Brooks Brothers countersues in Brooks Sports trademark dispute

By

Robin Driver

Published
Mar 6, 2020

Just under a month after Brooks Sports, Inc. filed a lawsuit against the classic American tailored apparel retailer, alleging breach of contract, unfair competition and trademark infringement, Brooks Brothers Group, Inc. has hit back with a court filing of its own.

 
Filed in federal court, Brooks Brothers’ lawsuit accuses Brooks Sports of breach of contract, trademark infringement, dilution and unfair competition. According to the fashion brand, it is seeking to “eliminate potential consumer deception or confusion” that might be caused by the sports and footwear company “intentionally dropping its logo in association with its brand name.”
 
Brooks Sports’ initial filing against Brooks Brothers claimed that the fashion brand’s recent applications to use the lone word “Brooks” as a trademark on eight product categories, including sporting goods, accessories and athletic footwear, were in breach of a coexistence agreement signed by the two groups in 1980.

Brooks Sports also accused Brooks Brothers of having made attempts to block the sports company from securing registrations for the “Brooks” trademark both at home and abroad.
 
To support its own claims on Wednesday, Brooks Brothers invoked the same coexistence agreement, affirming that it gave Brooks Sports the right to use the word “Brooks” alone on athletic shoes, but not on athletic clothing, where it has to be combined with a logo or another word.
 
According to the company, Brooks Sports breached this agreement when it dropped its logo and filed to use the “Brooks” trademark alone on a range of different apparel items, including t-shirts and hats.
 
In response to Brooks Sports’ particular objection to Brooks Brothers’ use of the word “Brooks” on sporting goods, the fashion brand also highlighted that, throughout its history, it has created a large range of apparel pieces inspired by sportswear, citing its famous original polo button down shirt.
 
“As a result of its long history and widespread fame, the name Brooks has become synonymous with Brooks Brothers not only within the apparel industry but also in the media, popular culture, literature and to consumers alike,” said the company in a press release.
 
Founded by Henry Sands Brooks in New York in 1818, Brooks Brothers established its “Brooks Brothers” trademark in 1854.