Brooks Brothers Group Inc. is fighting back against Brooks Sports Inc. over the right to the “Brooks” moniker.
In a filing yesterday in U.S. District Court in the Western District of Washington, Brooks Brothers Group denied Brooks Sports’ claims of trademark infringement — accusing the sporting goods brand of violating a 40-year-old trademark coexistence agreement.
“This dispute arises out of Brooks Sports’ bad-faith breach of a long-standing coexistence agreement with Brooks Brothers and Brooks Sports’ willful infringement of Brooks Brothers’ trademark rights,” Brooks Brothers wrote in yesterday’s filing.
Brooks Sports filed a suit last month asking a judge to bar Brooks Brothers from using the “Brooks” name without “Brothers” attached. The athletic apparel and shoe brand argues that it is associated with the name “Brooks” by itself — alleging that Brooks Brothers’ use of the moniker could result in “public confusion and dilution” of the name. In a statement to FN, Brooks Sports CEO Jim Weber said: “We strongly believe that consumers know us as Brooks and have known us as Brooks for more than 100 years. The other party is known as Brooks Brothers.”
“We stand by our position that Brooks Brothers Group, Inc. is in breach of contract, and engaging in unfair competition and trademark infringement,” Weber continued. “We will continue to aggressively protect our intellectual property and defend the brand that runners and other consumers worldwide know and trust.”
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Brooks Brothers and Brooks Sports reached a trademark coexistence agreement — a contract that allows two trademark holders to use similar marks with certain limitations — in 1980. Under the terms of the agreement, Brooks Sports can use the name “Brooks” solo for athletic shoes; for athletic clothing under the agreement, the sports label would have to combine the name with a logo or another word.
Brooks Sports took legal action last month in response to a Dec. 30 trademark filing from Brooks Brothers. The ready-to-wear-brand applied for to use the “Brooks” name alone on eight categories of products, including accessories such as duffel and sport bags as well as retail store services that would feature apparel, sporting goods and athletic accessories.
Brooks Brothers’ use of the “Brooks” name, Brooks Sports wrote in its February filing, would “confuse the public, dilute the Brooks [Sports] marks, ride on Brooks [Sports]’ coattails for establishing its reputation in the area of activewear and athletic footwear and apparel, violate the parties’ coexistence agreement and damage [Brooks Sports].” The sporting goods label is seeking injunctive and monetary relief.
But Brooks Brothers, founded in 1818, argues that ” the name Brooks has become synonymous with Brooks Brothers” as a result of its “long history and widespread fame.” In yesterday’s filing, the heritage clothier denied that Brooks Sports’ case had any merit — arguing that the sportswear brand breached the 1980 agreement by filing trademarks for and selling clothing with the solo use of “Brooks” sans a logo or second term.