Making shoes can be a profitable business. Just ask world-famous shoe manufacturer Adidas and Skechers, the second largest shoe producer in the United States. Since 1995, Adidas and Skechers have signed several settlement agreements resulting from lawsuits filed by Adidas for alleged trademark infringement. Adidas sued yet again, and the U.S. District Court for the District of Oregon issued its Order as below.
CASE ON APPEAL
Note, this case has been appealed to the Ninth Circuit Court of Appeals so technically is not binding. We will report back when the Ninth Circuit issues a ruling.
STAN SMITH TRADE DRESS SHOE
The Stan Smith shoe was commonly worn by tennis players in the 1970s and gained its namesake from Stan Smith who wore the shoe when he won Wimbledon in 1972. Since the shoe’s creation, Adidas has spent tens of millions of dollars on advertising the shoes and have sold approximately 40 million pairs world-wide.
In 2014, Skechers began designing the Onix shoe which it intended to be a “Skecherized” version of the Stan Smith shoe. Adidas claims that Skechers created the Onix shoe in bad faith to profit from the goodwill garnered by the strength of the Stan Smith trade dress shoe. They look remarkably similar to this humble writer – who doesn’t know his left shoe from his right shoe.
THREE-STRIPE MARK VS. CROSS COURT SHOE
Here we go again. Adidas has used its famous Three-Stripe Mark on footwear since at least 1952. The company has spent millions of dollars advertising its flagship Three-Stripe Mark and attributes billions of dollars in global sales to products with the mark. I never noticed.
Over the years, Adidas has sued Skechers for selling shoes that are “confusingly similar” to the Three-Stripe Mark. Each time Skechers agreed to stop selling its competitive footwear.
But not forever. In 2015, Adidas learned that Skechers was producing the cross-court shoe which to this knucklehead looks similar to the Three-Stripe Mark, thus setting up Adidas challenge number two.
THE SUPERNOVA MARK
Challenge number three. Adidas has made footwear under the Supernova Mark since the late 1990s. Well guess what, Skechers began selling a shoe called “supernova,” which setup the third leg of the most recent Adidas v. Skechers lawsuit. Skechers’s defense is that the term “supernova” is not intended to be a trademark, “but is to describe the shoe’s cosmic color scheme.” Right. The only thing cosmic is Skechers’s apparent goal of mimicking Adidas. Remind me never to buy Skechers. Actually, you don’t have to remind me.
63-PAGE FEDERAL COURT OF APPEALS RULING
If you think this Law Review is boring, appreciate that I’m not going into the details of the litigants’ multiple motions, claims and defenses – all contained in an August 2017 63-page Oregon District Court decision.
While it took 63 pages, the federal judge granted almost all of Adidas’s motions, ruling against Skechers pretty much from top to bottom, including that Skechers was infringing on Adidas’s trademarks, and cannot reduce its profits using overhead costs that did not actually occur, and allowing Adidas to claim reasonable royalty rate damages. All conclusive rulings but for our purposes, boring details.
Jim Porter is an attorney with Porter Simon licensed in California and Nevada, with offices in Truckee and Tahoe City, California, and Reno, Nevada. Jim’s practice areas include: real estate, development, construction, business, HOA’s, contracts, personal injury, accidents, mediation and other transactional matters. He may be reached at email@example.com or www.portersimon.com. Like us on Facebook. ©2020