Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1172975
`11/17/2021
`
`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
`
`11/17/2021
`
`ADI-DASSLER-STRASSE 1
`HERZOGENAURACH, 91074
`GERMANY
`
`Name
`
`adidas America, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`11/17/2021
`
`5055 N. GREELEY AVENUE
`PORTLAND, OR 97217
`UNITED STATES
`
`NICHOLE DAVIS CHOLLET
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 PEACHTREE STREET, NE
`SUITE 2800
`ATLANTA, GA 30309
`UNITED STATES
`Primary Email: nchollet@ktslaw.com
`Secondary Email(s): kcook@ktslaw.com, aweathersby@ktslaw.com, kteil-
`haber@ktslaw.com, tmadmin@ktslaw.com
`4048156500
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88387074
`
`Publication date
`
`07/20/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`11/17/2021
`
`Opposition Peri-
`od Ends
`
`11/17/2021
`
`XIAMEN HYF IMPORT&EXPORT CO., LTD.
`ONE OF NO. 24
`DUNAN ROAD, JIMEI DISTRICT
`XIAMEN, 361000
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2019/01/08 First Use In Commerce: 2019/03/24
`
`

`

`All goods and services in the class are opposed, namely: Boots for sport; Climbing shoes; Clothing
`for wear in wrestling games; Cyclists' jerseys; Football boots; Football shoes; Gymnastic shoes; Judo
`suits; Karate uniforms; Leggings; Leotards; Ski boots; Sports jerseys; Sports shirts; Sports shoes;
`Sports singlets; Sweat-absorbent underclothing; Swim trunks; Swimming caps;Swimming trunks;
`Swimsuits; Tee-shirts;Track and field shoes; Vests; Waterproof jackets and pants
`
`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.
`
`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
`
`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 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
`
`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 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
`
`2278591
`
`Application Date
`
`03/28/1995
`
`

`

`No.
`
`Registration Date
`
`09/21/1999
`
`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 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
`
`Registration Date
`
`10/12/1999
`
`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 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
`
`Design Mark
`
`NONE
`
`Application Date
`
`12/29/2004
`
`Foreign Priority
`Date
`
`NONE
`
`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
`
`NONE
`
`Application Date
`
`12/29/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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
`
`The mark consists of three parallel stripes extending around the headwear.
`
`

`

`Goods/Services
`
`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
`
`Design Mark
`
`NONE
`
`Application Date
`
`01/30/2006
`
`Foreign Priority
`Date
`
`NONE
`
`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
`
`NONE
`
`Application Date
`
`01/30/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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
`
`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
`
`Application Date
`
`04/07/1992
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`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
`
`NONE
`
`Application Date
`
`12/29/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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
`
`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 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
`
`NONE
`
`Application Date
`
`07/28/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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
`
`NONE
`
`Application Date
`
`05/01/1970
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`
`1674229
`
`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
`
`NONE
`
`Application Date
`
`02/04/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`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.
`
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`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
`
`72302478#TMSN.png( bytes )
`74653296#TMSN.png( bytes )
`74653301#TMSN.png( bytes )
`74653303#TMSN.png( bytes )
`74653302#TMSN.png( bytes )
`78539470#TMSN.png( bytes )
`78539504#TMSN.png( bytes )
`78802316#TMSN.png( bytes )
`78802551#TMSN.png( bytes )
`78802476#TMSN.png( bytes )
`74255912#TMSN.png( bytes )
`74263512#TMSN.png( bytes )
`74644822#TMSN.png( bytes )
`78539629#TMSN.png( bytes )
`78539734#TMSN.png( bytes )
`76535511#TMSN.png( bytes )
`76535367#TMSN.png( bytes )
`72358532#TMSN.png( bytes )
`74023435#TMSN.png( bytes )
`79148498#TMSN.png( bytes )
`
`

