On April 8, 2015, Adidas filed suit against Marc by Marc Jacobs (“Marc”) in the United States District Court of Oregon for trademark infringement, unfair competition, trademark dilution, and deceptive trade practices based on Marc’s use of a four stripe pattern on sweaters in its autumn/winter 2014 collection, which allegedly infringes on Adidas’ “Three-Stripe Mark.” See comparison below. In its complaint, Adidas claims that Marc’s “use of confusingly similar imitations of adidas’s Three-Stripe Mark is likely to deceive, confuse, and mislead purchasers and prospective purchasers into believing that the apparel sold by Marc Jacobs is manufactured by, authorized by, or in some manner associated with adidas, which it is not.”

Adidas claims that it has used the “Three-Stripe Mark” on apparel sold in the U.S. and worldwide since as early as 1967. Adidas further support its claims based on its numerous incontestable federal trademark registrations, which includes Reg. No. 2,058,619, issued on May May 6, 1997, for the “Three-Stripe Mark,” for “sports and leisure wear, namely shirts.”

An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. If the owner of the mark can establish that the mark is incontestable, the mark will be presumed valid unless another party can establish one or more of the following:

• The registration or the incontestable right to use the mark was obtained by fraud.
• The registrant has abandoned the mark.
• The mark is used to misrepresent the source of its goods or services.
• The infringing mark is an individual’s name used in his or her own business, or is otherwise prohibited or reserved under the Lanham Act.
• The infringing mark was used in commerce first—before the incontestable mark’s registration.
• The infringing mark was registered first.
• The mark is being used to violate the antitrust laws of the United States.

Although nothing is guaranteed in court, it appears that Marc will have an uphill battle defending itself against Adidas since, at first glance, it appears that even Sue Sylvester would wear either of the above track jacket or sweater.