In a recent case, Bobosky v. Adidas AG d/b/a Adidas Group, the US District Court for Oregon has ruled that the National Basketball Association and sportswear company Adidas did not have to prove trademark registrations in a slogan they used in the Basketball Brotherhood advertisements in the USA. The case was brought by a community fundraising group in Chicago who had applied for trademark use for the slogan We Not Me in 1999. The plaintiff was given leave to proceed in trying to establish rights to an unregistered mark with regard to his use of the slogan on T-shirts and baseball caps.

The ruling came about when W. Brand Bobosky, a lawyer and community activist created badges, T-shirts and baseball caps with the slogan printed on them as part of his community development activity in Naperville, Illinois. In 2004 he registered the slogan with the Trademark Office and formed a company to licence goods bearing the slogan. When Adidas created their promotional campaign “Basketball is Brotherhood,” in 2007, it used the slogan in print, on TV and on clothing and Bobosky sued.

The magistrate found that while there were trademark registrations in existence, many were intent-to-use applications covering many categories of clothing from hoodies through to sleepwear. Part of the Adidas case was evidence that much of the clothing did not contain the mark and that on other promotional garments the trademark used was different to the intent-to-use registration. As a result the court ruled that the case could proceed only in relation to the caps which bore the intended mark as had been stated.

This kind of intent registration is increasingly being clamped down on by trademark organisations where individuals register a mark and then do not use it at all or use it in a much more limited fashion than was stated in the intent registration. ‘Blocking’ the use of trademarks, especially slogans, on clothing is seen as a non-competitive practice and in a period of recession, ruling bodies are taking a dim view of anything that limits retail markets operating with as much freedom as possible.

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