`

`2021.11.17 Notice of Opposition_88387074_Exhibit 1.pdf(2019769 bytes )
`
`Signature
`
`/Nichole Davis Chollet/
`
`Name
`
`Date
`
`NICHOLE DAVIS CHOLLET
`
`11/17/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Serial No. 88/387,074
`
`
`
`
`
`
`Mark:
`
`Filing Date: April 16, 2019
`Publication Date: July 20, 2021
`
`
`
`
`Opposer,
`
`adidas AG and adidas America Inc.,
`
`
`
` v.
`
`Xiamen HYF Import & Export Co., Ltd.,
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`Opposition No. ______________
`
`
`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 and 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 (collectively, “Opposers” or “adidas”).
`
`Opposer believes that it will be damaged by the issuance of a registration for the
`
`trademark shown below (“Applicant’s Mark”) as identified in Application Serial No. 88/387,074
`
`(the “Application”) owned by Xiamen HYF Import & Export Co., Ltd. (“Applicant”):
`
`

`

`
`
`
`
`As grounds for this opposition, Opposer alleges as follows, with knowledge concerning
`
`its 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. The Three-Stripe Mark quickly came to signify the quality and
`
`reputation of adidas apparel as well.
`
`4.
`
`Over the decades, adidas has used the Three-Stripe Mark extensively in
`
`connection with a wide variety of sports-, athletic-, and fitness-related goods and services,
`
`including footwear, apparel, and related goods. Examples of adidas’s use of the Three-Stripe
`
`Mark are depicted on the following page:
`
`
`
`2
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5.
`
`In addition to its common-law rights in the Three-Stripe Mark based on its
`
`extensive use of the mark, adidas owns numerous federal trademark registrations for its Three-
`
`Stripe Mark for footwear, apparel, and related goods, including those shown on the following
`
`pages:
`
`
`
`3
`
`

`

`TRADEMARK
`
`REG. NO.
`
`DATE/ REG.
`
`GOODS/SERVICES
`
`FILING
`
`DATE
`
`0,870,136
`
`July 11, 1968
`May 27, 1969
`
`Class 25: Athletic
`training suits.
`
`
`
`
`
`
`
`2,016,963
`
`2,058,619
`
`March 28,
`1995
`November 19,
`1996
`
`March 28,
`1995
`November 19,
`1996
`
`Class 25: Sports and
`leisure wear, namely
`jackets.
`
`Class 25: Sports and
`leisure wear, namely
`shirts.
`
`2,278,591
`
`March 28,
`1995
`September 21,
`1999
`
`Class 25: Sports and
`leisure wear, namely,
`shorts.
`
`2,284,308
`
`March 28,
`1995
`October 12,
`1999
`
`Class 25: Sports and
`leisure wear, namely
`pants.
`
`3,029,127
`
`December 29,
`2004
`December 13,
`2005
`
`Class 25: Clothing,
`namely, T-Shirts,
`sweatshirts, jackets and
`coats.
`
`
`
`
`
`
`
`
`
`4
`
`

`

`TRADEMARK
`
`REG. NO.
`
`DATE/ REG.
`
`GOODS/SERVICES
`
`FILING
`
`DATE
`
`3,087,329
`
`December 29,
`2004
`May 2, 2006
`
`Class 25: Clothing,
`namely, shirts, t-shirts,
`sweatshirts, vests,
`jackets and coats.
`
`3,183,656
`
`3,183,663
`
`January 30,
`2006
`December 12,
`2006
`
`January 30,
`2006
`December 12,
`2006
`
`Class 25: Headwear.
`
`Class 25: Headwear.
`
`
`
`
`
`
`
`3,236,505
`
`January 30,
`2006
`May 1, 2007
`
`Class 25: headwear
`
`1,815,956
`
`March 16,
`1992
`January 11,
`1994
`
`Class 25: Athletic
`footwear.
`
`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.
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`

