An Oregon district judge last fall awarded Adidas $65.3 million in its case against Collective’s Payless ShoeSource division for trademark infringement on the athletic brand’s three-stripe branding — a significant decrease from an earlier judgment of $305 million.
Both parties have submitted notices of intent to appeal in the U.S. Court of Appeals for the Ninth Circuit. On Feb. 2, Payless filed an amended notice of appeal on “each and every part” of the original district court ruling, and Adidas filed an amended notice of cross appeal on March 23.
While lawyers have yet to lay out the specifics of the filings, another Collective Brands division, The Stride Rite Corp., under its SR Holdings Inc. subsidiary, has filed an action before the U.S. Trademark Trials and Appeal Board requesting the cancellation of two Adidas trademark registrations for the three-stripe design.
According to a statement from Greenberg Traurig LLP attorney Harley Lewin, who is representing SRH, “Adidas, in 1992, made what SRH believes to be false and misleading statements in its trademark applications to secure the registrations. SRH believes the U.S. Patent and Trademark office relied on the false statements when it permitted the registrations to go forward.”
Adidas’ Vanessa Backman, associate general counsel for Group Intellectual Property, said, “We believe that the cancellation proceeding initiated by SR Holdings is without merit and have filed a motion to dismiss the action.”
The action is not the first time the two companies have battled over trademarks. Last April, Adidas filed an action before the U.S. Trademark Trials and Appeal Board requesting SRH’s cancellation of a footwear design trademarked in 1997. That case is still pending.
Adidas also is pursuing legal battles internationally. On April 3, the company and its Canadian counterpart, Adidas Canada Ltd., filed a lawsuit against Topeka, Kan.-based Payless in the Federal Court of Canada. As with Adidas’ previous allegations against Payless in the U.S., the suit centers around what Adidas claims is infringement of its trademarked three-stripe design.
Although Collective declined to comment on its U.S. cases, the company did verbalize its stance on the Canadian suit. “There was no reason for Adidas to have filed the lawsuit which is not constructive and appears intended more to generate publicity,” said a spokeswoman. “In our point of view, it is a waste of the Court’s time. Payless had already confirmed to Adidas that it would not sell in Canada the shoes found to be infringing in the U.S. litigation pending the outcome of the appeal in that litigation. There were less than 1,000 pairs of such shoes in stores in Canada when Payless removed them in February.”