Hanesbrands Inc. et al. v. Keds, LLC et al. (D. Mass. 20-cv-11354).

Hanesbrands (“Hanes”) accuses Keds and SR Holdings of infringing its “CHAMPION” brand. Hanes and its predecessors in interest have used the CHAMPION brand for about 100 years on athletic clothing and uniforms, and asserts that it is one of the most recognized sportswear brands in history. Keds owned rights to the CHAMPION mark for footwear, so when Hanes sought to expand into athletic footwear in 1987, it reached a coexistence agreement with Keds to share the brand with Keds for footwear only and only in the United States, Canada and Puerto Rico. Under this agreement, Keds could utilize the mark for casual street and play time shoes, while Hanes could use the mark for athletic shoes. The two businesses did not specifically allocate usage of the marks in other countries, with each free to pursue rights under the mark elsewhere. Hanes asserts that it obtained superior rights in much of the world, and that it agreed in 2018 to hold off on asserting these rights against Keds in exchange for a promise to renegotiate the 1987 agreement to enhance Hanes’ rights in the US. Hanes now asserts that Keds has refused to enter into negotiations, in an attempt to preserve the “moratorium” on Hanes’ enforcement abroad for as long as possible and in breach of that agreement. Hanes asserts actual and anticipatory breach of contract, breach of the implied covenant of good fair and fair dealing and violation of 93A as well as trademark infringement, unfair competition, false association and trademark dilution based on usage of the CHAMPION mark beyond that permitted by the 1987 coexistence agreement and on Keds’ foreign use, which Hanes contends is driven from Keds’ U.S. headquarters