Murchison & Cumming LLP

Did you “rip it off” or were you the first to use it?

April 21, 2020

By: Anton N. Handal

Plaintiff in the suit against Adidas AG was found not to have taken the steps to create an identity such that it entitled him to protection under the law. Accordingly, Adidas AG prevailed in a trademark infringement suit brought by Abraham Berti Levy that alleged the sportswear giant had ripped off his alleged "You're Never Done" catchphrase. In its ruling the California federal court found Adidas was the first to actually sell anything emblazoned with the phrase. The Court found that Levy could not sue Adidas for ripping off and using his alleged catchphrase in a major marketing push because he never properly registered the disputed trademark in the first place and did not use the mark in commerce before Adidas.

Levy applied to register a trademark for the "You're Never Done" phrase in 2014 and then filed a so-called statement of use in 2016, declaring he'd been using the mark "in commerce." Levy then set up a website that displayed "a hat, a shirt, and a water bottle" with the phrase on them, but Judge Gutierrez said he never actually sold any of that merchandise, and potential customers couldn't actually buy anything off the site until well after he'd filed his suit against Adidas in 2018. "Plaintiff's non-sales activity related to the [You're Never Done] mark reflects 'mere preparation' rather than actual use," Judge Gutierrez said.

Use it or lose it is the lesson that the plaintiff learned the hard way.

The case is Levy v. Adidas AG et al., case number 2:18-cv-06542, in the U.S. District Court for the Central District of California.

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