A California federal judge late last week rejected an attempt by Skechers USA Inc. to escape allegations that it copied Adidas’ popular Stan Smith sneaker with its Onix shoe and infringed on Adidas’ long-trademarked three-stripe shoe detail with its Cross Court shoe.
Pointing to a number of other court rulings in similar trademark-infringement cases, District Judge Marco Hernandez found that the odds currently favor Adidas succeeding in its trademark suit, including its claims of brand dilution and trade dress infringement with regard to its Stan Smith shoe.
Although Skechers argued in its push for dismissal of Adidas’ infringement claims that it can’t show a likelihood of consumer confusion with its striped Cross Court shoe design, which it describes as an “E” shape, nor can it show it actually owns the purportedly “generic” trade dress of the Stan Smith shoe, Hernandez disagreed.
“Skechers conflates the Stan Smith trade dress with the Stan Smith line of products as a whole,” Hernandez said. “The former refers to the classic white leather shoe with a green mustache-shaped heel patch. The latter refers to a constellation of limited edition Stan Smith spinoffs that are extremely varied. Many of those limited editions do not have the elements described above and are not covered under the Stan Smith Trade Dress. That does not mean, however, that the trade dress elements themselves are too indefinite to be protectable.”
The judge also pointed out that Skechers has admitted that it set out to create a “Skecherized” version of the Stan Smith based on direct orders from chief executive officer Robert Greenberg, and that the company in the case thus far has argued only “that its copying was legal” and implied that it has “other reasons” than profit for copying the designs, according to the order.
“This factor alone is sufficient to deny Skechers’ motion for summary judgment that the trade dress is indistinct,” Hernandez said. “Furthermore, this factor weighs heavily in Adidas’ favor as Skechers has produced no evidence rebutting the clear evidence of its meticulous efforts to copy the Stan Smith shoe. Skechers provides no factual support for the position that its copying was legal or that it had other reasons for copying the Stan Smith other than to profit from Adidas’ trade dress precisely because it has acquired secondary meaning.”
Hernandez went on to note that Adidas has “a very strong case” supporting that the Stan Smith has acquired secondary meaning, meaning the design immediately signals to a consumer the source of a product.
Representatives of Adidas and Skechers could not be reached for comment.
As for Skechers’ claim that its Cross Court shoe is unlikely to be mistaken for an Adidas product with its striped design, nor is it likely to dilute the value of Adidas’ brand, Hernandez pushed back there as well, finding there to be at least a “genuine factual dispute” worthy of further proceedings and discovery.
The judge also agreed with Adidas that a 1995 settlement agreement with Skechers over another alleged infringement incident involving the three-stripe mark is still in effect, rejecting Skechers’ arguments to the contrary.
Adidas launched the suit in September 2015, accusing Skechers of willfully copying its three-stripe trademarks and making a near-exact replica of its Stan Smith shoe, of which Adidas has sold 40 million pairs worldwide since its release in 1972.
The German company has since made a strong case against Skechers and in February 2016 Hernandez ordered a halt to all sales of the allegedly infringing shoes at issue. Skechers appealed that ruling to the Ninth Circuit, but the effort was quickly dismissed.
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