Adidas really wants to keep diagonal stripes to itself, or More fun with declaratory judgment actions

Posted by Charles Colman

Last week, LAW OF FASHION discussed Adidas's lawsuit against Lands' End over various stripe patterns in the defendant's shoe designs.  In the same post, LOF explained that cease-and-desist letters can "backfire," sometimes prompting the letter's recipient to file a declaratory judgment action in its preferred forum.  This week, the two topics converge nicely in a federal judge's ruling that roller-skate manufacturer Riedell is entitled to proceed with its declaratory judgment suit in Minnesota, its home state -- and that Adidas must stop pursuing its later-filed case against Riedell in Oregon, Adidas's home turf.  (We're going with traditional capitalization here, "adidas" be damned.)  At issue, again, is a two-stripe design on the side of Riedell's skates, which the company alleges it has been using since 1971.

Assuming the allegation is true, why did Adidas wait so long to take action?  After all, big companies know that unreasonably delay can be fatal in the trademark context.  The Portland Business Journal theorizes that Riedell may have been off Adidas's radar until Ellen Page laced up the company's skates in the 2009 roller derby movie Whip It.  It's also possible that Adidas first took notice of Riedell in May 2010, when the skate company sought a trademark on its two-stripe design.  (Many trademark owners monitor newly published marks for anything of concern; Adidas is apparently among them, as it contested Riedell's attempted registration.)

In any event, it looks like this dispute is going to be adjudicated in Minnesota, whether Adidas likes it or not. 

Adidas tried its best to get the Minnesota federal court to dismiss Riedell's DJ action, arguing that it was an "improper anticipatory filing" because the ten-day grace period specified in Adidas's cease-and-desist letter had not yet expired when Riedell filed suit.  Adidas further claimed that Riedell "(i) knew of adidas's intent to file suit and (ii) filed the Minnesota DJ action as a preemptive strike against adidas to thwart its choice, as the natural plaintiff, of forum"; as such, Adidas asked the court to dismiss or transfer the case to the District of Oregon.

The court's response: nah.  As IP360 reports, the judge instead ordered Adidas to halt its offensive action in its home state of Oregon, and to play defense in Minnesota.  Note that Adidas filed its offensive lawsuit just one day after Riedell's DJ action, but this was still too late.  Now Adidas is stuck litigating its case in an unfamiliar state, before an unfamiliar judge, with an unfamiliar accent.  The moral of the story (again!): think very carefully before sending cease-and-desist letters.  Threats have consequences.

[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]