Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA909442
`07/16/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following parties oppose registration of the indicated application.
`
`Opposers Information
`
`Name
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`adidas AG
`
`07/15/2018
`
`Adi-Dassler-Strasse 1
`Herzogenaurach, 91074
`GERMANY
`
`Name
`
`adidas International Marketing BV
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`07/15/2018
`
`Hoogoorddreef 9a, Atlas Arena
`Afrika Building
`Amsterdam, ZO 1101 BA
`NETHERLANDS
`
`Name
`
`adidas America, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/15/2018
`
`5055 N. Greeley Avenue
`Portland, OR 97217
`UNITED STATES
`
`Nichole Davis Chollet
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
`UNITED STATES
`Email: nchollet@ktslaw.com, dbreitman@ktslaw.com, kcook@ktslaw.com, kteil-
`haber@ktslaw.com, tmadmin@ktslaw.com
`
`Applicant Information
`
`Application No
`
`87600313
`
`Publication date
`
`01/16/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`07/16/2018
`
`Opposition Peri-
`od Ends
`
`07/15/2018
`
`JOSE LUIS MARES GUTIERREZ
`F. Daniel Mireles 940, Col. El Coecillo
`Leon, Gto., 37260
`MEXICO
`
`

`

`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2017/09/01 First Use In Commerce: 2017/09/01
`All goods and services in the class are opposed, namely: Boots; Shoes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1815956
`
`Registration Date
`
`01/11/1994
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`03/16/1992
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1952/00/00 First Use In Commerce: 1952/00/00
`athletic footwear
`
`U.S. Registration
`No.
`
`1833868
`
`Registration Date
`
`05/03/1994
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`04/07/1992
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1949/00/00 First Use In Commerce: 1978/00/00
`athletic footwear
`
`U.S. Registration
`No.
`
`2278589
`
`Registration Date
`
`09/21/1999
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`03/07/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1952/00/00 First Use In Commerce: 1952/00/00
`athletic and leisure footwear
`
`U.S. Registration
`No.
`
`3029129
`
`Registration Date
`
`12/13/2005
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`12/29/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of three parallel stripes applied to footwear, the stripes are
`positioned on the footwear upper in the area between the laces and the sole.
`The dotted outline of the footwear is not claimed as part of the mark and is inten-
`ded only to show the position of the mark.
`
`Goods/Services
`
`Class 025. First use: First Use: 1952/01/01 First Use In Commerce: 1952/01/01
`Footwear
`
`U.S. Registration
`No.
`
`3029135
`
`Application Date
`
`12/29/2004
`
`Registration Date
`
`12/13/2005
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`NONE
`
`Date
`
`Description of
`Mark
`
`The mark consists of three parallel stripes with serrated edges applied to foot-
`wear, the stripes are positioned on the footwear upper in the area between the
`laces and the sole. The dotted outline of the footwear is not claimed as part of-
`the mark and is intended only to show the position of the mark.
`
`Goods/Services
`
`Class 025. First use: First Use: 1952/01/01 First Use In Commerce: 1952/01/01
`Footwear
`
`U.S. Registration
`No.
`
`2909861
`
`Registration Date
`
`12/14/2004
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/28/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of three stripes positioned on the top part of a slide. The dot-
`ted outline of the slide is not claimed as part of the mark and is intended only to
`show the position of the mark.
`
`Class 025. First use: First Use: 1972/00/00 First Use In Commerce: 1972/00/00
`Footwear, namely, slides
`
`

`

`U.S. Registration
`No.
`
`2999646
`
`Registration Date
`
`09/27/2005
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/28/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1972/00/00 First Use In Commerce: 1972/00/00
`Footwear, namely, slides
`
`U.S. Registration
`No.
`
`961353
`
`Registration Date
`
`06/19/1973
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`05/01/1970
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`THE MARK COMPRISES THREE WHITE STRIPES EXTENDING ACROSS
`THE BLUE BACKGROUND OF THE BOX CONTAINER AND THE OUTLINE
`OF THECONTAINER BOX IS MADE TO APPEAR IN BROKEN LINES.
