The ever-increasing popularity (and collectability) of athletic shoes seems to have brought along with it an increase in the amount of litigation involving trade dress protection for the look of some of the more popular shoe designs. Last year, the International Trade Commission found that Converse’s trademark rights in the design of the Chuck Taylor sneaker were invalid due to widespread use of similar designs by competitors. That decision is now the subject of a closely watched appeal at the Federal Circuit. More recently, in a dispute between adidas and Skechers, a court found that factual issues prevented entry of summary judgment regarding whether the look of adidas’ Stan Smith shoe design is generic and whether it has acquired secondary meaning.
Adidas is the manufacturer of a style of leather tennis shoes that are named after Stan Smith, the tennis player who famously wore the shoes while winning at Wimbledon in 1972. As described by adidas, the Stan Smith shoes feature:
- A classic tennis-shoe profile with a sleek white leather upper,
- Three rows of perforations in the pattern of the well-known Three-Stripe Mark,
- A defined stitching across the sides of each shoe enclosing the perforations,
- A raised mustache-shaped colored heel patch, which is often green, and
- A flat tonal white rubber outsole, as depicted below:
Adidas has spent tens of millions of dollars on advertising the shoes and has sold approximately 40 million pairs worldwide. Interestingly, in 2013, adidas made a strategic decision to “clean up the market” and made it virtually impossible to buy the Stan Smith shoes for a full year. This was followed by a substantial marketing campaign in 2014 that heralded “The Return of the Stan Smith.” Shortly thereafter, Skechers introduced the Onix shoe, which was intentionally designed to be a “Skecherized” version of the Stan Smith shoe, sharing many of the shoe’s design features. The following photo displays the two shoe designs side by side:
Adidas took issue with Skechers’ design and subsequently brought suit for, among other claims, infringement of its Stan Smith trade dress. Skechers, in turn, moved for summary judgment on this claim, arguing that adidas’ trade dress is generic and not distinctive.
Skechers first argued that adidas’ trade dress is generic because adidas failed to establish a sufficiently clear definition of the protectable elements of the trade dress. The Court, however, took issue with Skechers’ attempt to attack portions of adidas’ trade dress description individually instead of as a whole, as is required in the Ninth Circuit. When read together, adidas’ description of its trade dress was not so clearly overbroad as to warrant a summary judgment ruling in Skechers’ favor. Based on similar reasoning, the Court also found insufficient the evidence Skechers put forward to establish that the shoe design is generic because it is widely used throughout the industry, as the examples did not show that third-party competitors regularly produce shoes that share all of the shoe design elements.
Skechers next argued that adidas’ Stan Smith shoe design is not protectable as trade dress because the design lacked acquired distinctiveness through secondary meaning. In determining whether a mark has established secondary meaning, courts traditionally look at several factors, including whether actual purchasers associate the dress with the source, the degree of advertising featuring the trade dress, the length and manner of use, sales success, and attempts by others to imitate. Here, Skechers contended that adidas could not show secondary meaning because it failed to conduct any customer survey, which traditionally is among the more persuasive forms of evidence of secondary meaning. The presumption from the lack of survey evidence, Skechers argued, was that the results would be unfavorable. The Court, however, found that adidas had put forth sufficient evidence to infer that the design has acquired distinctiveness. The Court considered that adidas produced evidence of extensive media coverage of the Stan Smith shoe, in addition to strong evidence of sales, to find that the shoe design had acquired distinctiveness. Additionally, the Court found Skechers’ deliberate attempt to imitate the look of the Stan Smith shoe to be strong evidence that the design has acquired distinctiveness. The Court thus denied Skechers’ motion for summary judgment.
This opinion is notable because adidas was able to infer, at least at the summary judgment stage, that its Stan Smith shoe design had acquired distinctiveness without presenting customer survey evidence. In fact, adidas did so despite that Skechers presented survey evidence showing the opposite. Obtaining quality survey evidence in the trademark field can be difficult, not to mention costly. As this case illustrates, obtaining such evidence may not always be necessary where a particular design of a best-selling item is the subject of sufficient recognition in the media. Plaintiffs and defendants alike should therefore take care in making sure to thoroughly review all of the various possible factors that can be used to establish acquired distinctiveness when evaluating the strengths and weaknesses of claims involving trade dress protection for a product design.