Steve Madden is rejecting allegations that some of its shoe styles are too similar to elements of Dr. Martens’ popular boot.
In a response to a February lawsuit launched by Dr. Martens affiliate AirWair International Ltd., Steve Madden Ltd. denied several claims of infringement related to shoes it manufactured and sold with a rubber sole similar to that found on lace-up boots by Dr. Martens, which has trademarked its sole design.
One Steve Madden style also appears much the same as the Dr. Martens boot with its lace-up style and overall shape, and the British brand argued its overall trade dress was being used without authorization.
But Steve Madden told a California federal court that the design elements at issue are “generic elements of a functional item,” which have “not acquired distinctiveness, secondary meaning or served as a source identifier.”
The New York-based company also argued that Dr. Martens boots lack secondary meaning, something generally required to maintain trade dress protection of an item, because “consumers do not associate plaintiff’s purported trademarks with plaintiff alone,” according to the response.
Moreover, Steve Madden said the four trademarks Dr. Martens has received over the years related to its sole and shoe designs are invalid and should be canceled, claiming “the use of a sole edge with longitudinal ribbing and a dark color band over a light color, welt stitching and a tab at the top back heel of any style of footwear is generic, commonly used by third parties, and has never functioned, or has been abandoned, as a source identifier for AirWair.”
With that, the company asked that the Dr. Martens action be dismissed and that the U.S. Patent and Trademark Office be ordered to cancel the trademarks.
A representative of Dr. Martens could not be immediately reached for comment.
In the February complaint, Dr. Martens argued that its trade dress is famous, “unique and distinctive” and identified with the “high-quality goods from AirWair.”
The company also accused Steve Madden of intentionally copying elements of Dr. Martens’ shoe designs in order to “capitalize on the reputation and fame” of the brand.
“Steve Madden’s conduct in copying the Dr. Martens Trade Dress has been systematic and deliberate,” Dr. Martens said in its complaint. “Steve Madden has copied the Dr. Martens trade dress, and the overall style and configuration of Dr. Martens boots and shoes in a deliberate and calculated attempt to trade upon the popularity and distinctive appearance and design of Dr. Martens footwear.”
Dr. Martens and AirWair are seeking unspecified damages in the range of $1 million for each allegedly infringing Steve Madden product and a permanent injunction against the sale of the infringing shoes.
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