`
`Class 025. First use: First Use: 1967/00/00 First Use In Commerce: 1967/00/00
`GENERAL PURPOSE SPORT SHOESSPECIAL PURPOSE ATHLETIC
`SHOES
`
`U.S. Registration
`No.
`
`3063742
`
`Registration Date
`
`02/28/2006
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/21/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2004/01/15 First Use In Commerce: 2004/01/15
`Pants, shorts, skorts, footwear, shirts, vests, socks, jackets, sweaters, head-
`wear, visors, pullovers, rainsuits
`
`U.S. Registration
`No.
`
`3063745
`
`Registration Date
`
`02/28/2006
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`03/21/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2004/01/15 First Use In Commerce: 2004/01/15
`Pants, shorts, skorts, footwear, shirts, vests, socks, jackets, sweaters, head-
`wear, visors, pullovers, rainsuits
`
`U.S. Registration
`No.
`
`3842177
`
`Registration Date
`
`08/31/2010
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`09/09/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a design .
`
`Class 025. First use: First Use: 2009/11/01 First Use In Commerce: 2009/11/01
`Footwear; apparel, namely, shorts, skorts, pants, skirts, sweaters, pullovers,
`coats, jackets, rain suits, socks, tights, gloves, headgear, namely, caps,
`hats,visors
`
`U.S. Registration
`No.
`
`3846203
`
`Registration Date
`
`09/07/2010
`
`Word Mark
`
`NONE
`
`Application Date
`
`05/29/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2009/11/01 First Use In Commerce: 2009/11/01
`Shirts
`
`U.S. Registration
`No.
`
`870136
`
`Registration Date
`
`05/27/1969
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/11/1968
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`THE MARK CONSISTS OF THREE PARALLEL BANDS EXTENDING ALONG
`THE LENGTH OF EACH SLEEVE OF THE TRAINING SUIT AND ALONG THE
`LENGTH OF EACH LEG OF THE TROUSERS, THE BANDS ON THE
`SLEEVES BEING OF CONTRASTING COLOR TO THAT OF THE RE-
`MAINDER OF THE SLEEVE AND THE BANDS ON THE LEGS OF THE
`TROUSERS BEING OF CONTRASTING COLOR TO THAT OF THE RE-
`
`

`

`MAINDER OF THE TROUSER LEGS.
`
`Goods/Services
`
`Class 025. First use: First Use: 1967/02/00 First Use In Commerce: 1967/08/03
`ATHLETIC TRAINING SUITS
`
`U.S. Registration
`No.
`
`2016963
`
`Registration Date
`
`11/19/1996
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`03/28/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of three parallel bands positioned along the length of each
`sleeve of a jacket. The dotted outline ofa jacket is not part of the mark but
`ismerely intended to show the position ofthe mark.
`
`Class 025. First use: First Use: 1967/00/00 First Use In Commerce: 1967/00/00
`sports and leisure wear, namely jackets
`
`U.S. Registration
`No.
`
`2058619
`
`Registration Date
`
`05/06/1997
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/28/1995
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of three parallel bands positioned along the length of each
`sleeve of a shirt. The dotted outline ofa shirt is not part of the mark but is merely
`intended to show the position of the mark.
`
`Class 025. First use: First Use: 1967/00/00 First Use In Commerce: 1967/00/00
`sports and leisure wear, namely shirts
`
`U.S. Registration
`No.
`
`2278591
`
`Registration Date
`
`09/21/1999
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`03/28/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists three parallel bands extending along the length of each leg of
`the shorts, the bands being of contrasting color to that of the remainder of the
`shorts. The dotted lines are not a part of the mark and only used to indicate pos-
`ition.
`
`Goods/Services
`
`Class 025. First use: First Use: 1967/00/00 First Use In Commerce: 1967/00/00
`sports and leisure wear, namely, shorts
`
`U.S. Registration
`No.
`
`2284308
`
`Application Date
`
`03/28/1995
`
`

`

`Registration Date
`
`10/12/1999
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists three parallel bands extending along the length of each leg of
`the pants, the bands being of contrasting color to that of the remainder of the
`pants. The dotted lines are not a part of the mark and only used to indicate posi-
`tion.
