Arc’teryx seeks to block Adidas from registering the “Terrex” name in U.S. retail stores. Earlier this year, the company sued Adidas in Canada for opening a Terrex store in Vancouver.
In the Opposition that Arc’teryx filed with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, as first reported by The Fashion Law, the company claims Adidas is “seeking to use a mark that is substantially similar to the Arc’teryx mark and to offer retail store services that are identical, or substantially identical, to the Arc’teryx mark.”
Arc’teryx, based in Vancouver, charges that “the pronunciation of the word “Terrex” is identical to the pronunciation of the letters “Teryx” found in Arc’teryx.” At the same time, Adidas “intends to use the [mark] on the same services” as Arc’teryx, including selling outdoor apparel, footwear and gear.
Arc’teryx said that given the confusion, consumers “would be likely to enter a Terrex retail store, thinking it to be an Arc’teryx retail store,” adding there’s “already evidence of actual consumer confusion in a neighboring jurisdiction in Canada where Adidas has begun using the Terrex name in connection with retail store services.”
In January, Adidas opened its first Terrex-branded store at 2235 Fourth West Avenue in Vancouver’s Kitsilano neighborhood, near an Arc’teryx store. The location was the first Terrex-branded store in North America.
Adidas does not operate Terrex-branded stores in the U.S., but Arc’teryx said Adidas “intends to do so in the future.”
Arc’teryx operates 28 Arc’teryx-branded stores across the U.S. and 24 across Canada.
Arc’teryx further pointed out the “substantial sums of money” it invested in developing and promoting the Arc’teryx mark to elevate its goodwill and reputation since the company was founded in 1989.
In February, Amer Sports Canada, Inc., the parent of Arc’teryx, filed an injunction against Adidas using the Terrex brand for its brick-and-mortar retail stores and online stores following the opening of the Vancouver Terrex-branded store. Amer Sports similarly claimed the new Adidas-owned store had, or would cause it, to lose customers and revenue, along with damage to its brand and reputation. In addition to the injunction against Adidas using the Terrex branding on its stores, Arc’teryx is seeking damages against Adidas, including costs for profits it allegedly wrongfully made through the Terrex store.
In 2016, Adidas rebranded its Adidas Outdoor business to Terrex, a moniker used in its outdoor line for several years to denote its product line.
Adidas opened its first Terrex-branded store in Munich in November 2021.
Photo courtesy British Columbia Supreme Court, Vancouver
