British clothing company Fred Perry Holdings Ltd. filed suit against American clothing retailer Lands’ End in federal court in Illinois on August 18, 2011 claiming Lands’ End violated a settlement agreement between the parties by using Fred Perry’s laurel wreath design on apparel products. See Fred Perry Holdings Ltd. v. Lands’ End Inc., et al., Case No. 11-cv-05659 (USDC, Northern District of Illinois). Lands' End is owned by Sears Holding Corporation, which is also named as a defendant in the suit. Fred Perry, named after the renowned Wimbledon champion of the 1930s, launched as a clothing brand in the United States in 1952. It offers apparel, footwear, and accessories and began using its famous laurel wreath design (featured below) on sports and casual clothing in the United States more than 40 years ago.

Fred Perry’s complaint alleges that in 1998, Lands’ End distributed a catalog featuring sport shirts bearing the following wreath design which Fred Perry believed imitated its famous design mark.

After discovering this use of the laurel wreath design by Lands’ End, Fred Perry objected, and the parties executed an agreement in which Lands’ End agreed not to use the wreath design on clothing products, or in advertising, catalogs, or retail stores. In the current complaint, Fred Perry alleges that Lands’ End, through its subsidiary in Japan, violated the 1998 agreement by beginning to sell clothing products bearing a logo which includes a laurel wreath design in 2010. An example of the use at issue is shown below.

Fred Perry is seeking an injunction enjoining Lands’ End from advertising, distributing, or selling clothing and other merchandise featuring the laurel wreath, as well as damages.

The breach of contract action filed by Fred Perry comes just three months after Lands’ End was hit with another lawsuit by sportswear giant Adidas America Inc. On May 5, 2011, Adidas filed suit against the retailer in federal court in Oregon for infringement of its famous three-stripe trademark. See Adidas America Inc. et al. v. Lands’ End Inc., Case No. 3:11-cv-00552 (USDC, District of Oregon). In that lawsuit, Adidas alleges that Lands’ End’s sale of its “Boys’ Classic Skate” shoes and “Men’s Slip-On Trekker” shoes feature designs that are confusingly similar to its three-stripe mark and are therefore likely to cause consumer confusion. Images of the Lands’ End shoes at issue can be seen here:

Examples of Adidas’ shoes bearing Adidas’ three-stripe mark are shown below.

Adidas’ complaint contains federal and state trademark infringement and dilution claims, as well as unfair competition claims. Adidas is seeking injunctive relief, an order forcing Lands’ End to recall and retrieve all products bearing marks similar to Adidas’ three-stripe mark, destruction of all such products, and compensatory and punitive damages.

The action filed against Lands’ End is the latest of a number trademark suits filed by Adidas against competing designers and retailers in an increased effort to police its three-stripe design mark. Adidas has previously lodged actions against Payless ShoeSource, Wal-Mart, Ralph Lauren, and Abercrombie & Fitch to name but a few.

The Arent Fox intellectual property group represents a number of apparel and footwear designers and retailers in trademark and related IP matters, and is monitoring developments related to both cases. For more information, please contact Anthony Lupo or David Modzeleski.