`
`Goods/Services
`
`Class 025. First use: First Use: 1967/00/00 First Use In Commerce: 1967/00/00
`sports and leisure wear, namely pants
`
`U.S. Registration
`No.
`
`3029127
`
`Registration Date
`
`12/13/2005
`
`Word Mark
`
`NONE
`
`Application Date
`
`12/29/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of three parallel stripes running along the sleeve of a shirt, t-
`shirt, sweatshirt, jacket or coat. The dotted outline of the garment is notclaimed
`as part of the mark and is intended only to show the position of the mark.
`
`Class 025. First use: First Use: 1967/02/03 First Use In Commerce: 1967/08/03
`Clothing, namely, T-Shirts, sweatshirts, jackets and coats
`
`U.S. Registration
`No.
`
`3087329
`
`Registration Date
`
`05/02/2006
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`12/29/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`The mark consists of three parallel stripes running along the side of a shirt, t-
`shirt, sweatshirt, vest, jacket or coat. The dotted outline of the garment isnot
`claimed as part of the mark and is intended only to show the position of the
`mark.
`
`Goods/Services
`
`Class 025. First use: First Use: 1967/02/03 First Use In Commerce: 1967/08/03
`Clothing, namely, shirts, t-shirts, sweatshirts, vests, jackets and coats
`
`U.S. Registration
`No.
`
`3183656
`
`Registration Date
`
`12/12/2006
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`01/30/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of three parallel stripes extending around the headwear.
`
`Class 025. First use: First Use: 1993/05/00 First Use In Commerce: 1994/01/00
`Headwear
`
`U.S. Registration
`No.
`
`3183663
`
`Registration Date
`
`12/12/2006
`
`Word Mark
`
`NONE
`
`Application Date
`
`01/30/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of three parallel stripes on a size adjusting bar at the rearof
`the headwear. The dotted outline ofthe visor is not claimed as part of themark
`and is intended only to show the position of the mark
`
`Class 025. First use: First Use: 1998/08/00 First Use In Commerce: 1999/03/00
`Headwear
`
`U.S. Registration
`No.
`
`3236505
`
`Registration Date
`
`05/01/2007
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`01/30/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of three parallel stripes extending from the rear of the head-
`wear to the top of the headwear. The dotted outline of the hat, brim and strap
`are not claimed as part of the mark and is intended only to show the position of-
`the mark.
`
`Goods/Services
`
`Class 025. First use: First Use: 1993/05/00 First Use In Commerce: 1994/01/00
`
`

`

`Headwear
`
`1674229
`
`U.S. Registration
`No.
`
`Registration Date
`
`02/04/1992
`
`Application Date
`
`01/29/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`THE BRAND WITH THE 3 STRIPES
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 1968/01/00 First Use In Commerce: 1968/01/00
`[ sport bags for general use and cross-country back-packs ]
`Class 025. First use: First Use: 1968/01/00 First Use In Commerce: 1968/01/00
`[ sport and leisure wear; namely, shorts, pants, shirts, T-shirts, jerseys, tights,
`socks, gloves, jackets, swimwear, sweaters, caps and hats, pull-overs, warm-up
`suits, rain suits, ski suits, jumpsuits, ] boots, slippers, sandals; shoes, boots and
`after ski boots for hiking andtrekking, athletic shoes and general-purpose sports
`shoes
`Class 028. First use: First Use: 1968/01/00 First Use In Commerce: 1968/01/00
`[ sports balls, rackets for tennis, squash or shuttlecock; ice and rollerskates, skis
`and ski equipment; namely, cross-country skibindings and parts thereof, cross-
`country skiing overshoes, racket covers, hand-paddles and kickboards ]
`
`U.S. Registration
`No.
`
`4910643
`
`Registration Date
`
`03/08/2016
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`02/04/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of three diagonal quadrilaterals positioned parallel to each
`other upon a contrasting background. Theshaded rectangle is not a feature of
`the mark.