`TRADEMARK
`
`REG. NO.
`
`DATE/ REG.
`
`GOODS/SERVICES
`
`FILING
`
`DATE
`
`December 29,
`2004
`December 13,
`2005
`
`December 29,
`2004
`December 13,
`2005
`
`3,029,129
`
`3,029,135
`
`
`
`
`
`Class 25: Footwear.
`
`Class 25: Footwear.
`
`2,909,861
`
`July 28, 2003
`December 14,
`2004
`
`Class 25: Footwear,
`namely, slides.
`
`2,999,646
`
`
`
`July 28, 2003
`September 27,
`2005
`
`Class 25: Footwear,
`namely, slides.
`
`0,961,353
`
`May 1, 1970
`June 19, 1973
`
`
`
`
`
`
`
`
`
`Class 25: Special
`purpose athletic shoes.
`Class 25: General
`purpose sport shoes.
`
`
`Class 25: Boots,
`slippers, sandals; shoes,
`boots and after ski
`boots for hiking and
`trekking, athletic shoes
`and general-purpose
`sports shoes.
`
`
`Class 18: Articles made
`of leather and imitation
`leather, namely
`backpacks, bags for
`general and sports use,
`carry-all bags, athletic
`
`THE BRAND WITH THE 3
`STRIPES
`
`1,674,229
`
`January 29,
`1990
`February 4,
`1992
`
`4,910,643
`
`February 4,
`2014
`March 8, 2016
`
`
`
`6
`
`
`
`

`

`TRADEMARK
`
`REG. NO.
`
`DATE/ REG.
`
`GOODS/SERVICES
`
`FILING
`
`DATE
`
`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.
`
`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, warm-up suits,
`athletic uniforms,
`swimwear, footwear,
`athletic footwear, boots,
`sandals, slides, caps,
`hats, visors, headbands.
`
`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 or Registration for each of these marks are attached collectively as
`
`Exhibit 1.
`
`
`
`7
`
`

`

`6.
`
`The above-identified registrations are valid and in full force and effect. Indeed,
`
`affidavits have been filed and accepted pursuant to Sections 8 and 15 of the Lanham Act for
`
`Registration Nos. 870,136, 961,353, 1,674,229, 1,815,956, 1,833,868, 2,016,963, 2,058,619,
`
`2,278,589, 2,278,591, 2,284,308, 2,909,861, 2,999,646, 3,029,127, 3,029,129, 3,029,135,
`
`3,087,329, 3,183,656, and 3,183,663 rendering such registrations incontestable.
`
`7.
`
`adidas has used the Three-Stripe Mark in connection with its frequent sponsorship
`
`of athletic tournaments and organizations, as well as professional athletes and collegiate sports
`
`teams. For example, adidas has had longstanding relationships with the University of Nebraska,
`
`the University of Louisville, Arizona State University, the University of Kansas, the University
`
`of Indiana, and the University of Miami. Among many others, adidas sponsors (a) NFL stars Von
`
`Miller, Superbowl 50 MVP and an eight-time selection for the Pro Bowl, and Patrick Mahomes,
`
`Superbowl 54 MVP, 2018 NFL MVP and two-time selection for the Pro Bowl; (b) NBA stars
`
`James Harden and John Wall; (c) professional golfers Sergio Garcia and Dustin Johnson; and (d)
`
`soccer superstars Lionel Messi and Paul Pogba. Similarly, for more than a decade, adidas has
`
`sponsored the world-famous Boston Marathon, along with many other events, teams, individuals.
`
`8.
`
`adidas has also used the Three-Stripe Mark in connection with its frequent
`
`sponsorship and collaborations with musical artists, including pop stars Beyoncé Knowles, Katy
`
`Perry and Selena Gomez and iconic rappers B.o.B, Snoop Dogg, DJ Kerwin Frost, and Kanye
`
`West and iconic fashion brands such as Fiorucci, Missoni, and Alexander Wang.
`
`9.
`
`The Three-Stripe Mark is nonfunctional, and the public recognizes and
`
`understands that the Three-Stripe Mark distinguishes and identifies adidas’s merchandise.
`
`Indeed, unsolicited media coverage has referred to adidas’s “signature three-stripe logo” (“The
`
`History of The Three-Stripe”, Feature.com, August 18, 2020), “iconic trio of stripes” (Tschorn,
`
`
`
`8
`
`

