Updated Nov 24, 2010; Posted Nov 23, 2010
An Arizona small business owner has won the latest round in an ongoing trademark skirmish with Adidas America Inc. in federal court in Portland.
U.S. District Judge Anna J. Brown ruled Friday that Michael Calmese of Peoria, Ariz., could continue using the phrase “Prove It!” which he contends he has done for years on various sports apparel, including T-shirts and caps.
Attorneys for Adidas America sought to have that right taken away, contending that Calmese made false statements in his applications to the U.S. Patent and Trademark Office to legally protect the phrase “Prove It!”
Because Adidas was seeking to cancel Calmese’s trademark registration, the company had “the burden of proof” to show the small business owner had committed fraud in obtaining the trademark, Brown’s ruling says. The company did not provide convincing evidence to support the claim, she ruled.
At the same time, Brown’s ruling notes that if Calmese had the burden of proof in the case, the court “likewise would be unable to rule affirmatively in Defendant Calmese’s favor” based on evidence and testimony offered in a two-day trial earlier this month.
Calmese filed his original trademark application in 1996. The trademark office rejected it, and again in 1997,but another application was approved in 1998, according to court documents. Products with the phrase have been sold primarily in the Phoenix, Ariz., area, according to Calmese, though he has featured the products on websites, too.
Adidas and Calmese clashed starting in 2007 when Calmese sent Adidas representatives letters threatening the company with legal action over the company’s use of the “Prove It!” phrase on sports apparel and sales tags.
Between late 2006 and October 2007, Adidas sold about 15,000 T-shirts with the phrase “PROVE IT” above an image of a basketball, football or baseball. Adidas filed a complaint for declaratory judgment in federal court in Portland in January 2008 after it received another threatening letter from Calmese.
Adidas won that declaratory judgment in October 2009.
Calmese and Stephen Feldman, a lawyer with the law firm Perkins Coie, who represented Adidas, declined to comment Tuesday, both citing the possibility of continued litigation.