## Facts

- adidas-America, Inc. and adidas-Salomon AG owned registered and long-used “Three-Stripe” trademarks for athletic shoes and asserted “Superstar” shoe trade dress rights.
- adidas used three parallel diagonal stripes on footwear since at least 1952 and obtained U.S. registrations beginning in 1994.
- Payless, a national discount shoe retailer, sold lower-priced athletic and casual shoes featuring two or four parallel diagonal stripes, often in a contrasting color.
- Payless admitted it was aware of adidas’s Three-Stripe mark while marketing its striped shoes.
- adidas offered evidence of overlapping channels of trade and marketing, including appeals to value-oriented consumers and use of similar media.
- adidas offered evidence that Payless intended to mimic adidas’s stripe branding and trade on adidas’s goodwill.
- adidas submitted survey evidence through expert Dr. Gerald Ford to support likely confusion and dilution; Payless challenged the reports under Rule 26.
- The parties had previously entered a 1994 settlement, but adidas’s current claims were not barred on that basis.

## Issues

1. Whether Payless was entitled to summary judgment on trademark and trade dress infringement for lack of likelihood of confusion.
2. Whether Payless was entitled to summary judgment that any infringement was not willful.
3. Whether Payless was entitled to summary judgment on federal and state dilution claims (including whether adidas could show fame and actual dilution for relevant periods).
4. Whether Payless established laches as a bar to adidas’s claims on the summary-judgment record.
5. Whether adidas was entitled to a jury trial on its claims for monetary relief.
6. Whether adidas’s survey expert reports should be stricken for Rule 26 deficiencies.

## Decision

- adidas’s motion for partial summary judgment was granted in part and denied in part.
- Payless’s motion for summary judgment on infringement was denied; likelihood of confusion presented jury questions.
- Payless’s motion for summary judgment on willfulness was denied; a reasonable jury could find deliberate copying.
- Payless’s motion for summary judgment on dilution was granted in part and denied in part; some dilution theories were narrowed, but other aspects remained for trial.
- Payless’s motion for summary judgment on laches was denied; disputed facts prevented resolution as a matter of law.
- Payless’s motion to strike adidas’s jury demand was denied; adidas retained the right to a jury on legal claims.
- Payless’s motion to strike Dr. Ford’s Rule 26 survey reports was denied; criticisms went to weight rather than admissibility.

## Legal Principles

- Summary judgment is improper where evidence creates genuine disputes on likelihood of confusion, including similarity of marks, strength of the senior mark, proximity of goods, overlap in marketing channels, evidence of confusion, and intent.
- Evidence of knowledge of a senior mark and intentional imitation can support a triable issue of willful infringement.
- For dilution, the court evaluates fame at the relevant time and whether the record supports actual dilution or other required elements; claims may be narrowed while allowing triable portions to proceed.
- Laches is an equitable, fact-intensive defense that generally cannot be resolved on summary judgment where timing, knowledge, and ongoing conduct are disputed.
- Claims seeking damages and profits are legal in nature and preserve the right to a jury trial.
- Survey evidence is generally admissible where it is relevant and methodologically adequate; methodological disputes commonly affect weight, not admissibility, and Rule 26 challenges do not require exclusion absent prejudicial noncompliance.

## Conclusion

The court declined to end the case on pretrial motions, holding that evidence of the strength of adidas’s stripe branding, Payless’s similar stripe designs, overlapping sales channels, alleged copying, and survey evidence created triable disputes on infringement, willfulness, and significant portions of dilution, while also rejecting Payless’s laches, jury-demand, and survey-report challenges.


adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or. 2008)