Lopez v. Adidas America, Inc.

Background

Robert G. Lopez, proceeding without a lawyer, operated a clothing business under the trade name L.E.S. CLOTHING CO. He alleged long-term use of the LOWER EAST SIDE, LES, LES NYC, and LOYALTY EQUALS STRENGTH marks in connection with apparel. His Third Amended Complaint asserted four claims against PUMA North America, Inc.: registered-trademark infringement, unregistered-trademark infringement, common-law trademark infringement and unfair competition, and unjust enrichment.

The dispute concerned PUMA’s collaboration with the designer Les Benjamins and its use of “PUMA x LES BENJAMINS” on apparel and footwear. Lopez alleged that customers contacted him because they believed the products were a collaboration between PUMA and Lopez’s business. PUMA moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint alleges enough facts to state a legally plausible claim.

Allegations About Earlier Litigation

The complaint referred to Lopez’s earlier related lawsuit against PUMA involving products marked “LES” and “NYC.” That earlier matter was voluntarily dismissed with prejudice before PUMA was served. PUMA asked the court to disregard the references because Lopez allegedly lacked permission to add them and because the allegations were legally improper.

The court declined to strike those paragraphs. It found Lopez’s interpretation of the order allowing the Third Amended Complaint reasonable, particularly because he was proceeding without a lawyer. The court also took judicial notice of the fact that allegations had been made in the earlier litigation and that the matter had received media coverage, without treating the earlier allegations as true. The court denied PUMA’s request to strike the references.

Registered-Trademark Claim

Count I alleged that “LES BENJAMINS” was identical or confusingly similar to Lopez’s registered LES NYC mark and was likely to confuse consumers about the source, sponsorship, or affiliation of PUMA’s products.

The court rejected PUMA’s argument that trademark infringement requires use of the exact registered words. A different mark can infringe if it is a copy, imitation, or otherwise likely to cause confusion. The court therefore analyzed the likelihood of confusion using the eight nonexclusive factors commonly called the Polaroid factors: the strength of Lopez’s mark, similarity of the marks, proximity of the markets, likelihood of entering the other market, actual confusion, bad faith, product quality, and consumer sophistication.

The court found that the factors were evenly divided. Lopez’s mark had some support from its registration and alleged long-term use, and the parties operated in the same general apparel market. The allegations also supported some limited consumer confusion, and the court treated the consumers as insufficiently shown to be sophisticated. On the other hand, the marks were substantially different: “LES NYC” referred to the Lower East Side and was pronounced as initials, while “LES BENJAMINS” used “les” as a French plural article and was presented as part of the fuller phrase “PUMA x LES BENJAMINS.” The complaint did not allege that Lopez intended to enter PUMA’s market, did not plausibly allege bad faith, and did not allege that PUMA’s products were of poor quality.

Considering the marks and products as a whole, the court held that Lopez had not plausibly alleged a likelihood that consumers would believe PUMA’s products were Lopez’s products or that PUMA’s use of “les” damaged Lopez’s goodwill or control over the LES NYC mark. The court dismissed Count I as against PUMA.

Unregistered-Trademark Claim

Count II concerned Lopez’s unregistered LES mark. The court explained that an unregistered mark may be protected if it is distinctive, including if it has acquired “secondary meaning”—that is, consumers associate the mark with a particular source.

The court did not decide whether Lopez’s allegations were enough to show secondary meaning. Instead, assuming that the LES mark was protectable, the court applied the same likelihood-of-confusion analysis and concluded that “LES BENJAMINS,” as used in “PUMA x LES BENJAMINS,” was not likely to be confused with LES. The court dismissed Count II as against PUMA.

Common-Law and Unjust-Enrichment Claims

Count III asserted common-law trademark infringement and unfair competition. The court stated that the applicable New York standard was nearly identical to the federal trademark standard, with an additional requirement of bad faith. Because Lopez had not adequately pleaded the federal trademark claims or bad faith, the court dismissed Count III as against PUMA.

Count IV asserted unjust enrichment. The court treated unjust enrichment as a quasi-contract theory used to prevent unfairness when there is no actual agreement. It found that Lopez had not alleged a connection or relationship with PUMA that could have caused reliance or inducement and dismissed Count IV as against PUMA.

Disposition

The court granted PUMA’s motion to dismiss and directed the Clerk of Court to close the motion. The opinion does not state that all claims against every defendant were resolved. The caption supplied for the case names Adidas America, Inc., while the opinion’s motion and rulings concern PUMA North America, Inc.; this summary follows the opinion’s description of the defendant whose motion was decided.