`
`Goods/Services
`
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`
`

`

`Attachments
`
`Articles made of leather and imitation leather, namely backpacks, bags for gen-
`eral and sports use, carry-all bags, athletic bags, duffle bags, shoulder bags,
`sling bags, handbags, purses, tote bags, waist packs, overnight bags, knap-
`sacks, shoe bags and beach bags, wallets and key cases
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, shirts, T-shirts, sweatshirts, jerseys, pullovers, tops, vests,
`sweaters, pants, shorts, bottoms, jackets, coats, dresses, skirts, skorts, under-
`wear, bras, socks, tights, scarves, gloves, belts, wristbands, tracksuits, training
`suits, warm-up suits, athletic uniforms, swimwear, footwear, athletic footwear,
`boots, sandals, slides, caps, hats, visors, headbands
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Athletic sporting goods, namely, shinguards, soccer gloves, goalkeepers'
`gloves, knee pads and knee guards for athleticuse, leg guards; Balls for sports,
`soccer balls, basketballs, playground balls
`
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`2018.07.16 Notice of Opposition and Exhibit 1 (Mares).pdf(3383121 bytes )
`
`Signature
`
`/Nichole Davis Chollet/
`
`Name
`
`Date
`
`Nichole Davis Chollet
`
`07/16/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Serial No. 87/600,313
`
`Mark:
`
`
`
`
`
`
`
`Opposers,
`
`
`
`
`Opposition No. ______________
`
`
`Filing Date: September 7, 2017
`Publication Date: January 16, 2018
`
`adidas AG, adidas America, Inc., and adidas
`International Marketing BV,
`
`
`
` v.
`
`Jose Luis Mares Gutierrez,
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Opposers are adidas AG, a joint stock company organized under the laws of the Federal
`
`
`
`Republic of Germany with a principal place of business at Adi-Dassler-Strasse 1,
`
`Herzogenaurach, 91074, Federal Republic of Germany, adidas America Inc., a corporation
`
`organized and existing under the laws of the State of Oregon with a principal place of business at
`
`5055 N. Greeley Avenue, Portland, Oregon 97217, and adidas International Marketing B.V., a
`
`private limited liability company organized under the laws of the Netherlands with a principal
`
`place of business at Atlas Arena Offices, Afrika Building, Hoogoorddreef 9-A, 1101 BA
`
`Amsterdam Zuidoost, Netherlands (collectively, “Opposers” or “adidas”).
`
`
`
`
`- 1 -
`
`

`

`
`
`Opposers believe that they will be damaged by the issuance of a registration for the
`
`trademark shown below (“Applicant’s Mark”) as identified in Application Serial No. 87/600,313
`
`(the “Application”) owned by Jose Luis Mares Gutierrez (“Applicant”):
`
`
`
`As grounds for this opposition, Opposers allege as follows, with knowledge concerning their
`
`own acts, and on information and belief as to all other matters:
`
`1.
`
`adidas is currently, and for years has been, one of the world’s leading
`
`manufacturers of athletic footwear, sportswear, and sporting equipment. Over sixty-five years
`
`ago, adidas first placed three parallel stripes on its athletic shoes (the “Three-Stripe Mark”), and
`
`the Three-Stripe Mark came to signify the quality and reputation of adidas footwear to the
`
`sporting world early in the company’s history.
`
`2.
`
`At least as early as 1952, adidas began using the Three-Stripe Mark on footwear
`
`sold in the United States and worldwide. The Three-Stripe Mark quickly came to signify the
`
`quality and reputation of adidas footwear.
`
`3.
`
`As early as 1967, adidas began using the Three-Stripe Mark on apparel sold in the
`
`United States and worldwide.
`
`4.
`
`Over the decades, adidas has used the Three-Stripe Mark extensively in
`
`connection with a wide variety of athletic- and fitness-related goods and services, including
`
`footwear and apparel. Examples of adidas’s use of the Three-Stripe Mark are depicted on the
`
`following page:
`
`
`
`
`- 2 -
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`5.
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`In addition to its extensive use, adidas also owns numerous federal trademark
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`registrations for its Three-Stripe Mark for footwear, apparel, and sports-related goods, including
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`those shown on the following page:
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`TRADEMARK
`
`REG. NO.
