Arc’teryx Moves to Block Adidas from Registering ‘Terrex’ in the US
Arc’teryx filed a motion to oppose Adidas’ U.S. trademark filing this month.
Arc’teryx owner Amer Sports Canada Inc. is attempting to block Adidas’ registration of the “Terrex” word mark for use in connection with online and physical retail stores selling apparel, footwear, headwear, bags and back packs. The company claims that the word—used to promote Adidas’ outdoor line—is “confusingly similar” to the Arc’teryx brand name.
More from Sourcing Journal
The Aug. 21 opposition filing states that Adidas’ successful trademarking of the Terrex mark would damage the Arc’teryx brand. “Consumers would likely confuse ‘Terrex’ with ‘Arc’teryx,’” and “the pronunciation of ‘Terrex’ is identical to the pronunciation of the letters ‘Teryx’ in ‘Arc’teryx,’” according to the Canadian brand’s legal team.
The motion submitted evidence to support the claim that consumers would be confused by the similar-sounding words. Amer Sports Canada and Adidas are currently embroiled in civil litigation proceedings in Canada over the Terrex retail store in Vancouver. Adidas began using the Terrex name in connection with International Class 35 trademark law, which pertains to retail store services, in Canada around Dec. 24, when the store opened.
According to the filing, local media quickly commented on the confusing store names and their retail locations just four doors apart on the same block. “Canada is a foreign jurisdiction, but actual consumer confusion in a similar market as the U.S. is predictive of likely confusion in the U.S.,” lawyers for Amer Sports Canada wrote. Adidas is not currently operating U.S. stores under the Terrex name, but plans to do so in the future, according to the Class 35 filing.
Arc’teryx’s concerns also stem from the nature of the product being sold under the Terrex trademark. Arc’teryx describes itself as “a high-performance outdoor equipment company known for leading innovations in climbing, skiing and alpine technologies,” and sells outdoor clothing, technical outerwear and accessories including base layers, insulated jackets, hiking shoes and boots, and accessories. Founded in 1989, it started selling in the U.S. two years later. It began utilizing Class 35 in the U.S. around Dec. 11, 2011.
Adidas markets the Terrex collection as “the clothes you need for outdoor adventure.” “From boots to jackets, the Adidas Terrex line offers all-weather comfort and athlete-proven techs,” according to its website. The collection includes base layers, fleeces, hiking shoes, outerwear and accessories such as gloves, hats and bags. Adidas has maintained a registration for Terrex on “footwear, shorts, pants, t-shirts, sweatshirts, vests, jackets” and other products in the U.S. since 2009. It filed the Class 35 request, connected to retail store services, with the U.S. Patent and Trademark Office on May 12, 2022.
“Adidas intends to use the Application-at-Issue on the same services as Arc’teryx, namely retail store services,” Amer Sports Canada said in the opposition filing. Arc’teryx currently operates about 28 U.S. stores, which serve as “community hubs that equip guests with product knowledge and support them on their outdoor adventures.”
“Arc’teryx has developed a fast-growing and exceptionally loyal consumer following for its brand and products in the retail store services Class 35, and is entitled to the exclusive use of its trademarks,” the company stated. It stands in “opposition of Adidas’ intention to be similar and confusing on storefronts.”
Adidas declined to comment on Friday.
