In a recently filed complaint, Abraham Berti Levy alleges that Adidas is infringing his registered YOU’RE NEVER DONE trademark. The complaint also discusses Levy’s pending intent-to-use (“ITU”) trademark applications for other similar marks, including NEVER DONE. Levy claims that he had talks with Adidas’ exclusive licensing agent about the possible licensing of the marks to Adidas. It is not clear how extensive those discussions were, but per the complaint they involved at least one meeting followed by more than one email. According to Levy, a few months later, Adidas began using NEVER DONE, for which Levy owns an ITU application, on clothing and in marketing campaigns. Several images of Adidas’ use of that phrase are attached to the complaint. Levy also claims that Adidas used YOU’RE NEVER DONE, which matches his registered trademark, but the complaint does not include examples of Adidas using that mark.
A U.S. trademark application based on ITU does not, by itself, create trademark rights or standing for a lawsuit. However, as Levy did here, ITU applications can be used in a complaint to tell a fuller story about the applicant’s business plans. Also, the fact that Levy filed the application before the licensing discussions took place arguably helps support his claims that he supplied Adidas with the idea for that particular name. Ultimately, the ITU application is not determinative, but it helps to tell Levy’s side of the story.
The complaint is pending in the Central District of California. It alleges trademark infringement, unfair competition and reverse confusion, among other claims, and seeks an injunction as well as damages.