`
`1,815,956
`
`FILING
`DATE/ REG.
`DATE
`March 16,
`1992
`January 11,
`1994
`
`GOODS/SERVICES
`
`Class 25: Athletic
`footwear.
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`
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`1,833,868 April 7, 1992
`May 3, 1994
`
`Class 25: Athletic
`footwear.
`
`2,278,589
`
`March 7, 1995
`September 21,
`1999
`
`Class 25: Athletic and
`leisure footwear.
`
`3,029,129
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`3,029,135
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`December 29,
`2004
`December 13,
`2005
`
`December 29,
`2004
`December 13,
`2005
`
`Class 25: Footwear.
`
`Class 25: Footwear.
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`2,909,861
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`July 28, 2003
`December 14,
`2004
`
`Class 25: Footwear,
`namely, slides.
`
`2,999,646
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`
`
`July 28, 2003
`September 27,
`2005
`
`Class 25: Footwear,
`namely, slides.
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`0,961,353 May 1, 1970
`June 19, 1973
`
`Class 25: Special
`purpose athletic shoes.
`Class 25: General
`purpose sport shoes.
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`TRADEMARK
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`REG. NO.
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`3,063,742
`
`FILING
`DATE/ REG.
`DATE
`
`March 21,
`2005
`February 28,
`2006
`
`GOODS/SERVICES
`
`
`Class 25: Pants, shorts,
`skorts, footwear, shirts,
`vests, socks, jackets,
`sweaters, headwear,
`visors, pullovers,
`rainsuits.
`
`
`Class 25: Pants, shorts,
`skorts, footwear, shirts,
`vests, socks, jackets,
`sweaters, headwear,
`visors, pullovers,
`rainsuits.
`
`
`Class 25: Footwear;
`apparel, namely, shorts,
`skorts, pants, skirts,
`sweaters, pullovers,
`coats, jackets, rain suits,
`socks, tights, gloves;
`headgear, namely, caps,
`hats, visors.
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`3,063,745
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`March 21,
`2005
`February 28,
`2006
`
`3,842,177
`
`September 9,
`2008
`August 31,
`2010
`
`3,846,203
`
`May 29, 2009
`September 7,
`2010
`
`Class 25: shirts.
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`0,870,136
`
`July 11, 1968
`May 27, 1969
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`Class 25: Athletic
`training suits.
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`2,016,963
`
`March 28,
`1995
`November 19,
`1996
`
`Class 25: Sports and
`leisure wear, namely
`jackets.
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`TRADEMARK
`
`REG. NO.
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`2,058,619
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`2,278,591
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`
`
`FILING
`DATE/ REG.
`DATE
`
`March 28,
`1995
`November 19,
`1996
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`March 28,
`1995
`September 21,
`1999
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`GOODS/SERVICES
`
`Class 25: Sports and
`leisure wear, namely
`shirts.
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`Class 25: Sports and
`leisure wear, namely,
`shorts.
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`2,284,308
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`March 28,
`1995
`October 12,
`1999
`
`Class 25: Sports and
`leisure wear, namely
`pants.
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`3,029,127
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`December 29,
`2004
`December 13,
`2005
`
`Class 25: Clothing,
`namely, T-Shirts,
`sweatshirts, jackets and
`coats.
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`3,087,329
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`December 29,
`2004
`May 2, 2006
`
`Class 25: Clothing,
`namely, shirts, t-shirts,
`sweatshirts, vests,
`jackets and coats.
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`January 30,
`2006
`December 12,
`2006
`
`January 30,
`2006
`December 12,
`2006
`
`Class 25: Headwear.
`
`Class 25: Headwear.
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`3,183,656
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`3,183,663
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`TRADEMARK
`
`REG. NO.
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`FILING
`DATE/ REG.
`DATE
`
`GOODS/SERVICES
`
`3,236,505
`
`January 30,
`2006
`May 1, 2007
`
`Class 25: headwear
`
`
`
`THE BRAND WITH THE 3
`STRIPES
`
`1,674,229
`
`January 29,
`1990
`February 4,
`1992
`
`4,910,643
`
`February 4,
`2014
`March 8, 2016
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`Class 25: Boots,
`slippers, sandals; shoes,
`boots and after ski boots
`for hiking and trekking,
`athletic shoes and
`general-purpose sports
`shoes.