`

`Adam, “Timeline: Highlights from a Century of Signature Kicks,” Los Angeles Times, February
`
`14, 2019), “famous Adidas three stripes” (Pantorno, Joe, “Check out Yankees Aaron Judge
`
`Mother’s Day Cleats,” Metro - New York, May 10, 2018), “signature three stripes” (Butler-
`
`Young, Sheena, “The Inside Scoop on How Adidas Became One of the Industry’s Most Sought-
`
`After Brands,” Footwear News, March 14, 2017), “iconic three stripes” (Reimel, Erin,
`
`“Alexander Wang Announced a Major Collab With Adidas at Fashion Week,” Glamour,
`
`September 11, 2016), “famous Three Stripes” (Schwartz, Rob, “Three Brands That Won At The
`
`World Cup,” Forbes, July 13, 2014), “trademark three-stripe sneakers” (Brettman, Allan,
`
`“Adidas lifts 2012 forecast as sales in China soar in Q1,” The Oregonian, May 1, 2012),
`
`“ubiquitous three stripes” (Brettman, Allan, “Going ‘All In’ Against Nike,” The Oregonian,
`
`March 15, 2011), “trademark three-stripe logo” (Pennington, Bill, “Belts That Do More Than
`
`Hold Up Pants,” New York Times, July 27, 2009), “iconic three stripes” (“Game Time,”
`
`Footwear News, June 16, 2008), “signature three stripes” (Moore, Booth, “Ringing
`
`Endorsements; Form Follows Function with Much Olympic Wear, but Fashion and Funding are
`
`also at Play,” L.A. Times, August 13, 2004), the “famous brand with the three stripes” (Whiting,
`
`Sam, “Must Have,” San Francisco Chronicle, July 7, 2002), and the “legendary Adidas three
`
`stripes” (“Coty Inc.,” Brand Strategy, September 27, 1999).
`
`10.
`
`For decades, adidas extensively and continuously has used and promoted the
`
`Three-Stripe Mark in connection with footwear, apparel, and related goods. In recent years,
`
`annual sales of products bearing the Three-Stripe Mark have totaled in the billions of dollars
`
`globally and in the hundreds of millions of dollars within the United States. The Three-Stripe
`
`Mark has achieved international fame and tremendous public recognition.
`
`
`
`9
`
`

`

`11.
`
`Since introducing the Three-Stripe Mark, adidas has spent millions of dollars
`
`promoting the Three-Stripe Mark and products bearing the mark. For example, in March 2011,
`
`adidas launched an advertising campaign in the United States “featuring Chicago Bulls guard
`
`Derrick Rose, rapper B.o.B and pop singer Katy Perry, among others,” that “highlights [adidas’s]
`
`imprint on the world of sports, music and fashion,” and “show[s] the breadth and depth of the
`
`Adidas brand.” See Brettman, Allan, “Going ‘All In’ Against Nike,” The Oregonian, March 15,
`
`2011. Similarly, adidas launched its “Sport 15” advertising campaign, which at the time
`
`represented adidas’s biggest ad spend in the United States. The campaign featured soccer
`
`superstar Lionel Messi, Derrick Rose of the Chicago Bulls, and DeMarco Murray of the
`
`Philadelphia Eagles. See McCarthy, Michael, “Ad of the Day: Adidas Comes Out Swinging in
`
`Big New Brand Campaign,” AdWeek, February 13, 2015. adidas’s 2016 campaign featured
`
`artists such as Luka Sabbat, Kyu Steed, Aleali May, Ikwa Zhao, and Reese Cooper, while touting
`
`the fame of adidas’s “signature three stripes.” See Allen, Rachael, “Adidas’ New Ad Campaign
`
`is All About the Future,” Footwear News, January 25, 2016. In 2017, adidas launched its
`
`“Calling All Creators” campaign to highlight its position “at the intersection of sport and
`
`culture.” See Oster, Erik, “Adidas Brings Superstars Like Lionel Messi and Karlie Kloss
`
`Together for a Feast in Its Latest Spot,” AdWeek, December 20, 2017. The advertisement
`
`featured superstars from sports and beyond, including FC Barcelona striker Lionel Messi,
`
`Connecticut Sun forward Chiney Ogwumike, Portland Trail Blazers point guard Damian Lillard,
`
`Portland Thorns midfielder Lindsey Horan, Green Bay Packers quarterback Aaron Rodgers and
`
`Houston Astros shortstop Carlos Correa, rapper Pusha T, musician/producer Pharrell Williams,
`
`fashion designer Alexander Wang and supermodel Karlie Kloss. As an official sponsor of the
`
`2018 World Cup, adidas introduced a “flashy campaign once again sitting at the intersection of
`
`
`
`10
`
`

