia, ‘[b]ags . . . [c]lothing . . . and [p]romoting public interest in and awareness of topics of interest to those in the fields of activism and community organizing in the Black community; online retail store services featuring apparel, headwear, face masks, jewelry, bags, bottles, mugs, pillows, blankets, lapel pins, flags, magnets, stickers, mobile device grips, and electronic gift cards.”
To that end, Adidas argues that, due to the similarities between the designs and intended uses of both marks, consumers who are already familiar with the Three-Stripe Mark are likely to presume that the Foundation’s goods and services with its Mark are related to, affiliated with, or even sponsored by Adidas. Id. Further, Adidas expresses concern over the possibility that faulty or defective products and services sold or provided embodying the Foundation’s Mark could reflect poorly on Adidas’s reputation and potentially damage its name value. Id.
However, despite making such claims, on March 29, 2023—only two days after its initial filing date—Adidas withdrew its opposition against the Foundation without prejudice, meaning Adidas is free to challenge the trademark in the future on the same grounds.
The Criteria for Federal Trademark Protection & the USPTO Trademark Application Review Process
With Adidas’ withdrawal of its Notice, the next step would be for the USPTO to review The Foundation’s trademark application.
For a mark to be eligible for trademark protection, it must be: (1) in lawful use in commerce, and (2) distinctive. A mark can be inherently distinctive or obtain distinctiveness through secondary meaning. Further, the registered owner either needs to be using the mark in commerce or have an intent to use the mark in commerce in the future.
However, the USPTO may still decline to register a mark if it finds that it is likely to be confused with another registered trademark. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration unless it consists of a mark which resembles a mark registered with the USPTO or is likely to cause confusion as to its connection with another mark. 15 U.S.C. § 1052(d).
Once an applicant submits an application with the USPTO, they will either receive news that it has been registered or receive an office action outlining reasons as to why the mark might be refused. One reason for refusal is the likelihood of confusion. Likelihood of confusion is a mixed question of fact and law and is found when there is a probability of confusion, not merely a possibility. Dilution refers to the use of a trademark that is similar to another mark and will diminish the perception of the famous mark.
When examining one mark against another, the court will look at a list of factors to decide whether the likelihood of confusion exists. These factors typically consist of the resemblance of the marks, the relationship between the goods or services, the relationship between the parties’ trade channels, the strength of the marks, evidence of confusion, or intent of the owners.
1. The Predicament in Protecting Adidas’ Three-Stripe Trademark
The likelihood of confusion standard is used to determine whether a subsequent mark would cause consumer confusion. The key question here that the USPTO will need to analyze is whether a consumer would see the Foundation’s Mark and believe that there is a connection or affiliation between the Foundation and Adidas.
While it is difficult to ascertain the final determination of the USPTO on whether to grant the Foundation’s trademark applications, a recent ruling of a trademark infringement claim that Adidas brought against Thom Browne may give insight into the extent to which Adidas may protect its Mark against alleged or potential infringement.
Adidas v. Thom Browne
A trademark is the emblem of a business’ brand, representing to new and faithful customers its assurances in quality and reliability. As a holder of a trademark, it is important to protect it against any threats. Adidas has taken this duty seriously.
Since 2008, Adidas has filed more than 90 trademark infringement lawsuits and signed more than 200 settlement agreements in relation to its well-known three-stripe trademark that is embellished on all of its products. However, through each lawsuit and settlement, the question remains: is Adidas’ three-line trademark protectable for all variations of three parallel lines, and either way, where is the “line” drawn?
Well, in a persuading opening statement by Thom Browne’s attorney, “Adidas does not own stripes.”
In 2021, Adidas brought a trademark infringement suit against Thom Browne, claiming that Thom Browne’s three-striped motif infringes upon Adidas’ three-stripe trademark because of its potential to confuse or mislead consumers. However, in the verdict following a nine-day trial in January 2023, the jury decided that Thom Browne's stripe patterns at issue did not violate Adidas’ trademark rights.
Conclusion
Moving forward, this case could help smaller organizations and companies create their products without the fear of bigger companies getting in the way of their rights.
*The views expressed in this article do not represent the views of Santa Clara University.