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`
`Class 18: Articles made
`of leather and imitation
`leather, namely
`backpacks, bags for
`general and sports use,
`carry-all bags, athletic
`bags, duffle bags,
`shoulder bags, sling
`bags, handbags, purses,
`tote bags, waist packs,
`overnight bags,
`knapsacks, shoe bags
`and beach bags, wallets
`and key cases.
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`Class 25: Clothing,
`namely, shirts, T-shirts,
`sweatshirts, jerseys,
`pullovers, tops, vests,
`sweaters, pants, shorts,
`bottoms, jackets, coats,
`dresses, skirts, skorts,
`underwear, bras, socks,
`tights, scarves, gloves,
`belts, wristbands,
`tracksuits, training suits,
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`TRADEMARK
`
`REG. NO.
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`GOODS/SERVICES
`
`FILING
`DATE/ REG.
`DATE
`
`warm-up suits, athletic
`uniforms, swimwear,
`footwear, athletic
`footwear, boots,
`sandals, slides, caps,
`hats, visors, headbands.
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`Class 28: Athletic
`sporting goods, namely,
`shinguards, soccer
`gloves, goalkeepers’
`gloves, knee pads and
`knee guards for athletic
`use, leg guards; Balls
`for sports, soccer balls,
`basketballs, playground
`balls.
` Copies of the Certificates of Registration for each of these marks are attached collectively as
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`Exhibit 1.
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`6.
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`The above-identified registrations are valid and in full force and effect. Indeed,
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`affidavits have been filed and accepted pursuant to Sections 8 and 15 of the Lanham Act for
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`Registration Nos. 870,136, 961,353, 1,674,229, 1,815,956, 1,833,868, 2,016,963, 2,058,619,
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`2,278,589, 2,278,591, 2,284,308, 2,909,861, 2,999,646, 3,029,127, 3,029,129, 3,029,135,
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`3,063,742, 3,063,745, 3,087,329, 3,183,656, 3,183,663, 3,842,177 and 3,846,203, rendering such
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`registrations incontestable.
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`7.
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`adidas has used the Three-Stripe Mark in connection with its frequent sponsorship
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`of athletic tournaments and organizations, as well as professional athletes and collegiate sports
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`teams. For example, adidas has had longstanding relationships with the University of Nebraska,
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`the University of Louisville, Arizona State University, the University of Kansas, the University
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`of Indiana, and the University of Miami. Among many others, adidas sponsors (a) NFL stars
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`Aaron Rodgers, DeMarco Murray, Jimmy Graham, Von Miller, Sammy Watkins, and Robert
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`Griffin III; (b) NBA stars James Harden, Andrew Wiggins, Damian Lillard, Derrick Rose, and
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`John Wall; (c) baseball players Josh Harrison, Justin Upton, Kris Bryant, Carlos Gomez, and
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`Melvin Upton Jr.; (d) professional golfers Sergio Garcia, Dustin Johnson, and Justin Rose; and
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`(e) internationally famous soccer players Lionel Messi, David Beckham, and Paul Pogba. For
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`decades, adidas also has sponsored the world-famous Boston Marathon, along with many other
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`events, teams, and individuals.
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`8.
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`adidas has also used the Three-Stripe Mark in connection with its frequent
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`sponsorship of musical artists, including pop stars Katy Perry and Selena Gomez and iconic
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`rappers B.o.B, Snoop Dogg, Pharrell Williams, and Kanye West.
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`9.
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`The Three-Stripe Mark is nonfunctional, and the public recognizes and
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`understands that the Three-Stripe Mark distinguishes and identifies adidas’s merchandise.
