In an escalation of trademark wars between Brooks Sports and Brooks Brothers Group, the clothing company this week filed a response and counterclaim against the footwear brand for “breach of contract, trademark infringement, dilution and unfair competition.”

According to Brooks Brothers, the lawsuit seeks to eliminate potential consumer deception or confusion caused by Brooks Sports by intentionally dropping its logo in association with its brand name, which it claims is in direct violation of a long-standing co-existence agreement between the two companies.

The tenuous “coexistence” agreement between Brooks and the unrelated but similarly named Brooks Brothers clothing company had fallen apart last month when the running shoe and apparel company filed a trademark infringement lawsuit against Brooks Brothers.

From Brooks Sports’ perspective, the cause of the new dispute stems from Brooks Brothers' 2018 move into selling athletic footwear, which Brooks Sports contends will confuse consumers, damage its own marks and undermines that 1980 "coexistence" trademark agreement between the companies. Its original complaint challenged Brooks Brothers' alleged effort to block it from registering its own trademark in the United States and other countries. It also challenged Brooks Brothers' Dec. 30, 2019, trademark application to use "Brooks," without "Brothers," on eight categories of items, including clothing and sporting goods, as well as on retail stores. 

Brooks sued in the federal court in Seattle, where it is based. It is seeking damages, including for breach of contract, and to halt any infringements by Brooks Brothers.

In the new counterclaim, Brooks Brothers says that in the 1970s Brooks Sports began selling running shoes under the mark “Brooks,” prompting an objection by Brooks Brothers and eventually, in 1980, a coexistence agreement providing that Brooks Sports could use “Brooks” alone for athletic shoes, but could only use “Brooks” on athletic clothing if combined with a logo or other word.

Brooks Brothers claims that after nearly 40 years of co-existence based on these terms, Brooks Sports has breached the agreement by dropping its logo and filing for the word “Brooks” alone for a variety of apparel items, selling T-shirts and hats displaying “Brooks” without its logo, and filing a lawsuit against Brooks Brothers.

According to the new claim, “In order to protect its internationally renowned trademark and prevent consumer confusion between the companies’ respective brands, Brooks Brothers has opposed Brooks Sports’ newly filed applications around the world and filed a counterclaim in federal court to enforce the terms of the contract.”