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May 12, 2016 direct dial 404 815 6572

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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:

In response to Lindsay Korotkin’s May 3 letter, we conducted two telephonic meet-andconfers earlier this week. This letter memorializes those conversations and attempts to resolve 

the concerns you raised with regard to adidas’s subpoenas to TRB’s licensees. 

“Disputed Marks” and “Disputed Products”

Many of your objections relate to the definitions of “Disputed Marks” and “Disputed 

Products,” and we spent a great deal of time during our phone calls discussing them. 

As you know, the pending action alleges trademark claims on behalf of Reebok against 

the RBX Logo and the RBX mark. On behalf of adidas, the pending action alleges trademark 

claims against the three-stripe component of the RBX Logo and against the use of two, three, or 

four stripes running vertically down apparel (e.g., on the sleeve of a top or the outseam of a pant) 

or in the midfoot portion of the upper of footwear. 

You have challenged the fact that the subpoenas include within their scope products that 

use two, three, or four stripes. As I explained, courts have made clear that adidas can bring 

infringement claims against such products and, indeed, the jury in adidas v. Payless found over a 

100 different shoes bearing a variety of stripe designs to infringe adidas’s rights. I provided you 

copies of the opinions in adidas v. Payless (as well as the verdict form showing the footwear in 

question), adidas v. Target, ACI v. adidas, and adidas v. Skechers. The Court in adidas v. Target

directly addressed your colleague’s argument that two- and four-stripe designs are not relevant: 

From the mathematical premise that three does not equal four, defendants argue that, as a 

matter of law, the use of a four stripe design on the side of a casual shoe cannot be 

confusingly similar to adidas’ Three Stripe Mark. Defendants posit that to find otherwise 

would grant adidas a monopoly over the use of stripes as decorations on the sides of all 

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sports shoes. This argument is not well taken. Although three stripes obviously do not 

equal four stripes, the issue is not simply the number of stripes. Instead, the issue is 

whether the total effect of the allegedly infringing design is likely to cause confusion in 

the minds of an ordinary purchaser. . . . Thus, this court cannot simply count the number 

of stripes and determine as a matter of law that four stripes are not confusingly similar to 

three stripes.

adidas v. Target, 228 F. Supp. 2d 1192, 1211 (D. Or. 2002). 

In a further effort to provide guidance concerning our definition of “Disputed ThreeStripe Designs,” I emailed you a collection of RBX-branded footwear bearing what we consider 

to bear “Disputed Three-Stripe Designs.” I also directed you to your own Amended Response to 

adidas’s Interrogatory No. 11, in which you successfully identified numerous third-party 

products bearing two, three, or four stripes. 

To address your concern regarding whether third parties needed to produce documents 

about striped products that are not licensed by TRB, I explained that the subpoenas only seek 

documents pertaining to RBX-branded products. To make this explicit, I stated that the definition 

of “Disputed Product” could be amended to “any apparel or footwear licensed by TRB and

bearing any of the Disputed Marks.” 

It is worth noting that these are discovery requests and, as such, are appropriate so long as 

potentially relevant to adidas’s claims and “need not be admissible in evidence to be 

discoverable.” Fed. R. Civ. P. 26(b)(2). By agreeing to produce the requested documents, neither 

TRB nor its licensees is somehow admitting liability; but adidas certainly has a right through the 

discovery process to receive and review documents concerning potentially infringing products. 

In light of the foregoing, we believe we sufficiently have addressed your questions about 

which products are the subject of adidas’s discovery requests.

Specific Document Requests

At the outset, I have made clear that we are not seeking documents from third-party 

licensees that will be produced in discovery by TRB itself. We only require that a relevant and 

responsive document be produced by one entity. While some requests in the subpoenas overlap 

with those we served on TRB, we do not have the benefit – as you do – of knowing what 

documents TRB has in its possession, custody, or control or what documents are in the 

possession, custody, or control of particular licensees. Because you represent both TRB and the 

licensees, you are in a unique position to “de-duplicate” the production. 

Requests Not in Dispute

We understand you do not object to Request Nos. 4, 11-14, 16, 18, 21, 23-24, 29-30, 37-

38, and 40. 