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`Indeed, unsolicited media coverage has referred to adidas’s “signature three stripes” (Butler-
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`Young, Sheena, “The Inside Scoop on How Adidas Became One of the Industry’s Most Sought-
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`After Brands,” Footwear News, March 14, 2017), “iconic three stripes” (Reimel, Erin,
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`“Alexander Wang Announced a Major Collab With Adidas at Fashion Week,” Glamour,
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`September 11, 2016), Adidas’ signature three stripes” (Allen, Rachael, “Adidas’ New Ad
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`Campaign Is All About The Future,” Footwear News, Jan. 25, 2016), “famous Three Stripes”
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`(Schwartz, Rob, “Three Brands That Won At The World Cup,” Forbes, July 13, 2014),
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`“trademark three-stripe sneakers” (Brettman, Allan, “Adidas lifts 2012 forecast as sales in China
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`soar in Q1,” The Oregonian, May 1, 2012), “ubiquitous three stripes” (Brettman, Allan, “Going
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`‘All In’ Against Nike,” The Oregonian, March 15, 2011), “trademark three-stripe logo”
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`(Pennington, Bill, “Belts That Do More Than Hold Up Pants,” New York Times, July 27, 2009),
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`“iconic three stripes” (“Game Time,” Footwear News, June 16, 2008), “signature three stripes”
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`(Moore, Booth, “Ringing Endorsements; Form Follows Function with Much Olympic Wear, but
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`Fashion and Funding are also at Play,” L.A. Times, August 13, 2004), the “famous brand with the
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`three stripes” (Whiting, Sam, “Must Have,” San Francisco Chronicle, July 7, 2002), and the
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`“legendary Adidas three stripes” (“Coty Inc.,” Brand Strategy, September 27, 1999).
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`10.
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`For decades, adidas extensively and continuously has used and promoted the
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`Three-Stripe Mark in connection with footwear, apparel, and sports-related goods. In recent
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`years, annual sales of products bearing the Three-Stripe Mark have totaled in the billions of
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`dollars globally and in the hundreds of millions of dollars within the United States. The Three-
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`Stripe Mark has achieved international fame and tremendous public recognition.
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`11.
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`Since introducing the Three-Stripe Mark, adidas has spent millions of dollars
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`promoting the mark and products bearing the marks. For example, in March 2011, adidas
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`launched an advertising campaign in the United States “featuring Chicago Bulls guard Derrick
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`Rose, rapper B.o.B and pop singer Katy Perry, among others,” that “highlights [adidas’s] imprint
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`on the world of sports, music and fashion,” and “show[s] the breadth and depth of the Adidas
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`brand.” See Brettman, Allan, “Going ‘All In’ Against Nike,” The Oregonian, March 15, 2011.
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`Similarly, adidas launched its “Sport 15” advertising campaign, which at the time represented
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`adidas’s biggest ad spend in the United States. The campaign featured soccer superstar Lionel
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`Messi, Derrick Rose of the Chicago Bulls, and DeMarco Murray of the Philadelphia Eagles. See
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`McCarthy, Michael, “Ad of the Day: Adidas Comes Out Swinging in Big New Brand
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`Campaign,” AdWeek, February 13, 2015. adidas’s 2016 campaign featured artists such as Luka
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`Sabbat, Kyu Steed, Aleali May, Ikwa Zhao, and Reese Cooper, while touting the fame of
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`adidas’s “signature three stripes.” See Allen, Rachael, “Adidas’ New Ad Campaign is All About
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`the Future,” Footwear News, January 25, 2016. Most recently, adidas launched its “Calling All
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`Creators” campaign to highlight its position “at the intersection of sport and culture.” Oster, Erik,
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`“Adidas Brings Superstars Like Lionel Messi and Karlie Kloss Together for a Feast in Its Latest
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`Spot,” AdWeek, December 20, 2017. The advertisement features superstars from sports and
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`beyond, including FC Barcelona striker Lionel Messi, Connecticut Sun forward Chiney
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`Ogwumike, Portland Trail Blazers point guard Damian Lillard, Portland Thorns midfielder
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`Lindsey Horan, Green Bay Packers quarterback Aaron Rodgers and Houston Astros shortstop
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`Carlos Correa, rapper Pusha T, musician/producer Pharrell Williams, fashion designer Alexander
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`Wang and supermodel Karlie Kloss. As a result of adidas’s continuous and exclusive use of the
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`Three-Stripe Mark in connection with its goods and services, the mark enjoys wide public
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`acceptance and association with adidas, and has come to be recognized widely and favorably by
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`the public as indicators of the origin of adidas’s goods and services.