`

`sport, culture and music,” titled “Creativity is The Answer.” The advertisement involved “56 a-
`
`list creatives,” including Lionel Messi, Caroline Wozniacki, Karlie Kloss, Pharrell Williams,
`
`Aaron Judge, and Justin Turner. See McCarthy, John, “Adidas says it ‘re-engineered’ advertising
`
`with ‘Creativity is The Answer’ World Cup drive,” The Drum, June 04, 2018. In 2019, adidas
`
`recruited tennis star Billie Jean King and ESPN host Maria Taylor to “promote visibility of
`
`women in sport” with its “She Breaks Barriers” campaign. This advertisement also “features
`
`athletes Rahaf Khatib, Keni Harrison, Becky Sauerbrunn, and Layshia Clarendon.” See Smith,
`
`Jordan, “Adidas Launches Campaign for Equal Media Representation in Sport,” Runner’s World,
`
`March 12, 2019. In 2020, adidas kicked off a campaign “Change Is a Team Sport,” directed by
`
`and starring Jonah Hill, which emphasizes the power of teamwork and includes other icons such
`
`as K-pop’s super girl group BLACKPINK, chart-topping producer-singer Pharrell Williams,
`
`Brazil’s leading diva Anitta, Hong Kong-born singer-rapper Jackson Wang, DJ Kerwin Frost,
`
`Japanese fashion designer Nigo, professional gamer Ninja, American actress Yara Shahidi, and
`
`French soccer player Paul Pogba. adidas’s 2021 “Impossible is Nothing” campaign is a
`
`documentary-style work that extensively features the Three-Stripe Mark throughout on apparel
`
`and footwear and is inclusive of people from different sports, genders, ethnicities, and
`
`nationalities, including Siya Kolisi, the first Black captain of the South African rugby team,
`
`Tiffany Abreu, the first trans woman to play in Brazilian Volleyball Superliga, Cyrill Gutsch, the
`
`award-winning designer and brand/product developer of Parley, Ranveer Singh, awarding-
`
`winning Hindi film actor, Mohamed Salah Hamed Mahrous Ghaly, Egyptian professional
`
`footballer for Liverpool and captain of the Egypt national team, and numerous WBNA
`
`superstars, including Candace Parker, Nneka Ogwumike, Layshia Clarendon, and Angel
`
`McCoughtry.
`
`
`
`11
`
`