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We hereby withdraw Request Nos. 1 and 41. 

Provided we come to an agreement on Request No. 27 (as discussed below), we also 

would withdraw Request Nos. 28, 31, and 32. 

Provided we come to an agreement on Request Nos. 27 and 15 (as discussed below), we 

also would withdraw Request No. 22. 

Requests 2 & 3 & 7

As noted above, we only need the agreements (Request No. 2) from one entity (TRB or 

the licensee), not both. With regard to invoices (Request No. 3) and royalty payments (Request 

No. 7), we agreed that a schedule showing royalty and fee payments (by product, if accounted 

for in that manner), would be sufficient. Again, if TRB is providing those, we do not separately 

need them from the licensees.

Requests 5 & 6

We discussed the fact that adidas will pursue a reasonable-royalty theory of damages as 

one form of monetary relief in this case. Thus, documents reflecting the negotiation of royalty 

rates (or other license fees) are relevant and should be produced. We are not requesting 

production of license-negotiation documents that do not address royalties or fees. 

Request 8

I agreed to re-word this request to add the underlined language as follows: 

“Communications between You and TRB relating to the appearance, design, or placement of one 

or more of the Disputed Marks on the Disputed Products.” This is intended to include initial 

“pitch” documents to or from the licensee, as well as such documents created during the term of 

the license.

Requests 9 & 10

You agreed to produce documents sufficient to show first use and first sale of the RBX 

Logo and the RBX Mark.

With regard to products bearing a Disputed Three-Stripe Design, we seek production of 

the licensee’s first use and sale of products bearing such a design on an RBX-branded product. 

Request 15

As we discussed, adidas is not seeking emails reflecting “irrelevant miniscule details such 

as the request to reposition a button or zipper. . . .” We made clear that the purpose of Request 

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Michelle Mancino Marsh

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No. 15 is to obtain documents reflecting: (1) quality-control protocols, reports, or the like; (2) 

performance or chemical testing on Disputed Products; and (3) complaints about or returns of 

Disputed Products from customers, retailers, distributors, or others. I understood from our 

conversation that this limitation is acceptable to you.

Request 17

Again, we only need one party (TRB or the licensee) to produce images of the labels, 

tags, and packaging used on Disputed Products. You agreed to follow up with TRB to confirm 

that they have (and will produce) these so the licensees do not need to. 

Requests 19 & 20

I agreed to your proposed limitations on these requests, namely: 

• Request No. 19: “Documents sufficient to identify Your expenditures for the 

advertising or promotion of any RBX-branded apparel or footwear, including 

expenditures for websites or web pages featuring any RBX-branded apparel or 

footwear.”

• Request No. 20: Remove “offered for sale,” so it would read: “Documents 

sufficient to identify the geographic areas in which You have promoted, 

distributed, or sold any Disputed Product.” 

Request 25

I explained what “psychographic characteristics” are and described the types of 

documents that typically contain descriptions of those characteristics. You agreed to follow up 

with the licensees to see if they have responsive documents.

Request 26

Allen argued that the licensees likely “learned of” Reebok’s and adidas’s marks long ago, 

and that such information would not be reflected in documents. That may be true, in which case, 

we would expect the licensee to respond that no responsive documents exist. 

Request 27

You noted that TRB and its licensees compete directly with adidas and Reebok, and thus 

there would be a lot of correspondence mentioning the Plaintiffs or their products. I mentioned 

that any discussion of the Plaintiffs’ marks is highly relevant to issues of intent and bad faith, but 

that with regard to mere mention of adidas, Reebok, or their products, we would limit the 

request. To achieve that goal, we agree to modify the request by breaking it into two requests as 

follows, adding the underlined language as a limitation in 27b: 

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• 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. 

Requests 33-35

Documents that specifically mention Reebok’s or adidas’s trademarks are highly relevant 

to issues of intent and bad faith. For this reason, we will not withdraw Request Nos. 33-35, but 

we are willing to limit them as follows:

• Request No. 33: Documents that mention adidas’s Three-Stripe Mark.

• Request No. 34: Documents that mention adidas’s Badge of Sport Logo. 

