Adidas has initiated a trademark battle with FC Barcelona, it was revealed yesterday. The German sportswear giant alleges that FC Barcelona's pending application for registration should be denied, as FC Barcelona's mark that "consists of a square containing seven vertical stripes (the 1st, 3rd, 5th and 7th stripes from the left are blue, and the remaining three stripes are garnet)" – is far too similar to its own three-stripe trademark, according to the opposition document (no. 91230938) that the German brand filed with the U.S. Patent and Trademark Office last week.
Adidas Complain to U.S. Patent and Trademark Office About the Design of Barcelona's Nike Home Shirt
Adidas' Three Stripe Mark (left) & FC Barcelona's Seven Strip Mark (right).
FC Barcelona filed to register its seven-striped mark in May 2015 and when the USPTO published the mark in the Official Gazette roughly a year later, Adidas responded by filing to oppose the registration of the trademark.
Adidas states in its Notice of Opposition: "The Three-Stripe Adidas trademark ["Three-Stripe Mark"] is well-known and famous and has been for many years. It is particularly well known among professional soccer players, fans and consumers of soccer apparel."
The German brand continues: "Since introducing the Three-Stripe Mark [in 1952], Adidas has spent millions of dollars promoting the mark and products bearing the mark. As a result of Adidas' extensive use and promotion of the Three-Stripe Mark, Adidas has built up and now owns extremely valuable goodwill that is symbolized by the mark. The purchasing public has come to associate the Three-Stripe Mark with Adidas."
"Notwithstanding prior rights, and well after the Three-Stripe Mark became famous, Barcelona filed to register "its own seven-stripe trademark for paper goods, clothing, footwear and headwear, various types of sports equipment, and other goods. Adidas claims that FC Barcelona's seven-stripe trademark "incorporates parallel stripes in a manner confusingly similar to the Three-Stripe Mark in appearance and overall commercial impression."
Barcelona's mark would cause confusion about an association of FC Barcelona with Adidas
According to Adidas, FC Barcelona's mark would so closely resemble its own Three-Stripe Mark that the soccer team's trademark "is likely to cause confusion, deception, or mistake as to the affiliation, connection, or association of FC Barcelona with Adidas," the key issue in a trademark infringement matter. Adidas also claims that if FC Barcelona is permitted to federally register its mark, that will "erode consumers' exclusive identification of the Three-Stripe Mark with Adidas, and otherwise lessen the capacity of the Three-Stripe Mark to identify and distinguish the goods of Adidas."
Finally, Adidas noted: "Consumers familiar with the footwear and apparel long associated with Adidas' Three-Stripe Mark are likely to assume that the goods in Class 25 [footwear and apparel] and Class 28 [sporting goods/equipment] offered under FC Barcelona's trademark originate from the same source, or that they are affiliated, connected, or associated with Adidas." As a result, "any defect, objection, or fault found with FC Barcelona's products marketed under the FC Barcelona trademark necessarily would reflect on and seriously injure Adidas's reputation."
Therefore, Adidas is asking the USPTO to refrain from awarding FC Barcelona federal registration in connection with its seven-stripe trademark, which could even force the Catalan giants to change the design of the 2016-17 home jersey.
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