Background
adidas, the global sportswear brand, sued Hall of Fame Sports Memorabilia for trademark infringement and counterfeiting under the Lanham Act. adidas’s complaint centered on its iconic “Three-Stripe Mark,” which it described as “a unitary branding device” that is “the subject of multiple registrations” — but without identifying which specific trademark registrations Hall of Fame had allegedly infringed or counterfeited.
Hall of Fame moved to dismiss under Rule 12(b)(6), arguing that adidas’s claims under 15 U.S.C. § 1114 (which governs infringement and counterfeiting of registered marks) failed because adidas did not plead which registered marks were at issue. adidas responded that its Three-Stripe Mark was equivalent to its registered marks under a “tacking” theory.
The Court’s Holding
Judge Immergut adopted Magistrate Judge Armistead’s findings and recommendation in full, granting the motion to dismiss in part.
The court dismissed adidas’s trademark infringement and counterfeiting claims under § 1114, holding that the statute requires a plaintiff to identify specific registered marks as comparators. Pleading only a “unitary branding device” that spans multiple registrations, without specifying which registered marks the defendant allegedly infringed, does not satisfy the statutory text. The court also rejected adidas’s tacking argument, noting that tacking was not properly at issue and would not excuse the pleading deficiency in any event.
Notably, the court disagreed with contrary decisions from the Southern District of New York — including adidas v. Thom Browne — finding that those cases “do not grapple with the plain statutory text” of § 1114.
However, the court denied dismissal of adidas’s trade dress infringement and trademark dilution claims under § 1125, which cover unregistered marks and trade dress and do not require identification of a specific registered mark. The case continues on those claims, and adidas was granted leave to amend its § 1114 claims.
Key Takeaways
- Section 1114 requires mark-specific pleading. Trademark plaintiffs cannot plead infringement of a general “branding device” across multiple registrations — they must identify which specific registered marks are at issue. This is a plain-text reading that courts in some other districts have not enforced.
- A potential circuit split is developing. The Oregon court explicitly disagreed with S.D.N.Y. cases that took a more lenient approach, creating a jurisdictional divergence that may eventually need appellate resolution.
- Trade dress and dilution claims survive where registration-based claims do not. Because § 1125 does not require identification of a registered mark, broader brand-protection claims can proceed even when the § 1114 claims are insufficiently pleaded.
Why It Matters
For trademark owners with large portfolios — like adidas, which holds numerous registrations for variations of its Three-Stripe Mark — this ruling is a practical wake-up call. When asserting infringement under § 1114, complaints must specify which registrations are at issue, not just reference a brand identity that spans many marks. The ruling is particularly significant because it creates tension with how major trademark plaintiffs have been pleading cases in New York, potentially prompting forum-shopping considerations and, eventually, appellate attention.