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May 24, 2016 direct dial 404 815 6572

direct fax 404 541 3240

CHenn@kilpatricktownsend.com

By Email

Michelle Mancino Marsh

Arent Fox LLP 

1675 Broadway 

New York, New York 10019 

michelle.marsh@arentfox.com

Re: adidas & Reebok v. TRB Acquisitions (RBX) - Third-Party Subpoenas 

Dear Michelle:

Thank you for your May 23 letter. 

“Disputed Marks”

We have made clear in adidas’s pleadings, in our telephone conversations, and in written 

correspondence that adidas objects to the use by TRB or its licensees of several stripe designs 

that are confusingly similar to the Three-Stripe Mark. Numerous courts in reported decisions (not 

to mention the jury in adidas v. Payless) have noted that stripe designs can be confusingly 

similar to the Three-Stripe Mark even when the shape or number of stripes is not identical to the 

Three-Stripe Mark. As you know, trademark infringement is determined based on consumers’ 

perception of the design, and thus there is not a singular shape of “stripe” that necessarily 

infringes or does not infringe. We therefore provided representative examples of the products 

adidas has accused in this case, so you could discuss those designs with the licensees. For 

example, adidas objects to the use by TRB and its footwear licensees of two parallel stripes as 

depicted below: 

Exhibit L - Page 1 of 4

Case 3:15-cv-02113-SI Document 132-12 Filed 10/11/16 Page 1 of 4
Michelle Mancino Marsh

May 24, 2016 

Page 2 

adidas also objects to the use by TRB and its apparel licensees of two, three, or four parallel 

stripes running down the sleeve of a jacket or down the leg of a pant as depicted below:

adidas also alleges that the stripes on the footwear depicted below are confusingly similar to the 

Three-Stripe Mark – notwithstanding the fact that the stripes have angled sides: 

adidas is entitled to take discovery on designs that are potentially infringing, and TRB 

and its licensees cannot avoid discovery simply because they believe (wrongly) that adidas will 

not ultimately prevail on its infringement claims. For all of these reasons, we disagree with your 

continued refusal to produce documents relating to the use of two-, three-, and four-stripe 

designs. It appears we need to bring this issue before Judge Simon for resolution. 

Specific Document Requests

It appears that we have resolved all but a handful of requests, subject to the stripe issue 

referenced above. 

Request Nos. 5 & 6: We propose that the licensees (or TRB) produce the relevant 

license agreements. Once we have reviewed them, if it appears that our expert(s) need additional 

documents relating to negotiations, we can revisit these requests.

Exhibit L - Page 2 of 4

Case 3:15-cv-02113-SI Document 132-12 Filed 10/11/16 Page 2 of 4
Michelle Mancino Marsh

May 24, 2016 

Page 3 

Request 27a, 33 & 35: We divided Request 27 between “a” and “b” as follows: 

• Request No. 27a: Documents that refer or relate to Your communications with 

any customers, clients, sellers, distributors, licensors, or licensees concerning any 

of the Plaintiffs’ Marks. 

• Request No. 27b: Documents that refer or relate to Your communications with 

any customers, clients, sellers, distributors, licensors, or licensees concerning any 

of the Plaintiffs or Plaintiffs’ Goods and also mentions or references one or more 

of the Disputed Products. 

You propose that we limit 27a in the same manner as 27b, i.e., to those documents that also 

mention or reference a Disputed Product. You make the same proposal with regard to Requests 

33-35. 

Your proposed limitation is inappropriate, because it would exclude communications that 

discuss adidas’s or Reebok’s trademarks more generally or that express a desire to mimic those 

trademarks but do not specifically mention a particular RBX-branded product. We will not 

further modify 27a or 33-35. To the extent you continue to object, we will raise this issue with 

Judge Simon for resolution. 

Request 39: A party’s status as a repeat or serial infringer is relevant to the issues of 

intent and bad faith. See, e.g., Bear USA, Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 909 

F. Supp. 896, 907 n.17 (S.D.N.Y. 1995) (citing “the fact that defendants have been serial 

infringers, previously enjoined from infringing two other well-known brands” as evidence that 

“strengthens further the appearance of bad faith”); Zerorez Franchising Sys. v. Distinctive 

Cleaning, Inc., 103 F. Supp. 3d 1032, 1049 (D. Minn. 2015) (finding bad faith because 

“infringing activities persisted despite multiple cease and desist letters”); Powerhouse Marks 

LLC v. Chi Hsin Impex, Inc., 463 F. Supp. 2d 733, 736, 738 (E.D. Mich. 2006) (trebling jury’s 

damages award in case where defendant was alleged to be a “serial infringer”) You have cited 

no authority for the proposition that the requested documents are irrelevant. Thus, responsive 

documents should be produced. 

Deposition Topics

We understand your position on the remaining topics and understand you will object 

during the deposition to individual questions if you deem them objectionable. 

Scheduling

Your letter suggests that you “are diligently working . . . to gather responsive 

documents.” Because fact discovery closes in less than two months, we request that all 

responsive documents be produced by the licensees no later than June 10. 

Exhibit L - Page 3 of 4

Case 3:15-cv-02113-SI Document 132-12 Filed 10/11/16 Page 3 of 4
Michelle Mancino Marsh

May 24, 2016 

Page 4 

Please provide dates on which the licensees can be available for their 30(b)(6) 

depositions during the weeks of June 20 and 27. I assume they will take place at your offices, but 

if you prefer that we host them at our New York office, just let me know. 

Finally, we intend to reach out to Judge Simon’s courtroom deputy to schedule a 

telephone conference to resolve the issues on which we have reached an impasse. 

Sincerely,

R. Charles Henn Jr. 

cc: Stephen Feldman

Nicki Chollet

Exhibit L - Page 4 of 4

Case 3:15-cv-02113-SI Document 132-12 Filed 10/11/16 Page 4 of 4