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`12.
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`As a result of adidas’s extensive use and promotion of the Three-Stripe Mark,
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`adidas has built up and now owns extremely valuable goodwill that is symbolized by the mark.
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`The general purchasing public in the United States has come to associate the Three-Stripe Mark
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`exclusively with adidas.
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`13.
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`Notwithstanding Opposers’ prior rights, and well after the Three-Stripe Mark
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`became famous, Applicant filed the Application, which seeks to register Applicant’s Mark for
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`“boots; shoes” in International Class 25.
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`14.
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`The United States Patent and Trademark Office published the Application for
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`opposition on January 16, 2018, and Opposers timely filed extensions of time to oppose.
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`Opposers are timely filing this Notice of Opposition.
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`15.
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`There is no issue as to priority. Opposers began using the Three-Stripe Mark in
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`commerce in connection with footwear, apparel, and related goods and services well prior to the
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`September 7, 2017 filing date of the Application or Applicant’s September 1, 2017 claimed date
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`of first use.
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`16.
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`Consumers familiar with the footwear, apparel, and related goods and services
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`long associated with the Three-Stripe Mark are likely to assume that the goods offered under
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`Applicant’s Mark originate from the same source, or that they are affiliated, connected, or
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`associated with Opposers.
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`17.
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`Applicant’s Mark, as shown in the Application, incorporates three stripes in a
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`manner that is confusingly similar to adidas’s Three-Stripe Mark in appearance and overall
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`commercial impression.
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`18.
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`The goods identified in the Application are identical to the footwear Opposers
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`have offered under the Three-Stripe Mark for decades and are closely related to the other goods
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`and services Opposers long have offered in connection with the Three-Stripe Mark.
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`19.
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`Applicant’s Mark so closely resembles the Three-Stripe Mark that the use of
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`Applicant’s Mark is likely to cause confusion, deception, or mistake as to the affiliation,
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`connection, or association of Applicant with adidas, or the origin, sponsorship, or approval of
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`Applicant’s goods by adidas in violation of Section 2(d) of the Lanham Act, 15 U.S.C. §
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`1052(d), with consequent injury to adidas and the public. Further, any defect, objection, or fault
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`found with Applicant’s goods sold under Applicant’s Mark necessarily would reflect on and
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`seriously injure adidas’s reputation.
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`20.
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`Additionally, registration of Applicant’s Mark is likely to dilute the
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`distinctiveness of the Three-Stripe Mark by eroding consumers’ exclusive identification of the
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`Three-Stripe Mark with adidas, and otherwise lessening the capacity of the Three-Stripe Mark to
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`identify and distinguish the goods and services of adidas, in violation of Section 43(c)(1) of the
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`Lanham Act, 15 U.S.C. § 1125(c)(1).
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`21.
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`If Applicant is granted registration for the opposed Application, it would obtain a
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`prima facie exclusive right to use Applicant’s Mark. Such a registration would be a source of
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`damage and injury to Opposers.
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`WHEREFORE, Opposers therefore request that this opposition be sustained and that the
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`registration of Application Serial No. 87/600,313 be denied.
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`The Commissioner is authorized to charge Kilpatrick Townsend & Stockton LLP’s Deposit
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`Account No. 20-1430 if there is a deficiency in the enclosed filing fee. Please direct all
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`correspondence regarding this proceeding to Nichole Chollet at the address and telephone
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`number identified below.
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`DATED: July 16, 2018
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`Respectfully submitted,
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`KILPATRICK TOWNSEND & STOCKTON LLP
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`By: /Nichole Davis Chollet/
` R. Charles Henn Jr.
` Nichole Davis Chollet
`Kenesia Cook
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
`
`Dana Breitman
`The Grace Building
`1114 Avenue of the Americas
`New York, NY 10036-7703
`Telephone: (212) 775-8700
`Facsimile: (212) 775-8800
`
`Attorney