Adidas has filed a request opposing trademark application Nos. 86/960,133 and 86/960,138 filed by U.S. automaker Tesla in classes 14, 18 and 25. The marks which consist of three equal-length horizontal stylized lines were filed at the United States Patent and Trademark Office (USPTO) in 2016.
“Despite the long-standing prior rights of adidas in the 3-Stripes Mark, on August 9, 2016, Applicant filed Applications Serial Nos. 86/960,133 and 86/960,138 which both seek to register three-stripe designs as trademarks”, adidas noted in the Notice of Opposition.”
The marks cover t-shirts, shirts, jackets, gloves, scarves, hats, sports hats, caps, sun visors, hats for infants, babies, toddlers and children; infant and toddler one piece clothing and infant wear.
In support of its opposition, Adidas states that it has used the ‘three-stripe’ mark since as early as 1952 in the same classes as Tesla seeks to register its trademark application.
“2. At least as early as 1952, adidas used its now iconic 3-Stripes Mark on footwear in the United States.
3. adidas expanded its use of the adidas 3-Stripes Mark to apparel and, since 1967, has used the 3-Stripes Mark in the United States on a variety of products, 2 annually encompassing thousands of styles of footwear and clothing for men, women and children, backpacks and sporting goods, among other products, and the 3-Stripes Mark quickly came to signify the quality and reputation of adidas merchandise to the sporting world very early in the company’s history.”
Adidas also stated that its ‘three-stripe’ mark is “distinctive and famous” because of its “extensive” use on products, advertising and televised sports events.
30. In view of the similarities between the adidas 3-Stripes Mark and the threestripe design common to the marks of both of Applicant’s Applications and the fact that their respective goods and services overlap or are otherwise closely related, there is a likelihood that Applicant’s Goods will be perceived as being sponsored by or affiliated with adidas.
31. The three-stripe design common to both of Applicant’s Marks so resembles adidas’s 3-Stripes Mark, as to be likely to cause confusion, or to cause mistake, or to deceive as to the source, origin or sponsorship of Applicant’s Goods within the meaning of Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
32. The registrations of Applicant’s Marks in connection with Applicant’s Goods will damage adidas in the advertising and sale of its goods by causing a likelihood of confusion.
Adidas believes it will be damaged by the likelihood of confusion, mistake or deception, and by the dilution likely to be caused and engendered by Tesla’s registration or use of the marks.