Plaintiff Adidas America failed to meet burden of proof for claim seeking cancellation of Defendant's "PROVE IT!" trademark for use in connection with various sporting apparel. Cases of Interest >  IP >  Trademark

Adidas America v Calmese

Adidas America v Michael Calmese
US District Court for the District of Oregon, Portland Division
2010 U.S. Dist. LEXIS 123386

FACTS: August 5, 1996, Defendant filed application with the PTO to register "PROVE IT!" as a trademark in connection with athletic apparel. PTO ultimately accepted Defendant's application for trademark on November 10, 1998. May 2007, Defendant sent a cease-and-desist letter to Plaintiff for trademark infringement. Plaintiff began investigating Defendant's claim, resulting in articles of clothing and images of clothing that used the phrase "PROVE IT!" but lacked direct evidence of hang tags or labels. Defendant testified he has sewn labels into all articles of clothing he has sold since trademark application and has a witness to attest he has bought clothing from the Defendant with labels.

PROCEDURE: Plaintiff filed action seeking declaration of non-infringement of Plaintiff's trademark, a declaration of non-false designation of origin, and cancellation of Plaintiff's trademark on January 18, 2008. Defendant filed Answer on February 12, 2007 with two Counterclaims against Plaintiff for trademark infringement and for violation of Oregon's Unlawful Trade Practices Act.
  • Trial Court - granted all motions for Plaintiff and Defendant but denied Plaintiff's motion for cancellation of Defendant's trademark
  • Plaintiff appeals - claims trademark should be canceled because (1) Defendant committed fraud on PTO when obtaining trademark; and (2) Defendant's trademark should be void because he did not meet the required use standard for an in-use trademark registration.

HOLDING: Verdict for Defendant. Plaintiff failed to meet burden of proof as to each asserted bases for cancellation of defendant's trademark.
  • Fraud - heavy burden - must be proven with clear and convincing evidence
  • Use standard - tags or labels on clothing product is generally an acceptable identifier of origin.


UNANSWERED QUESTIONS: Plaintiff must submit proposed judgment consistent with the verdict. The court will then set a schedule for the parties to petition the Court for attorney's fees and costs.

CRITICAL ANALYSIS: Case shows that a big business such as Adidas is unable to push around smaller businesses without having proper evidence to back up its claims.
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