`

`12.
`
`As a result of adidas’s continuous and exclusive use of the Three-Stripe Mark in
`
`connection with its goods, the mark enjoys wide public acceptance and association with adidas,
`
`and has come to be recognized widely and favorably by the public as an indicator of the origin of
`
`adidas’s goods.
`
`13.
`
`Notwithstanding adidas’s prior rights, and well after the Three-Stripe Mark
`
`became famous, Applicant filed the Application to register Applicant’s Mark for use in
`
`connection with “Boots for sport; Climbing shoes; Clothing for wear in wrestling games;
`
`Cyclists' jerseys; Football boots; Football shoes; Gymnastic shoes; Judo suits; Karate uniforms;
`
`Leggings; Leotards; Ski boots; Sports jerseys; Sports shirts; Sports shoes; Sports singlets; Sweat-
`
`absorbent underclothing; Swim trunks; Swimming caps; Swimming trunks; Swimsuits; Tee-
`
`shirts; Track and field shoes; Vests; Waterproof jackets and pants” in International Class 25.
`
`14.
`
`The United States Patent and Trademark Office published the Application for
`
`opposition on July 20, 2021, and adidas timely filed an extension of time to oppose. adidas is
`
`timely filing this Notice of Opposition.
`
`15.
`
`There is no issue as to priority. adidas began using the Three-Stripe Mark in
`
`commerce in connection with footwear, apparel, and related goods well prior to Applicant’s
`
`April 16, 2019 filing date and Applicant’s claimed date of first use of March 24, 2019.
`
`16.
`
`Consumers familiar with the goods long associated with the Three-Stripe Mark
`
`are likely to assume that the goods offered under Applicant’s Mark originate from the same
`
`source, or that they are affiliated, connected, or associated with adidas.
`
`17.
`
`Applicant’s Mark, as shown in the Application, incorporates three stripes in a
`
`manner that is confusingly similar to the Three-Stripe Mark in appearance and overall
`
`commercial impression.
`
`
`
`12
`
`

`

`18.
`
`The goods identified in the Application are identical or highly related to the goods
`
`adidas long has offered in connection with the Three-Stripe Mark.
`
`19.
`
`Applicant’s Mark so closely resembles the previously used, and previously
`
`registered, Three-Stripe Mark that the use and registration of Applicant’s Mark is likely to cause
`
`confusion, deception, or mistake as to the affiliation, connection, or association of Applicant
`
`with adidas, or the origin, sponsorship, or approval of Applicant’s goods by adidas in violation of
`
`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), with consequent injury to adidas and the
`
`public. Further, any defect, objection, or fault found with Applicant’s goods sold under
`
`Applicant’s Mark necessarily would reflect on and seriously injure adidas’s reputation.
`
`20.
`
`Additionally, registration of Applicant’s Mark is likely to dilute the
`
`distinctiveness of the Three-Stripe Mark by eroding consumers’ exclusive identification of the
`
`Three-Stripe Mark with adidas, and otherwise lessening the capacity of the Three-Stripe Mark to
`
`identify and distinguish the goods of adidas, in violation of Section 43(c)(1) of the Lanham Act,
`
`15 U.S.C. § 1125(c)(1).
`
`21.
`
`If Applicant is granted registration for the opposed Application, it would obtain a
`
`prima facie exclusive right to use Applicant’s Mark. Such registration would be a source of
`
`damage and injury to Opposer.
`
`WHEREFORE, Opposers request that this opposition be sustained and that the
`
`registration of Application Serial No. 88/387,074 be refused.
`
`The Commissioner is authorized to charge Kilpatrick Townsend & Stockton LLP’s
`
`Deposit Account No. 20-1430 if there is a deficiency in the enclosed filing fee. Please direct all
`
`correspondence regarding this proceeding to Nichole Chollet at the address and telephone
`
`number identified below.
`
`
`
`13
`
`

`

`DATED: November 17, 2021
`
`Respectfully submitted,
`
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`KILPATRICK TOWNSEND & STOCKTON LLP
`
`By: /Nichole Davis Chollet/
` Nichole Davis Chollet
`Kenesia Cook
`Alex Weathersby
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
`Attorneys for Opposers
`
`CERTIFICATE OF TRANSMITTAL
`
`I hereby certify that a true copy of the foregoing Notice of Opposition is being f