Adidas has officially withdrawn its opposition to a US trademark filing by the Black Lives Matter movement after initially claiming that the trademark would cause confusion with its own three-stripe design and dilute its distinctiveness.
The US application (Serial No. 90304243) was filed by the Black Lives Matter Global Network Foundation, Inc., an organization founded in 2013 which has garnered worldwide support over the years through social media and has been at the forefront of social injustices impacting the black community such as the tragic deaths of Trayvon Martin and George Floyd. Their “mission is to eradicate white supremacy and build local power to intervene in violence inflicted on Black communities by the state and vigilantes. By combating and countering acts of violence, creating space for Black imagination and innovation, and centering Black joy, [they] are winning immediate improvements in [their] lives[1].”
Their application is for three yellow horizontal lines. It was filed for a variety of goods and services including bags, bracelets, mugs, and clothing. Adidas AG has several international trademarks for the Adidas logo registered for an array of goods including clothing, footwear, and headgear.
The Adidas logo alongside Black Lives Matter’s three stripes application
According to the opposition filing, Adidas filed the opposition to the Black Lives Matter mark on the basis that their mark would cause confusion to consumers because of their existing logo, particularly that consumers would be “likely to assume that the goods and services offered under [Black Lives Matter’s] mark originate from the same source, or that they are affiliated, connected or associated with or sponsored by Adidas”[2]. In addition, they argued that Black Lives Matter’s mark “is likely to dilute the distinctiveness of [Adidas’] three-stripe mark”[3].
It is not out of the ordinary for Adidas to pursue infringement action against a mark containing 3 stripes as they have vigorously defended their IP rights for decades. In documents submitted during proceedings against Thom Browne, it was detailed that Adidas has filed over 90 claims and signed over 200 settlement agreements in pursuit of defending its three-stripe design since 2008.
In their case against designer Thom Browne, the footwear giant accused him of infringing on their three-stripe design by using his four-stripe design on his clothing. During the proceedings it was heard that Adidas in fact authorized Thom Browne, in an agreement made between the parties a decade ago, to use the stripe design provided he added a fourth stripe. The case was subsequently decided in favor of Thom Browne.
It is unlike Adidas to retract a claim for infringement. Although no official reason was given in the withdrawal request, there are reports that Adidas are concerned with the potential connotations their opposition to a mark by an organization like Black Lives Matter would infer. Potentially causing people to believe that they are against the movement or what it stands for.
It is important for brands to weigh up any potential damage to their reputation against the commercial reasons for bringing a trademark opposition particularly when it is against an organization with a globally recognized, positive, and powerful message such as that of the Black Lives Matter movement. This time Adidas has conceded that it is not always necessary to oppose every application containing a common element of three lines.
Written by Daniella Garvey, Trainee Trademark Attorney, Fox Williams LLP
[1] https://blacklivesmatter.com/about/
[2] Notice of Opposition filed by Adidas AG
[3] Notice of Opposition filed by Adidas AG