• Request No. 35: Documents that mention Reebok’s RBK Mark. 

Request 36

You agreed to follow up with TRB’s licensees to determine the manner in which they 

maintain and/or catalog images or samples of branded products, so we could assess the burden 

associated with responding to this request. I mentioned that one solution we used in another case 

was to issue a Notice under Rule 34(a)(2) to visit the defendant’s “sample room” and copy 

(through videographic means) images of adidas products within the defendant’s possession. We 

are happy to do that here if it would minimize the burden on the licensee associated with culling 

through large collections of branded products. 

Request 39

You refused to comply with this request and did not propose any means of limiting it in a 

manner you would find acceptable.

Deposition Topics

As I mentioned, we would like to schedule depositions of the licensees at mutually 

convenient times once we receive the responsive documents. Therefore, you do not need to move 

to quash the deposition subpoena at this time. 

Topics Not in Dispute

We understand you do not object to Topics 3-6, 8, 14-16, 21-23, 26, 29-30. We agreed to 

withdraw Topic 31. On further consideration, I also will withdraw Topic 2. 

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Topic 1

While not raised in your May 3 letter, Allen raised a concern on the phone about the 

scope of Topic 1. As I mentioned, we do not plan to engage in “gotcha” questioning with regard 

to documents that have nothing to do with the witness. On the other hand, through Topic 1 we 

expect the licensee to offer a witness who is prepared to authenticate documents produced and 

who generally is aware of what materials were produced in response to the subpoena. 

Topic 7 

Topic 7 generally parallels Document Requests 5 & 6. We discussed the fact that adidas 

will pursue a reasonable-royalty theory of damages as one form of monetary relief in this case. 

Similarly, issues of quality are implicated by our dilution claims. Thus, we expect each licensee 

to present a witness capable of discussing (a) that licensee’s negotiation of royalty rates (or other 

license fees) and (b) quality-control provisions. Let us know if this limitation addresses your 

concern.

Topics 9 & 12

For these Topics, we are seeking each licensee to produce a witness capable of testifying 

on behalf of the licensee concerning: (a) the design of Disputed Products, including placement 

and appearance of the Disputed Marks, (b) the licensee’s reasons for wanting to use the Disputed 

Marks, and (c) the circumstances under which the licensee first became aware of each of the 

Disputed Marks. Let us know if this limitation addresses your concern. 

Topics 10-11, 13, 17-20, 24-25 

Your primary objection to these Topics appears to be the definition of “Disputed Marks” 

and “Disputed Products,” which are discussed above. 

I agreed to make clear that we are not interested in engaging in a “trick question” exercise 

with the licensee witnesses, and do not intend to ask detailed questions about the quality, reseller, 

or advertising of individual products pulled randomly from the licensee’s catalog. We do, 

however, intend to ask generally about the licensee’s advertising, sales, packaging, and qualitycontrol efforts with regard to the Disputed Products. I understand that with this clarification, you 

will make available a witness capable of testifying generally about these topics on behalf of the 

licensee.

Topic 27

I mentioned that this Topic parallels, in large part, Document Request No. 8. We agree to 

a similar limitation on this deposition Topic, as follows: “Communications between You and 

TRB concerning the the appearance, design, or placement of one or more of the Disputed Marks 

on the Disputed Products, including but not limited to emails, reports, proposals, videos, 

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May 12, 2016 

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spreadsheets, photographs, or presentations.” As noted with respect to Request 8, this Topic is 

intended to encompass communications prior to and during the term of any license agreement. 

Topic 28

Communications between a licensee and TRB concerning adidas, Reebok, or their 

respective marks and products are highly relevant to a number of issues, including intent, 

proximity of goods, sales and marketing channels, bad faith, and damages. We therefore believe 

each licensee should make available a witness prepared to testify as to such communications. 

Conclusion

We have made good progress, and I hope this letter allows us to put any remaining 

objections to rest. Please let me know, however, if any of the foregoing Requests or Topics need 

to be brought to Judge Simon’s attention for resolution. 

Sincerely,

R. Charles Henn Jr. 

cc: Stephen Feldman

Nicki Chollet

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